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
(Tel: 886-2-2781-4111; e-mail: email@example.com; TM@tsartsai.com.tw ).
Editors: George Shih / Lucy Chuang
Consultants: Jennifer Lin / Joyce I. Ho
August 1, 2015, the royalty fees for public performances by karaoke for public welfare purpose may be paid through a one-stop window
On July 3,
2015, Taiwan Intellectual Property Office designated Music Copyright Society of Chinese Taipei (MUST) as the single window of royalty fees payment for public performances by computer karaoke units for public welfare purposes on behalf of three copyright collective management organizations, MUST, Music Copyright Association of Taiwan (MCAT) and Music Copyright Intermediary Society of Taiwan (TMCS), in accordance with Copyright Collective Management Organization Act, and set the joint use royalty rates as follows:
(1) NT$6,300 (tax exclusive) per unit per annum of such use for cultural, educational or other public welfare purposes;
(2) NT$3,150 per unit per annum of such use for public welfare purposes which involve no profit-making. After collecting the joint use royalty fees, MUST may within its discretion deduct a 2% management fee and distribute the balance to the aforementioned collective management organizations at the ratio of 5:3:2. This decision took effect for three years beginning August 1, 2015. (Yen-ling Liu)
The TIPO accepted 20,326 trademark applications in Q2 2015, an increase of approximately 3% compared to the same period last year. Among the foreign applicants, the mainland China ranked first with 1,088 applications (increased by 17.49%), followed by the U.S. (994 applications, increased by 10.44%), Japan (806 applications, decreased by 9.34%), South Korea (412 applications, increased by 62.85%) and Hong Kong (327 applications, increased by 27.73%). (Alina Chai of Trademark Department)
The TIPO accepted 18,176 new patent applications in Q2 2015, a decrease of 2.37% compared to the same period last year, wherein 10,554 were invention patent applications increased slightly by 0.88% from the same period in 2014. The number of invention patent applications filed by foreign applicants increased by 8.30% to 6,527, while the number of application filed by domestic applicants decreased by 9.20% to 4,027.
Breakdown by nationality of foreign applicants for invention patent applications, Japan (2,721) continued to top the chart, followed by the U.S. (1,853), South Korea (399), Germany (304) and the mainland China (298). The applications by South Korean fell 20.99% while those from Japanese, the American and the mainland Chinese grew 2.25%、28.24% and 10.78%, respectively.
With respect to examination performance, the backlog was decreased by 24.31% to 86,503 cases, the average pendency for the first office action was shortened to 18.82 months, and the average period for disposal was shortened to 26.97 months. (Ethan Wang of Patent Department)
IP Court held the Defendant was not liable for damage because the Plaintiff had exclusively licensed the patent at issue to a third party and was not damaged in re patent infringement lawsuit filed by Pfizer Ireland Pharmaceuticals against Guang Sheng Tang Pharmacy
In a judgment issued on July 13, 2015, the IP Court held that the methods of calculating damage recited in Article 85-I of the old Patent Law are to alleviate Plaintiff’s burden of proof but not to cease applying the “Principle of Indemnity.” The Plaintiff cannot claim damages from the alleged infringer if the Plaintiff does not sustain any actual damages or the Plaintiff is unable to prove damages. The IP Court held that it was apparently not possible for the Plaintiff Pfizer Ireland Pharmaceuticals to implement or license the Patent at issue (i.e., Patent No. 083372) to others during the term of the Patent because the Plaintiff had already exclusively licensed the entire right (including making, offering for sale, selling, using, or importing for the aforementioned purposes) of the Patent to a third party (i.e., Pfizer Inc.) prior to filing the infringement litigation, for the entire patent term. Moreover, there was no agreement on royalty between the Plaintiff and Pfizer Inc. and the Plaintiff admitted that it did not collect any royalty. The IP Court therefore held that only Pfizer Inc. instead of the Plaintiff was damaged even if the Defendant did infringe the Patent at issue. In addition, the Plaintiff did not submit evidence to prove that it was actually damaged. Accordingly, the IP Court dismissed the Plaintiff’s claim for damages. (Ray Hsu of Patent Department)
MOEA on July 2nd, 2015 sustained TIPO’s rejection for registration of the applied-for mark “IPO” for the goods “abrasive preparations, sandpaper, emery cloths, polishing cloths, etc.” in Class 3. MOEA indicated that Article 30-(1)-4 of the Trademark Act provides that “an applied-for mark shall not be registered if it is identical or similar to a Taiwanese government agency’s mark”. The government agencies’ marks identify the services provided by the authorities, and should be respected to ensure the dignity and transcendence thereof. Whether the applied-for mark may likely cause confusion to the consumers is not a factor to be considered when examining the applicability of said Article. The applied-for mark “IPO” is extremely similar in appearance to TIPO’s “TIPO” mark and therefore should not be registered in accordance with said Article. (Singing Hsieh of Trademark Department)
LV filed a criminal charge against 2R International Co., Ltd. (“2R”) upon learning that a pattern of ripple appeared on the surface of the leather bag products sold by 2R resembled LV’s registered trademark “” (EPI Mark). However, the public prosecutor made a non-indictment decision by the reason that 2R had no intention to ride on LV’s business reputation, among other grounds.
LV thereafter instituted a civil action against 2R. On July 27, 2015, IP Court held that the pattern of ripple used on 2R’s leather bag products was highly similar to LV’s trademark “” (EPI Mark) registered in Class 18 in Taiwan since 2003, and thus, could likely cause confusion to the relevant consumers as to the source of the goods. 2R’s use of the pattern of ripple constitutes an infringement of LV’s trademark rights under Article 68-(I)-3 of the Trademark Act, and under Article 20-(I)-1 of the Fair Trade Act, which prohibits the use of other’s trade dress. 2R was ordered to pay NT$537,200 in damages and to publicly apologize on newspapers. (Sandy Yu of Trademark Department)
On August 18, 2015, IP Court held that even though KGT International Corp. (“KGT”) had registered its trademark “” on the goods “travelling cases, hand bags, leather bags, etc.” in Class 18, KGT’s use of the mark ““, which included an additional oval shape frame to its registered mark ““, on luggage products infringed upon Rimowa’s trademark rights associated with the well-known trademark “” since KGT’s mark “” and Rimowa’s prior-registered mark “” both consisted of six letters inside an oval shape frame and shared the same prefix “R” and suffix “A”, making them closely similar to each other in design and concept. The court ordered KGT to pay damages in the amount of NT$3,357,000. (Sandy Yu of Trademark Department)
The Asia IP announced that the following Tsar & Tsai’s partners were nominated as leading lawyers in the respective practice fields below:
Jennifer Lin: Litigation, Patent & Trademark
Edgar Chen: Litigation & Patent
Joyce Ho: Litigation, Enforcement & Patents
In celebration of Tsar & Tsai Law Firm’s 50th anniversary, Tsar & Tsai published the book 《“我心常在”》 on September 3, 2015, consisting of a collection of essays authored by Tsar & Tsai’s lawyers. The book contains forewords by the former minister of the Judicial Yuan, Mr. Lai Ying-Zhao, and the former minister of the Executive Yuan, Mr. Chen Chung. The book will be distributed free to all those who are interested in the law and the judicial system.
Mr. Joseph Tsai, Executive Vice Chairman of the Alibaba Group and the son of Tsar & Tsai’s founder Paul Tsai, attended and rendered a speech at Tsar & Tsai’s 50th anniversary celebration banquet.
Jennifer Lin, Joyce Ho, Jeanne Wang and Jones Sun will attend the “Asian Patent Attorneys Association (APAA) 17th General Assembly”, held in Okinawa from November 13 to 17, 2015.