Utility Model Technical Evaluation Reports

Since 2004, Taiwan Patent Act has been revised to adopt “Utility Model (abbreviated as UM) formality examination”. It is the system in between substantial examination and registration system. Generally speaking, a UM patent will be granted after 4 to 6 months from its application.

Without going through substantial examination of patentability, however, it results in instability of a UM patent right. Pursuant to Article 104 of Taiwan Patent Act, “[w]hen exercising a utility model patent right, the patentee of that utility model right shall present the technical evaluation report regarding the utility model patent for the purpose of warning. “ Accordingly, a UM technical evaluation report plays an extremely important role to provide the support to unstable UM patent rights.

Changes in Handling of UM Technical Evaluation Reports

In order to accelerate the completion of UM Technical Evaluation reports to maximize efficiency of the patent examination, the Taiwan Intellectual Property Office made changes to the handling of UM technical evaluation reports. The revision was enacted on the 1st of March, 2009, summarized as follows:

The Timing of the Judgment of the Secondary Meaning for a Trademark Should be at the Time of Examination in the TIPO

According to the Article 23.IV of the Trademark Act in Taiwan: “The provisions of Item (2) of paragraph 1 of this Article or paragraph 2 of Article 5 shall not apply in the case where the proposed trademark has been used by the applicant and has become a distinctive identification of the goods or services provided by the 3 applicant in the course of trade.” The said regulation is about the establishment of the Secondary Meaning of a trademark through wide use in the market.

According to a verdict (No. 01010) in the Taipei High Administration Court in 2004, the timing of judgment of the Secondary Meaning for a trademark based on the Article 23.IV of Trademark Act should be at the time of examination in the TIPO. When the applicant fails to provide sufficient evidence to persuade the examiner that a trademark has obtained its Secondary Meaning through wide use in the market under the examination procedure of the TIPO, it is not acceptable for the applicant to provide more evidence of use to prove the Secondary Meaning of the trademark under the proceedings of Administration Relief.

(Source: The TIPO’s Newsletter No. 34 issued on April 5, 2009)

“Paddy” and “Rice Related Food” are Deemed Similar Goods by the TIPO

In the Manual of the Goods and Services classifications in Taiwan, “paddy” and “rice related food” are not deemed similar goods, although they are in the same class.

However, according to the official decisions for two Invalidation applications in the TIPO recently, the registered trademark “間稻” which designated “rice related food” in class 30 was deemed similar to a prior registered trademark “鴨間稻” which designated “paddy” in class 30, since the main ingredients of the “rice related food” are “paddy”. Both kinds of products have relationship on their purposes, functions, producers, sales channels...etc. Therefore, the said “間稻” registrations were invalidated according to the Article 23.I(14) of the Trademark Act. However, kindly note that they are special cases made by the TIPO which we introduced for reference only. It is not necessary that the TIPO should follow this principle in the future cases.

“.ASIA” Top Level Domains (TLD)

Since 2007, Taiwan is one of the countries who can register “.ASIA” as the top level domains (TLD) on the clients’ behalf. During these two years, around 300 thousands of registrants have registered “.ASIA” TLD in Asian countries. In the past, about 60% registrants of the “.ASIA” registrations are from Europe and America. However, in 2009, there are more than two-thirds of total amount of registrants of the “.ASIA” registrations coming from Asian countries due to the growing economies in Asian countries. The top five countries who are registering “.ASIA” in the Asian area are Australia, Japan, China, Korea and India.

Even though Taiwan is not one of the top five countries for the “.ASIA” registrations, there is no lack of big and prominent enterprises in Taiwan having registered the “.ASIA” domain, such as “Chi Mei Corporation (www.chimei.asia)” and “Micro-Star Int'l Co., Ltd. (www.msi.asia)” and used the domain names as their main sites. Therefore, we believe that the companies who regard Asia as important market will also think highly about the long-term value of “.ASIA” domain in Asia.

The combination of the value of domain names, trademarks and websites will be very helpful to win over the international market. We will be pleased to register “.ASIA” for you and your clients, in addition to the domain names for (English). com.tw, (English).tw, (Chinese).tw and other IP matters, whenever you need our services.