Tsar & Tsai IP News is aimed at providing the readers and clients
- important recent changes in IP related laws and regulations in Taiwan,
- practical views and interpretations on IP related laws,
- important IP legal news and case developments, and
- 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: firstname.lastname@example.org; TM@tsartsai.com.tw ).
Consultants: Jennifer Lin / Joyce I. Ho/ Jeanne Wang
TIPO announced the statistics of Patent Prosecution Highway (PPH) up to December 2019
During the period between September 2019 and December 2019, there were 182 patent applications filed under the Taiwan-U.S. PPH; 137 applications filed under the Taiwan-Japan PPH and 12 applications filed under the Taiwan- Korea PPH. The first office action in those matters was issued in an average time of 47.5 days. (Tony Hsieh, Patent Department)
TIPO announced statistics for the Accelerated Examination Program (AEP) on Invention Patents by December 2019
During the period between September 2019 and December 2019, there were 106 patent applications filed under the accelerated examination program (AEP), of which 46 were filed by domestic applicants and 60 were by foreign applicants. The top four foreign applicants by nationality were: Japan, U.S.A., Germany and Denmark. Among the applications, 52 were filed under Category 1 (i.e., the corresponding application has been approved by a foreign patent authority after substantive examination), and the first office action in those matters (including examination opinions and final decisions) was issued in an average of 48.7 days. Seven applications were filed under Category 2 (i.e., the EPO, JPO or USPTO has issued an office action during substantive examination but has yet to approve the application’s foreign counterpart), and the first office action therein was issued in an average of 46.8 days. 43 applications were filed under Category 3 (i.e., the invention application is essential to commercial exploitation), and the first office action therein was issued in an average of 81.4 days. Four applications were filed under Category 4 (i.e., inventions are related to green technologies), and the first office action therein was issued in 75.8 days. (Tony Hsieh, Patent Department)
The Supreme Administrative Court held that the patent filing receipt issued by United States Patent and Trademark Office cannot be used as priority certified document
The Supreme Administrative Court held in its Judgment (Ref. 108-Pan-Tze-Zi 516) in 2019 that although the patent filing receipt issued by United States Patent and Trademark Office indicates the application date and the application number, the applicant may not use such filing receipt as the priority certified document. That is because the applicant may apply for correction by written application if there is any error on the filing receipt; and the filing receipt does not address any text regarding priority. (Howard Lee, Patent Department)
The IP Court ruled that since the cited mark has been cancelled and become final prior to the end of the oral debate process at the trial, the basis for TIPO’s rejection of the applied-for mark has no longer existed, the IP Court therefore rescinded TIPO’s rejection decision and granted the rejected mark for registration.
The Plaintiff, San-Yuan Corp., filed the administrative litigation before IP Court against TIPO’s rejection of its trademark application “” by citing the prior mark “”. During the litigation, the Plaintiff filed a cancellation petition for non-use with TIPO against the cited mark and successfully canceled the registration of the cited mark. The Plaintiff asserted that the basis of TIPO’s rejection no longer exists and requested the IP Court to rescind TIPO’s decision and command TIPO to approve its mark for registration. The IP Court rendered the judgment (Ref. 108-Year-Xing-Shang-Su-Zi 16), concluded that the court should make its decision based on all facts occurred prior to the end of oral debate of the trial. In this case, as the registration of the cited mark has been cancelled and become final prior to the end of the oral debate process, the basis of TIPO’s rejection has no longer existed; given the above, the Court rescinded TIPO’s rejection decision and granted the registration of the mark filed by the Plaintiff. (Jay You, Trademark Department)
MOEA ruled that it cannot be concluded that a popular film name is a well-known trademark merely on the ground of the popularity of the film.
MOEA (Ministry of Economic Affairs) revoked TIPO’s decision for which the application of the mark “與神同行” on goods and services in Classes 20, 35 and 45 is rejected. MOEA determined that although the applied-for mark “與神同行” is identical with the name of the Korean film titled “與神同行” (the film name in English: Along with the God) which was one of the best-selling films in 2017 in Taiwan, there is no evidence revealing that the cited film name “與神同行” has been used as a trademark in Taiwan. As such, it cannot be concluded that the cited film name is a well-known trademark protected under Article 30-I-(11) of Taiwan Trademark Act (“TTA”) merely on the ground that the film has been known to local consumers in Taiwan. Therefore, it is not legitimate that TIPO rejected the trademark application of “與神同行” at issue by citing said Article. Article 30-I-(11) of TAA provides that a mark is not registrable if it is identical or similar to another person’s well-known trademark and hence is likely to confuse the relevant public or is likely to dilute the distinctiveness or reputation of the said well-known trademark. (Sandy Yu, Trademark Department)
New Amendment to Trade Secret Act includes prosecutorial protective order.
Amendment to Trade Secret Act was passed by the Legislative Yuan on December 31, 2019 and promulgated by the President on January 15, 2020, which introduced the new system of “prosecutorial protective order”. The prosecutorial protective order is issued by the prosecutor ex officio during the investigation proceeding, to allow the trade secret owner or the accused offender to review the trade secret materials alleged to the misappropriated or evidence involving other companies’ trade secret under the condition of “prosecutorial protective order.” A person who is permitted to access to the confidential information, including the criminal suspect, accused offender, victim, complainant, attorney of complainant, defense lawyer, expert witness, witness or other relevant persons, is prohibited from (1) using the investigation information for purposes other than the investigation, or (2) disclosing those information to any person who is not subject to the confidentiality order. Any violation may be subject to criminal penalties including imprisonment for up to three years. Such criminal penalties also apply to a violation committed in any foreign jurisdiction, China, Hong Kong or Macau. For any case which is given the final deferred prosecution or non-prosecution, or any part under a prosecutorial confidentiality order which is not indicted, the prosecutor may revoke or change the confidentiality either order ex officio or upon the petition from the person subject to the confidentiality order. For a case which is indicted, if the owner of the trade secret or the prosecutor fails to petition the court to grant a protective order within 15 days after the case is indicted before the court, the court may revoke the prosecutorial protective order upon motion files by the persons subject to the order or the prosecutor.
Further, the Amendment also makes it clear that an unrecognized foreign Company is entitled to file a criminal complaint, a private prosecution or a civil claim in accordance with the Trade Secret Act, unless the country of such foreign person does not accede to any international treaty for which Taiwan accedes for protection of trade secret, or does not enter into any international treaty or agreement with Taiwan for reciprocal protection of trade secret, or otherwise refuse to offer protection for trade secret owned by a Taiwan national. (Yen-ling Liu, Attorney-at-law)