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: email@example.com; TM@tsartsai.com.tw ).
Editors: George Shih / Wendy Chen
Consultants: Jennifer Lin / Joyce I. Ho/ Jeanne Wang
TIPO published the IPR trend of Q3 2020-Patent Statistics
In the third quarter of 2020, a total of 18,895 patent applications, including invention patent, utility model patent and design patent, were filed with the TIPO, comparable in number to the same period last year. Among the domestic corporate applicants, TSMC (389 cases) ranked first in 5 consecutive years in invention patent applications, and the top of design patent applicant was L & F PLASTICS CO., LTD. (36 cases). Breaking down by nationality of foreign applicants of the invention patent applications and design patent applications, Japan was the most active in both, filing 3,075 cases of the former and 295 of the latter. The most active invention patent applicant was Qualcomm (U.S.A.) (213 cases), and the top design patent applicant was Ford (U.S.A.) (113 cases). (Jill Kuo, Patent Department)
New Practice Patent Examination Program for Startups to become effective January 1, 2021
Effective from January 1, 2021 for a trial period of six months, TIPO will implement a new Practice Patent Examination Program for Startups (the “Program”) to expedite the review of patentability of patent applications filed by startup entities (the “Startup(s)”).
Highlights of this program include:
Eligible applicants: The eligible applicant under the Program shall be a Startup. A Startup is defined by the Program as a company formed no more than 5 years in accordance with the Company Act or the laws of the home country of a foreign entity prior to the filing of the relevant patent application.
Eligible application: To become eligible for the Program, the patent applicant shall prepare and file a written request to participate in the Program with TIPO via TIPO’s electronic transmission method (without official fee) after the applicant is notified by TIPO that the substantive examination of the patent application is about to commence, but in no event later than the applicant’s receipt of the first office action. A foreign applicant requesting to participate in the Program shall submit documents proving the date of its formation, and Mandarin translation thereof shall be required if the evidence is in foreign language.
Administration of the Program: When the written request to participate in the Program field by the patent applicant conforms with the aforesaid requirements, TIPO will actively initiate an interview process after providing the applicant with information (including the search reports in regard to novelty and an inventive step, or a brief comment on the ground of potential denial) within 1 month from the date of such applicant’s written request. Further, TIPO will schedule an interview with the applicant, generally within 1 month after the applicant receives the aforementioned information. During the interview, the examiner will not only notify the applicant of the reasons for potential rejection of the patent application but actively provide suggestions on amendments to the patent application. The applicant will be given 1 month to submit a response to the examiner’s comments or an amendment to the patent application after such an interview. If the applicant does not submit any response within 1 month, TIPO will continue the examination process based on the information on file under the normal procedure. If the applicant submits a response or amendment within the time limit, TIPO will notify the applicant of the result of examination (including the Decision of Approval or an Office Action) generally within 1 month after receipt of the applicant’s response. (Charles Ma, Patent Department)
Invoice date of a tangible product can be deemed as the publication date when relevant supporting evidence can be cross-checked
Confirming that a tangible product can serve as eligible prior art, the Supreme Administration Court held in its decision 109-Tsai-Tze No. 1722 that the invoice date of the product can be deemed as the publication date when the invoice, label, export declaration and the product name on the outer packaging of the product can be cross-checked and confirmed and the quantity of the product on the invoice and the export declaration are the same. (Howard Lee, Patent Department)
In the third quarter of 2020, a total of 26,113 applications for trademark registration were filed, an increase of 17% from the same period last year. Applications filed by domestic applicants (20,493 cases) increased 30%, while those by foreign applicants (5,620 cases) decreased slightly. A breakdown by Nice Class shows that Class 35 (advertising, business management, etc.) was designated in the most applications (3,763) by domestic applicants and Class 9 (computers, technology products, etc.) was designated in the most applications (1,119) by foreign applicants. Sorted by the nationality of the applicants, China ranked first with 1,245 applications, followed by Japan with 1,042 applications, and the U.S. with 994 applications. (Sandy Yu, Trademark Department)
The Petitions and Appeals Committee of the Ministry of Economic Affairs (“PAC”) held that the rejection of the opposition against the opposed mark “AKK” rendered by TIPO should be partially vacated
The PAC found in its August 26, 2020 ruling that both the opposed mark “AKK” and the cited mark “” were word marks composed of three English letters; that the first letter of either mark was the letter “A” and the last letter of either mark was the letter “K”; that only the middle letters “A” vs. “K” were slightly different; and, therefore, that the similarity of the marks was pretty high. The designated goods for the opposed mark included “milk powder; dried milk; flavored milk powder; cow’s milk powder; lactobacillus milk powder” in Class 29; on the other hand, the designated goods for the cited mark were “dietetic foods adapted for medical purposes and dietary supplements; nutritional supplements” in Class 5. Although the goods under said two classes were not quite similar in nature, the goods designated by both marks were related to human health and nutritional supplements. The PAC ruled that since the distinctiveness of the cited mark was quite high, the registration of the opposed mark would likely confuse the relevant consumers to the extent of “milk powder; dried milk; flavored milk powder; cow’s milk powder; lactobacillus milk powder”. The PAC therefore vacated the TIPO’s rejection of the opposition against the registration of the opposed mark with respect to the aforementioned designated goods. (Alina Chai, Trademark Department)
Provision of freight forwarder information on the Trademark owner’s Japanese website demonstrated its intention to promote and sell the products in Taiwan even though the consumers in Taiwan could not place orders to purchase the products directly on its Taiwanese website and the Japanese website did not provide Mandarin language service.
The Supreme Administrative Court on September 17, 2020 held that the IP Court’s upholding of TIPO’s dismissal of non-use cancellation of the trademark “@cosme” was not against the law by the following reasons: The relevant consumers in Taiwan could place orders and purchase products on the English language webpage set up by the disputed trademark owner’s @cosme Japanese website by browsing the owner’s @cosme Taiwanese website and clicking a link there. Although the Japanese website did not provide direct delivery services of the ordered products, it did recommend several freight forwarders and explicated the shipping procedure. Hence, the disputed trademark owner indeed used the disputed trademark on the designated services of providing cosmetics shopping information, retail of cosmetics; online shopping, etc. The facts that the owner’s Japanese website did not provide either international delivery services to Taiwan or tracking service for the shipping status should not lead to the conclusion that the disputed trademark owner had no intention to promote and sell its products in Taiwan. (Singing Hsieh, Trademark Department)
ELTA won the appeal against ERA Communications Co. in regard to broadcasting rights for 2014 FIFA World Cup
ELTA Technology Co. (ELTA) acquired an exclusive right from International Federation of Association Football (FIFA) to broadcast 2014 World Cup football in Taiwan and then sublicensed part of its broadcasting rights, including “cable TV”, “terrestrial TV” and “satellite TV” channels to ERA Communications Co. (ERA) with an explicit exclusion of “digital cable” channels in the contract. ERA thereafter cooperated with KBRO Co. (KBRO) to allow KBRO’s subscribers to watch digitalized ERA TV on cable TV channel via their set top boxes, resulting in disputes on licensing agreement and copyright.
ELTA filed a lawsuit against ERA alleging that ERA breached the contract and infringed its copyright. The court of first instance sided with ERA by holding that the excluded “digital cable channels” should be interpreted as “pay channels except for basic channels, video on demand service, broadband access service, etc.” and thus ERA’s act that allows KBRO’s subscribers to watch digitalized ERA TV on a basic channel did not breach the contract. ELTA appealed. The court of second instance on October 8, 2020 overturned the lower court judgement, holding that the “digital cable channels” should be interpreted as “broadcasting video/audio signals in digital manner by the cable TV operator” and thus ERA’s act exceeded the scope of contract and infringed ELTA’s “Public Broadcast” right. The appellate court held that the lower court erred in finding that provision of videos on demand (VOD) or multimedia on demand (MOD) service was an act of “Public Transmission” rather than an act of “Public Broadcast” defined in Taiwan Copyright Act, and that they were not within the scope of “cable TV”, “terrestrial TV” or “satellite TV” channels, and the exclusion thereof was not necessary. (Roam Huang, Attorney-at-law)
FTC fined HDD suspension manufacturers for unlawful concerted action
The Fair Trade Commission (“FTC”) rendered a decision on November 11, 2020 finding that TDK group and NHK group had engaged in concerted action in violation of Article 15 of the Fair Trade Act, imposing administrative fine of NT$160 million on TDK, NT$160 million on MPT, a subsidiary company of TDK, and NT$280 million fine on NHK, respectively. FTC found that the market of suspension, a component of hard disc (HDD), had been oligopolized by TDK group and NHK group, and that the two groups not only exchanged sensitive information such as pricing and sales quantity to explore the best position in negotiation with HDD manufacturers for maintaining the price of suspension or mitigating price reduction, but the two groups also strategized countermeasure together to maintain their respective market shares and profits upon learning that other competitors were adopting low-price strategy. FTC imposed a huge fine on the ground that the aforesaid concerted action constituted a serious violation when it was highly detrimental to market order, the period of violation lasted for 8 years, and the total sales in Taiwan by TDK group and by NHK group both exceeded NT$100 million during the period of violation. (Roam Huang, Attorney-at-law)
Micron successfully obtained a guilty verdict for its criminal complaint against a former employee for misappropriation of its trade secrets.
Micron Technology Taiwan (formerly known as Inotera Technology) and Micron Technology Inc. brought a criminal complaint against its former employee for using the his superior’s password without authorization and connecting without authorization to share folders of colleagues who forgot to turn off the share function from time to time during night shift to access to and download the company’s confidential files. After the New Taipei District Court Prosecutor’s Office indicted the defendant and the defendant admitted all the guilt, the New Taipei District Court found the defendant to have misappropriate Micron’s trade secrets through unauthorized reproduction in violation of Article 13-1 of the Trade Secret Act and sentenced the defendant for imprisonment of 2 months with two years of probation. Tsar & Tsai represented Micron. (Jeanne Wang / Connie Huang / Alex Yin)
- Tsar & Tsai is recognized by the Chambers Global 2021 as a Taiwan Band 1 Law Firm in the field of IP.
- Jennifer Lin, Esq. is named by the Chambers Global 2021 as a. Eminent Practitioner in the field of IP.
- Jennifer Lin, Esq. and Joyce Ho, Esq. are selected by the Benchmark Litigation Asia-Pacific 2021 as Dispute resolution stars in the field of IP.