Tsar & Tsai IP News is aimed at providing the readers and clients
(1) important recent changes in IP related laws and regulations in Taiwan,
(2) practical views and interpretations on IP related laws,
(3) important IP legal news and case developments, and
(4) information on recent IP related activities of Tsar & Tsai Law Firm. If you have any comments or questions, please feel free to contact us
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Editors: George Shih / Ray Hsu
Consultants: Jennifer Lin / Joyce I. Ho
Being mindful of patent applicants’ application and portfolio development strategies and timeframes of commercialization of patents, the Taiwan Intellectual Property Office (TIPO) began taking applicants’ requests to defer substantive examination of invention patent applications on April 1, 2015. An applicant may request to defer substantive examination of an invention patent application within 3 years of the filing date of the application and during or after the substantive examination, except for the following four situations: (1) an office action or a decision of examination has been issued by the TIPO; (2) a divisional patent application has been filed with the TIPO; (3) a request for substantive examination has been filed by a third party; (4) a request for accelerating examination through AEP (“Accelerated Examination of Program”) or PPH (“Patent Prosecution Highway”) has been filed with the TIPO. The request to defer, which is free of charge, shall designate a specific date on which the TIPO should resume substantive examination. (Ethan Wang of Patent Department)
Statistics of Patent Applications in Q1 2015
The total number of new patent applications filed in Q1 2015 is 17,221, a decrease of 11.38% from Q1 2014. The invention applications declined 12.34%. Both domestic applications and foreign applications declined about 12%.
In terms of applications by countries, Japan (3,376) scored the top spot with a 4.10% increase, while the U.S. (1,517) and South Korea (320) applications decreased respectively by 35.06% and 25.23%. The total decrease of applications by the aforementioned nationals is 927, almost identical with the total decrease (929) of the foreign applications.
In its effort to expedite patent examination, TIPO in Q1 2015 reduce the backlog of pending cases to 93,752, and shorten the average pendency time before the first office action to 19.80 months, and the average conclusion time to 28.58 months. (Charles Ma of Patent Department)
TIPO Trends Q1 2015: Trademark Statistics
There were 17,379 trademark applications filed with TIPO in Q1 2015. Among the foreign applicants, the U.S. ranked first with 888 applications (+0.57%), followed by Mainland China (847 applications, +50.71%), Japan (801 applications, +6.09%), Hong Kong (318 applications, +9.28%) and South Korea (284 applications, +8.40%). (Alina Chai of Trademark Department)
Only Chunghwa Post Co., Ltd. and its authorized user can use the words “郵政” [the Chinese characters for “postal affairs”] to identify business, services or goods
The MOEA ruled on April 14, 2015 to affirm TIPO’s decision which rejected an application for registration of the trademark “妖怪郵政” (meaning, “monster postal affairs”) on the services “delivery of mail; courier services; delivery of goods, etc.” in Class 39. The MOEA indicated that Article 30-I-(8) of Trademark Act (“TA”) provides that “a mark shall not be registered if it is likely to mislead the public as to the features or quality of the services”. Further, in accordance with Article 7 of Postal Act, “apart from Chunghwa Post Co., Ltd. or those authorized by it, no one is allowed to use ‘郵政’ [‘postal affairs’ in Chinese] or ‘郵局’ [‘post office’ in Chinese] to identify its own business, services or goods”. By adopting the words “郵政”, the applied-for mark “妖怪郵政” may likely cause the consumers to mistakenly connect the services associated with the mark with Chunghwa Post Co., Ltd. and therefore, may mislead the consumers as to the features or quality of the services. Hence, the rejected mark should be denied for registration pursuant to Article 30-I-(8) of TA. (Sandy Yu of Trademark Department)
Bridgestone Licensing Services, Inc. successfully opposes against a mark that is similar to its “FIREHAWK” trademark
Bridgestone Licensing Services, Inc. (“Bridgestone”) filed an opposition with TIPO against Jeng Hua Enterprises Co., Ltd.’s “火鷹Fire Hawk” mark, registered on “bicycles and components, electric bicycles and components, electric vehicles and components, electric scooters and components, etc.” in Class 12, based on its prior registered “FIREHAWK” mark for use on “tires and tubes for vehicles” in Class 12. TIPO rendered a decision on March 20, 2015, finding that the marks in dispute are highly similar in appearance, concept and pronunciation, and the goods designated thereby all belong to the same category of goods for vehicles and components and hence shall be deemed as similar goods. TIPO found further that while Bridgestone’s cited “FIREHAWK” mark has been well-known to the related consumers in Taiwan prior to the registration date of “火鷹Fire Hawk” mark, the use status of “火鷹Fire Hawk” mark cannot be confirmed due to lack of use evidence. TIPO concluded that it is obvious that the consumers are much more familiar with Bridgestone’s cited “FIREHAWK” mark, which bears stronger distinctiveness. Based upon the above finding, TIPO concluded that the registration of “火鷹Fire Hawk” mark is likely to cause confusion to the related consumers and hence the registration should be revoked on basis of Article 30-I-(10) of Trademark Act. (Kevin Wei/Joyce Ho)
The IP Court recognized that the trademark “MISS WU” owned by Mr. Jason Wu identifying the origin of the products as used
Per a judgment rendered in May, 2015, the IP Court sustained TIPO’s decision which cited the prior mark “MISS WU” owned by Mr. Jason Wu, a well known fashion designer from Taiwan, to reject the application of the mark “MISS WU”. In the judgment, the IP Court found that although Mr. Wu’s application for the mark “MISS WU”, filed in March, 2011, was rejected by TIPO on the ground of lack of sufficient distinctiveness and said ruling was finally sustained by IP Court’s judgment on January 22, 2013, “MISS WU” has been intensively reported by the local media prior to the filing of the rejected mark “MISS WU” on January 30, 2013. By means thereof, the local consumers have likely associated the mark “MISS WU” with Mr. Jason Wu. As such, the mark has acquired a secondary meaning and can be an identifier of the origin of the products. (Stacy Lin of Trademark Department)
The IP Court ruled that Google’s sale of Gorgeous Space Co., Ltd.’s mark 「幸福空間」[the Chinese characters for “Gorgeous Space”] as a keyword advertising is a breach of the Fair Trade Act
Gorgeous Space Co., Ltd. (“Gorgeous Space”) has owned the registration of Chinese character trademark「幸福空間」[the Chinese characters for “Gorgeous Space”]. Google sold the identical Chinese characters to certain advertisers, including Holin Interior Designing Co., Ltd., as a keyword advertising. As a result, when consumers key in the same Chinese characters in searching engine, the advertisers’ promotional projects will be automatically linked to and revealed in a prominent part of the webpage. The IP Court held that Google’s act of using the internal program to link the key words「幸福空間」to the advertisers’ promotional projects does not constitute the use of a trademark, and the advertisers’ promotional projects have not used the mark 「幸福空間」to promote their own services or products. Therefore, Google’s keyword advertising does not constitute a trademark infringement. However, the advertisers like Holin are the interior designers and competitors of Gorgeous Space. Their purchasing「幸福空間」to be a keyword advertising is an attempt to ride on the brand awareness of Gorgeous Space’s identical mark that the company has obtained through its long term endeavor.. Google not only listed the key words「幸福空間」in its recommendation to the advertisers but also kept selling the same words to be a keyword adverting after receiving Gorgeous Space’s cease and desist letter. Such acts have constituted joint infringement under the conducts of unfair competition activities, as provided for in Article 24 of the Fair Trade Act. (Stacy Lin of Trademark Department)