I. The premise when alleging “other relationship” according to the Trademark Law,Article 23.1(14) in an Invalidation

    When there is no direct evidence, such as contract documents or business relationship between two parties, in an Invalidation application, the complainant usually alleges that “they are competitors in the same trade” as having the so-called “other relationship” in an Invalidation application according to the Trademark Law, Article 23.1(14), “One that is identical or similar to a trademark that has been used prior by another person on the identical or similar goods or services, and the applicant thereof is aware of the existence of the said trademark through contractual, geographical, or business connections, or any other relationship with the said person.” .

    However, according to the recent case, an Invalidation application was filed against the trademark registration No. 1210506 for “唯一” (means “only”) by the ground of imitating the complainant’s trademarks “唯一咖啡(means “only coffee”)” and “唯一咖啡廳(means “only cafe”)” due to “competitors in the same trade”. The examiner deemed that it is an insufficient allegation because the distinctive part of the trademark “唯一(means “only”)” is not an inventive mark but a general term in Chinese. Many parties use this general term as a part of their trademarks in different business fields. Therefore, it is not sufficient to prove that the registrant of the registration No. 1210506 for “ 唯一” (means “only”) imitated the complainant’s trademarks by alleging the position of being a competitor in the same trade.

II.  Registration No. 012216649 “益農& APPLE DEVICE” V.S. Apple’s famous mark “APPLE DEVICE”

    APPLE, INC. raised an Opposition application against the trademark registration No. 01216649 “益農& device” in class 16 by the ground that the registration No. 01216649 is JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES 2 similar to APPLE, INC’s famous mark “APPLE DEVICE” which violated the Trademark Law, Article 23.1(12) “One that is identical or similar to another person's well-known trademark or mark and hence is likely to confuse the relevant public or likely to dilute the distinctiveness or reputation of the said well-known trademark or mark.”

    The devices of two trademarks are as follows:

Registration No. 012216649 V.S. Apple’s famous mark:

    APPLE INC. finally did not win in the Opposition application after going through the Appeal action and the re-examination in the TIPO. The TIPO held the same view point in the re-examination that two trademarks are distinguishable to each other, since not only there are two distinctive Chinese words “益農” in the Registration No. 012216649 but also the business fields between two parties have weak relationship (one mark is used on “wrapping papers and paper bags”; the other is famous on “computer related products”). So, the registration No. 012216649 will not confuse the relevant public. In addition, there are several trademarks combining “APPLE DEVICE” with Chinese and/or foreign languages in different classes by many parties. Since two trademarks are deemed distinguishable to each other, there is no sufficient evidence to prove that the trademark registration No. 012216649 has diluted the distinctiveness or reputation of APPLE INC.’s “APPLE DEVICE”mark.

I. The period set for responding to an official notice by the TIPO for Invention patent, Utility Model and Design cases will be calculated “by months” instead of “by days” since September 1, 2008

    Presently, the period set for responding to an official notice by the TIPO has been calculated by days according to the Patent Act for years. The TIPO now decides to change the calculation way after referring to the regulations of the other countries as well as the Rule 48 of the “Administrative Procedure Act” in Taiwan. Since September 1, 2008, the period will be fixed by months instead of by days while the period is fixed for more than 30 days. In addition, 3 the first day does not count for the purpose of calculation according to Article 20.I of the Patent Act.

    When the last day of a period falls in a public holiday, it will be automatically extended to the working day following the public holiday. During the transitional period for those Official Notices issued on or before August 31, 2008, the TIPO will adopt the longer periods which are more favorable for the applicants.

II. The request of amendment to a patent application is not allowed under the stage of Administrative Court

    According to the Patent Law, the request of the amendment of specifications or drawings should be filed in the TIPO when the patent applications are still under the examination of the TIPO or after they are allowed for publication. It is not allowed to file the request of the amendments in the procedure of administrative remedy. The same opinion could be found in one of the legal precedents announced by the Supreme Administrative Court. In that case, the applicant failed to amend the specification at the stage of the TIPO when receiving official notices but requested for the amendment at the stage of the Administrative Suit. As mentioned in the legal precedent, the function of the administrative remedy is for people to fight against the misconduct or negligence of the TIPO. Since there is no illegal conduct at the TIPO’s end and the applicant failed to amend the specification at the stage of the TIPO, the Court did not deem it justified to amend the specification in the Administrative Suit.

I. The Intellectual Property Court started operation on July 1, 2008

    The Intellectual Property Court has started operation on July 1, 2008. During the transitional period, all the cases filed before June 30, 2008 are still handled by the original Courts. For the new cases, as mentioned by the TIPO, the IP issues are under the jurisdiction of the Courts as follows:

The 1^st instance of the Administrative Lawsuit for Patent or Trademark issues: Intellectual Property Court (formerly handled by the High Administrative Court)

The 2^nd instance of the Administrative Lawsuit for Patent or Trademark issues: Supreme Administrative Court (the same as before)

The 1^st and 2^nd instances of the Civil actions for Patent, Trademark or Copyright issues: Intellectual Property Court (formerly handled by the District Court)

The 3rd instance of the Civil actions for Patent, Trademark or Copyright issues: Supreme Administrative Court (the same as before)

To file a lawsuit in the Criminal action for Trademark or Copyright issues: to lodge a complaint to a public prosecutor in the District Court where the infringer is domiciled, resides, or located. (same as before)

The 1^st instance of the Criminal actions for Trademark or Copyright issues: District Court (same as before)

The 2^nd instance of the Criminal actions for Trademark or Copyright issues: Intellectual Property Court (formerly handled by the High Court)

To apply for securing evidence, a provisional seizure order, provisional measures for IP issues: Intellectual Property Court (formerly handled by the District Court).

    ●Please refer to the IP Case Procedure of the Intellectual Property Court:

    (Source: Intellectual Property Court)