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The TIPO published an advance announcement of the draft of “Regulations for Governing the Foreign Language Documents” on May 17, 2012.

[ June 2012 ] >Back

 

 

Patent
 
I. The TIPO published an advance announcement of the draft of “Regulations for Governing the Foreign Language Documents” on May 17, 2012. 
   
  According to Article 145 of the draft amendment to the Patent Act passed by the Legislative Yuan on November 29, 2011, the competent authority shall promulgate regulations governing the limitation of the foreign language documents submitted in accordance with Paragraph 3 of Article 25, Paragraph 3 of Article 106, and Paragraph 3 of Article 125. After holding a Public Forum on April 13, 2012 to collate comments from the public, the TIPO prepared and published an advance announcement of the draft of “Regulations for Governing the Foreign Language Documents” on May 17, 2012.
   
  The draft regulations are listed below for your advance reference:
 
Article 1 These regulations are formulated pursuant to the provision of Article 145 of the Patent Act (hereinafter referred to as “the Act”). 
Article 2 The categories of the foreign language documents in accordance with Paragraph 3 of Article 25, Paragraph 3 of Article 106, and Paragraph 3 of Article 125 of the Act shall be limited to Arabic, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish. 

In violation of the provision set forth in the preceding Paragraph, the Patent Authority shall specify a date for the applicant to supplement the correct documents in an acceptable language, and the date on which the correct documents are supplemented shall be regarded as the date on which the acceptable foreign language documents are submitted.
Article 3 When two or more foreign language documents are filed for the same patent application, only the foreign language document submitted first may be accepted, except in the case where the applicant declares the foreign language document filed later shall be used, the date on which the later foreign language document is submitted shall be regarded as the date on which the foreign language document is submitted.

If the two or more foreign language documents referred to in the preceding Paragraph are filed on the same date, the Patent Authority shall specify a date for the applicant to select one of such documents, and failure of the applicant to select within the time limit shall cause the dismissal of the patent application. 
Article 4 The foreign language documents submitted for filing an invention patent application shall contain a specification, at least one claim and necessary drawings.

The foreign language documents submitted for filing a utility model patent application shall contain a specification, at least one claim and drawings. 

The foreign language documents submitted for filing a design patent application shall contain drawings and the title of the article embodying the design.
Article 5 The applicant is not allowed to submit the patent gazette in foreign language or the certified document of priority of the parent application to substitute for the foreign language documents.
Article 6 These Regulations shall enter into force on the date of promulgation.
   
 
(Source: TIPO News dated May 17, 2012)
   
II. The Prescription for a Patentee to Claim for Damages
   
  According to Paragraph 1 of Article 197 of the Civil Code in Taiwan, the claim for the injury arising from a wrongful act shall be extinguished by prescription, if not exercised within two years from the date when the injury and the person bound to make compensation became known to the injured person. The same rule shall be applied if ten years have elapsed from the date when the wrongful act was committed. 

For a patent case, when the infringing actions continuously happen which result in continued damages, if each infringing action and damage exist respectively and can be distinguished from one another, the patentee’s right to claim for damages should be brought one after another. Consequently, the prescription should be calculated from the date when each infringing action and the person bound to make compensation become known to the patentee. This way could just look after both the legal order and the interests of the concerned parties well. 
   
 
(Source: TIPO Newsletter issued on May 07, 2012)
   
III. The IP Court concluded in a recent decision that the specific evidence should be submitted to prove the existence of the ordinary knowledge alleged. 
   
 
In the said case, the invention patent application (hereinafter “patent application in dispute”) was rejected by the TIPO because of lacking the inventive step according to Paragraph 4 of Article 22 of the Patent Act in Taiwan. The TIPO deemed that Claim 1 of the patent application in dispute lacked the inventive step because it could be easily accomplished by a person having ordinary knowledge in the art based on citations 1 and 2. 
 
The so-called "ordinary knowledge" refers to the general knowledge known in the technical field of the invention, including information which is conventional or widely used, the information contained in the textbooks or reference books, or the matters learnt from the empirical rules.  That is if the "ordinary knowledge" is not a kind of information which is conventional or widely used or the information contained in the textbooks or reference books, it would be the matters learnt from the empirical rules. 
 
Therefore, the person who alleges something is the ordinary knowledge should be able to submit evidence to prove the existence thereof with either the information contained in the textbooks or reference books or the material evidence which can prove that the specific empirical rule exists and the ordinary knowledge can be derived from the specific empirical rule. When one party denies the fact that the ordinary knowledge exists as alleged by the opposite party, the opposite party should bear the burden of proof with regard to the fact which he/she alleged.
 
In this case, when the TIPO decided that the patent application in dispute should be rejected because of lacking inventive step according to Paragraph 4 of Article 22 of the Patent Act in Taiwan, it failed to submit evidence to support and prove such allegation. Therefore, the IP Court thought the TIPO’s decision was obviously reckless and unreliable.  
   
 
(Source: TIPO Newsletter issued on April 05, 2012)

 

Trademark
 
According to Article 23 I (13) of the Trademark Act, a trademark application shall be rejected if the proposed trademark is identical or similar to a registered trademark or a proposed trademark of a preceding application that is designated for use on identical or similar goods or services thereof and hence likely to cause confusion to relevant consumers. 
 
Therefore, when two trademarks are considered similar, it means that consumers with common knowledge and experience, who exercise a normal level of attention when shopping, may be confused about and misidentify the two kinds of goods/services as coming from the same source or from different sources of related nature by a separate comparison on the overall appearance, concept idea or pronunciation sound of the two trademarks.
 
We introduce herewith two decisions made by the IP Court in relation to the "Likelihood of Confusion" for reference. 
 
I. The IP Court decided that “ ” is dissimilar to “ ” due to the principle of observing the overall impressions of the trademarks. (No. 137 / 2011) 
   
 
vs.
The mark cited as the basis
in the opposition
The trademark in dispute
   
 
When judging whether two trademarks are similar to each other on the overall appearance or concept, it should be determined by objective factors, such as: (1) the normal level of attention when shopping exercised by the consumers with common knowledge and experience; (2) the word, design and symbol of a trademark should be judged based on the overall impression and by the separate comparison; (3) when a trademark is a combination of word, design and symbol, the comparison of each element should be made respectively and the main distinguishing part of the trademark should be extracted for particular observance and comparison. Therefore, when judging whether two trademarks are similar, the main part, any of the word, design or symbol, which customers usually exercise greater attention, should be given more weight.
 
In this case, except the same Chinese characters “爾康” in both marks, the remaining parts were quite different. For example, the prefixes of each mark, “佑” and “賀”, were different. The mark cited as the basis in the opposition was a plain mark without stylization while the trademark in dispute had a fried egg-like design.  The mark cited as the basis in the opposition had English letters “HERCOM” but the trademark in dispute didn’t. Consequently, when comparing the two marks on an overall impression, the similarity between them was low.
 
Furthermore, the designated goods under the trademark in dispute were daily diets for infants while the designated goods under the mark cited as the basis in the opposition were nutritional supplements. The goods under both marks were obviously different in function as well.  Therefore, the consumers were able to identify them as coming from different sources so no confusion would be caused. 
   
 
(Source: TIPO Newsletter issued on April 05, 2012)
   
II.

The IP Court decided that “ ” is dissimilar to “

” because the fact of using a trademark actively is also one of the factors to be considered when judging the likelihood of confusion. (No. 137 / 2011) 
   
 
vs.
The mark cited as the basis in the invalidation
 The trademark in dispute
   
 
When judging whether two trademarks are similar to each other, it should be determined by objective factors, such as: (1) the normal level of attention when shopping exercised by the consumers with common knowledge and experience; (2) the word, design and symbol of a trademark should be judged based on the overall impression and by the separate comparison; (3) the overall impression of the trademarks made by the global comparison to the consumers. However, even though the likelihood of confusion is extremely high when the requirements of similar trademarks and similar goods/services are both met, it might not be absolutely the case. Sometimes, other important factors may exist. For instance, when two trademarks have concurrently existed in the marketplace for a period of time and are familiar to relevant consumers, they are easily distinguishable and there will be no likelihood of confusion. 
 
In this case, the trademark cited as the basis in the invalidation merely consisted of plain Chinese characters “ ” while the trademark in dispute contained a design of ox horns, the English characters “ANli” and the Chinese characters “銨麗氣密門窗”.  Thus, the overall impression of the trademark in dispute was an impression combining the design of ox horns, the English characters “ANLi” and the Chinese characters “銨麗氣密門窗”.  Even though the exclusive rights of the term “氣密門窗 (it means airtight doors and windows)” had been disclaimed, the comparison shall still include the part disclaimed for exclusive use. Although the pronunciation of “安麗” in the trademark cited as the basis in the invalidation was the same to that of “銨麗” in the trademark in dispute, the overall impression of two marks was still easily distinguishable so the similarity between two marks was low.       
 
 
Moreover, from the evidence of use submitted by the ex-registrant of the trademark in dispute during the procedure of an earlier opposition, it showed that the ex-registrant actively promoted the trademark in dispute by advertising it in broadcasts, internets and mass media from time to time since September 2006. On the other hand, the applicant of the invalidation also submitted evidence of use of the trademark cited as the basis in the invalidation from 2003 to 2005. Therefore, both marks have been coexisting in the marketplace since 2006 until now.  Now that the trademark in dispute was distinctive and has been coexisting with the trademark cited as the basis in the invalidation in the marketplace for years, they were both familiar to relevant consumers and were easily distinguishable, so there was no likelihood of confusion between these two marks. 
   
 
(Source: TIPO Newsletter issued on May 07, 2012)

 

 

 

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