Please be informed that the Taiwan Intellectual Property Office and our firm will be closed from October 10 to 12, 2008 in celebrating the National Day of our country. We will return to work on October 13, 2008.

It’s is acceptable to submit new evidence prior to the end of the oral argument in an administrative action concerning cancellation or revocation of a registered trademark or patent only if the new evidence is rendered for the same ground(s) for the cancellation or revocation argument.

    According to Article 67 III of current Patent Act, any supplemental evidence should not be examined if it is not submitted prior to the conclusion made on the examination of an invalidation action. The petitioner has to raise a new invalidation action based on the supplemental evidence if he/she finds the same after conclusion made on the examination of an invalidation action. The same viewpoint is adopted when dealing with an opposition, cancellation or invalidation against a trademark registration.

    However, after the implementation of the new Intellectual Property Case Adjudication Act, effective as from July 01, 2008, there is an innovation. Based on the Article 33 thereof, JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES Holiday Notice： Please be informed that the Taiwan Intellectual Property Office and our firm will be closed from October 10 to 12, 2008 in celebrating the National Day of our country. We will return to work on October 13, 2008. 2 in an administrative action concerning cancellation or revocation of a registered trademark or patent, the IP Court shall take into account any supplemental evidence submitted on the same ground(s) for the cancellation or revocation prior to the end of the oral argument. The purpose of this new stipulation is to reduce disputes about the registrability of the same IP right.

    The so-called “on the same ground(s) for the cancellation or revocation” means the same matter(s) which are alleged to oppose, invalidate or cancel a registered trademark or patent at the beginning of such procedure in the Taiwan Intellectual Property Office (TIPO). For example, an invalidation application is filed against a registered patent due to the reason that the invention can be easily accomplished by a person having ordinarily knowledge in the art based on prior art before the patent application is filed. In the administrative action concerning the said invalidation, if the petitioner submits supplemental evidence to prove that the patent lacks novelty, it is not the evidence for the same ground, and the supplemental evidence will not be examined.

How will the IP Court do when a party claims or defends that an intellectual property right shall be cancelled or revoked in a civil or criminal action?

    Traditionally, we always think disputes about patent and trademark rights should be examined by administrative procedure because patent and trademark rights are granted through examination made by the TIPO. In addition, Taiwan adopts dualistic legal systems. Therefore, when a party claims or defends that an intellectual property right shall be cancelled or revoked, the court may stay the proceeding pending its ruling in the patent infringement litigation until such obstruction is removed, which results in stalling off the trial in general court and cannot well and effectively protect the IP rights.

    This problem will be improved after the operation of IP Court. According to Articles 16 I and 30 of the new Intellectual Property Case Adjudication Act, when a party claims or defends that an intellectual property right shall be cancelled or revoked in a civil or criminal action about infringement, the court shall decide based on the merit of the case, and the Code of Civil Procedure, Code of Administrative Litigation Procedure, Trademark Act, Patent Act, Species of Plants and Seedling Act, or other applicable laws concerning the stay of an action shall not apply.

    However, the court can not directly claim the IP right in dispute invalid under the circumstances in the preceding paragraph, but can recognize the grounds for cancellation or revocation of the IP right in dispute only.

“FREYA & Device” in I.C. 24 vs. “FREYA” and “馥亞FREYA & Device” in I.C. 03

    This case is about what kind of situation will be deemed diluting the distinctiveness or reputation of a well-known trademark or mark as stipulated in Article 23 I (12) of current Trademark Act.

    The second part of Article 23 I (12) is made to give a well-known mark more protection in order to prevent the distinctiveness or reputation of a well-known mark being diluted or damaged by being used on many irrelevant goods/services. Therefore, when applying for this stipulation, the distinctiveness and reputation of a well-known trademark or mark must be well-recognized by great majority of the public, which is much stricter than the term for causing confusion that it should be well-recognized by the relevant businesses or consumers.

    In this case, although both trademarks contain the same English word “FREYA”, they designate and are used on irrelevant goods, one being used on textile goods while the other being used on cosmetics. In addition, the evidence of use submitted by the opponent can only prove the alleged trademark “FREYA” is well-recognized by consumers in the field of cosmetics, but cannot persuade that it has also been well-recognized by great majority of the public. Therefore, the opposition is rejected.

“The invention, utility model, or design patent that is filed prior to but laid-open or published/patented after the filing of the present patent 4 application” stipulated in Articles 23, 95 and 111 of current Patent Act is limited to a patent filed in Taiwan only.

    According to Articles 23, 95 and 111 of current Patent Act, no invention/utility model patent may be granted when the contents of an invention/utility model claimed in a patent application are identical to the contents described in the specification or drawings of an invention or utility model patent application filed prior to but laid-open or published/patented after the filing of the present patent application, and no design patent may be granted if a design claimed in a patent application is identical or similar to the contents described in the specification or drawings of a design application filed prior to but patented after the filing of the present design application except that the applicant of the present application and such prior invention/utility model/design patent is the same.

    These three articles are made to avoid granting the same invention, utility model or design patent to different applicants, so the limit is that the said prior patent application should be filed in Taiwan. If the said prior patent application is not filed in Taiwan, before it is laid-open or patented, the TIPO has no way of knowing such filing, so the present application should not be deemed lacking novelty. Therefore, if the prior patent application is filed in any foreign country other than Taiwan, there is no ground to apply Articles 23, 95 and 111 of current Patent Act.

Draft amendment to the Copyright Act regarding the liabilities of ISPs (Internet service providers)

    The draft amendment to the Copyright Act regarding the liabilities of ISPs has been finished by collecting comments from the public and submitted to the Executive Yuan for review on August 27, 2008. TIPO hopes this amendment will be able to ensure the legal rights of both ISPs and Internet users after passing legislation.

    Main points of this amendment are shown below:

When a third party uses ISP facilities or services to commit infringement, whether the ISPs have liability for joint infringement should be judged based on the 5 stipulations of Articles 28, 185 and 188 of the Civil Code as well as Article 88 of the Copyright Act.

“Notice/Takedown” mechanism -- If the ISPs remove or make others have no way to access to the suspected infringing material in a timely matter after receiving the notice about illegal use of copyrighted material by users from rights holders, the ISPs will be able to claim that they are not liable to compensate for any injury arising from the user’s infringement.

Counter-notification mechanism – The user who is alleged committing infringement may send a written request to the ISPs to restore the material which is removed or made inaccessible, and hold the rights holder liable for his damages if it is committed that he/she doesn’t infringe any rights of the holders.

ISPs will not be held liable to rights holders or users after removal of suspected infringing material depending on the stipulations in this draft.