I. TIPO enacted and promulgated Operational Points regarding e-filing of trademark procedures on May 09, 2008 and further specified the kinds of applications and procedures which adopt the e-filing system on May 26, 2008. The e-filing system will be put into practice after three (3) months from the promulgation date, i.e. August 26, 2008.

The United States and some developed European countries are all oriented towards the e-filing of IP matters and WIPO also plans that all member countries would be able to operate e-filing by the end of 2008. In order to keep pace with the current trend, empowered by Article 14 of Trademark Act, TIPO acted out and promulgated the Operational Points regarding e-filing of trademark procedures on May 09, 2008 and then further specified the kinds of applications and procedures which apply to e-filing system on May 26, 2008.

    According to official publications, the applicant will be able to file the following applications and procedures to TIPO via Internet:

Trademark applications of trademarks, colors, sound and three-dimensional shapes;

Collective trademark applications of collective trademarks, colors, sound and three-dimensional shapes;

Collective membership mark applications of collective membership marks, colors, sound and three-dimensional shapes;

Certification mark applications of certification marks, colors, sound and three-dimensional shapes;

Division of a trademark application;

Amendments to particulars of a pending application;

Supplementing documents required; and

Withdrawal of an application or registration.

    Upon receiving any documents, TIPO shall acknowledge safe receipt with certain message by return e-mail. It gives the same effect as filings in written forms.

    The most attractive point is that an e-filing application will enjoy a more favorable official fee, i.e. NT$300 deducted from the original fee for filing in written form according to the draft of Rule 2 of Trademark Government Fee Standards in due course.

II. Even if a trademark right holder is awarded an affirmed court ruling based on Article 62 of Trademark Act resulting from that a third party uses a word(s) contained in the holder’s well-known trademark as the company name, there is still no way to force the defendant to change the company name when he refuses to do so under the current circumstance. In order to practice the enforcement of the court rulings, Department of Commerce of MOEA announces that they will consider amending Article 10 of Company Act by adding a clause stipulating grounds for ordering the dissolution of a juridical person.

I. TIPO enacted and promulgated Operational Points regarding e-filing of patent procedures on May 08, 2008 and further specified the kinds of applications and procedures which adopt the e-filing system on May 26, 2008. The e-filing system will be put into practice after three (3) months from the promulgation date, i.e. August 26, 2008.

    According to the official publications, the applicants will be able to file the following applications and procedures to TIPO via Internet:

Invention applications;

Utility model applications;

Design applications;

Supplements or amendments to the specification

Re-examination of patent applications;

Request for earlier publication;

Request for substantive examination;

The expeditious examination to a pending patent application;

The recordal of assignment to a pending patent application;

The recordal of succession to a pending patent application.

    Upon receiving any documents, TIPO shall acknowledge safe receipt with certain message by return e-mail. It gives the same effect as filings in written forms.

    Furthermore, an e-filing application of invention, utility model or design will enjoy a more favorable official fee, i.e. NT$600 deducted from the original filing fees for filings in written forms according to the draft of Rules 2, 3 and 4 of Rules of Patent Fees in due course.

II. The new patent search system has provided online service starting July 1, 2008

    TIPO’s new patent search system has been online from July 01, 2008. Distinguishing features of this new system are:

Free online search for local patent data in Chinese and English;

Integrating content and functions of the current three search systems, "ROC Patent Network", "ROC Patent Gazette Search System", and "ROC Patent English Abstract Search System";

Being able to search for the patent specification with full-text;

Adding new format of XML for patent specification and drawings;

Being able to download the full patent image once or page by page;

Providing diversified ways for search;

Sales and management of data output;

Being able to check the current status of a patent application;

Allowing users to save a sum of 200 pieces of search result, and users can edit the display list with items they need.

III. Taiwan is not a member of PCT, so a PCT application is unable to enter the national phase in Taiwan through the PCT route.

    We received inquiries from some foreign attorneys about how to enter the national phase in Taiwan for a PCT application in recent years, so we take the chance to clarify this kind of misunderstanding again in our newsletter.

    Please note that since Taiwan is not a member of PCT, a PCT application is unable to enter the national phase in Taiwan. However, it is available to file a new application in Taiwan by claiming the priority date of a PCT application within 12 months from the filing date of the PCT application if it is the earliest corresponding prior application.

I. How to legally use the works of another person in nonprofit activities?

    Article 55

    The work of another person that has been publicly released may be publicly recited, publicly broadcast, publicly presented, or publicly performed in the course of an activity of non-profit nature, provided that no fee is directly or indirectly collected from the viewers or listeners, and no compensation is given to the performers.

    According to Article 55 of Copyright Act, it will not violate the Copyright Act to use another person’s work in a nonprofit activity if such use conforms to the following conditions:

The activity is not for profit-making;

An example of profit-making is to play a CD as background music in a presentation of new products. Even though the organizer neither pays to the performers nor charges from the attendees, such activity still cannot be deemed as a non-profit-making activity because the purpose of holding a presentation of new products is to make profit.

No fee is directly or indirectly collected from the viewers or listeners;

No fee relating to the use of the works is directly or indirectly collected from the viewers or listeners, no matter in the name of entrance fee, membership fee, service fee or any others. Even if the audience uses a coupon from the newspaper he/she bought to exchange the ticket, it is still a kind of collecting fee from the audience.

No compensation is given to the performers;

The performers are not paid of any remuneration, no matter in the name of wages, bonus or perquisite.

The work recited should have been publicly released; and

The right holder should have communicated the content of the work to the publics by publication, broadcast, presentation, recitation, performance, display or any other methods.

It should be a particular activity, but not a frequent one.

For example, using the works of another persons in the year-end party or Spring Gala held by a company, and the performers are own staff from the company. Since such kinds of activities are not frequent ones and they neither charge fee from the audience nor pay remuneration to the performers, it can be deemed as reasonable use.

I. Application for injunction maintaining the temporary status quo under Article 22 of Intellectual Property Case Adjudication Act which has come into force on July 01, 2008.

    In the past, when seeking an injunction maintaining the temporary status quo, even there are no sufficient grounds for such application, the application will still be granted if the applicant is able to provide a bond for granting the injunction. Consequently, the application for an injunction maintaining the temporary status quo became an indispensable means for a big company to overthrow a small one.

    For making up the deficiency, the court will not grant the injunction if the applicant cannot provide grounds for the application of the injunction sufficiently to make the court understand the necessity for injunction under the new stipulation. A bond is no longer permitted to substitute for the grounds.

    Since it will cause great influence on granting an application for injunction maintaining the temporary status quo, before the court decides to grant or dismiss the injunction, both parties will be given opportunities to state their own grounds and provide evidence to substantiate their position.

    Please note that an application for an injunction maintaining the temporary status quo shall be filed with the court where the action is to be brought when no action has been initiated. That is the application can be filed with the Intellectual Property Court or the authority at the place where the wrongful act was committed. If the action has been initiated, such application shall be filed with the court where the action is pending.