A Utility Model patent related to “mold-proof patch” in Taiwan was invalidated by a third party by the ground of “in lack of inventive step” according to the Patent Act, Article 94.4. The complainant (patentee) initiated an administrative action up to the IP Court against the decision of the Appeal.

[ AUGUST 2012 ] >Back

 

 

Patent
 
I. The success in commerce of a product manufactured in accordance with a patent in dispute cannot prove that the patent in dispute meets the inventive step requirements
   
 
A Utility Model patent related to “mold-proof patch” in Taiwan was invalidated by a third party by the ground of “in lack of inventive step” according to the Patent Act, Article 94.4. The complainant (patentee) initiated an administrative action up to the IP Court against the decision of the Appeal.
 
One of the grounds claimed by the complainant was that the success in commerce of the product manufactured in accordance with the Utility Model patent in dispute could prove that the Utility Model patent in dispute was not easy to be accomplished by a person skilled in the art and also prove that the Utility Model patent in dispute met the inventive step requirements. In addition, according to the Examination Guideline, pages 2-3-23 to 2-3-24, about the secondary consideration of “inventive step”, it mentioned that “an invention solving the long-term problems (3.4.2.2)” and “an invention obtaining the success in commerce (3.4.2.4)” were the factors of secondary consideration when judging the inventive step of a patent, which were available evidence to prove that the Utility Model patent in dispute met the inventive step requirements because it not only effectively solved the long-term problem of preventing mold by chemical preparations but also achieved great success in commerce.
 
As mentioned in the decision of the IP Court, the complainant claimed that the  product manufactured in accordance with the Utility Model patent in dispute got very high market share (ranked the 2nd high in the world) by submitting some reports of news media and a CD to prove its success in commerce. However, no matter whether it was true or not, the market share depended on the price of the product, the sales skills and the promotion ways, etc. but did not necessarily rely on the product itself. In addition, the rank of the market share had no direct connection with the judgment of whether the technology characteristics in the claims of the patent met the patentability requirements. Furthermore, the complainant owned some other Utility Model patents related to “mold-proof patch” but the CD was unable to prove the product shown therein was the one manufactured in accordance with the Utility Model patent in dispute.  Moreover, there were two kinds of patents involved in the product sold in one package as shown in the CD. It was hard to prove that it was the Utility Model patent in dispute which brought the success in commerce. So, the decision was made that the success in commerce of a product manufactured in accordance with a patent in dispute could not prove that the patent in dispute met the inventive step requirements.
   
 
(Source: TIPO Newsletter issued on July 5, 2012; the administrative decision No. 124 in the IP Court in 2011)

 

Trademark
 
I. Since July 1, 2012, it is available to pay the trademark registration fee after the official due date
   
 
Before July 01, 2012, when an applicant unintentionally failed to pay the registration fee by the official due date, it was not allowed to restore the trademark right. Each year, there were about 2400 trademarks being lapsed due to failing to pay the registration fees because the applicants were out of the country, made a moving, forgot or had other unintentional reasons. As these reasons were not natural disasters or attributable to the applicants, the applicants could not apply for reinstatement of rights or take other relief measures. The applicants could only re-file their trademarks to the TIPO again. Since the applicants had spent a lot of time and money from the time of filing to being approved for registration, while the TIPO had also spent tremendous administrative resources on examination and approved the applications after everything was lawful, such a regulation was not favorable for both the TIPO and the applicants.
 
The TIPO referred to “Singapore Treaty on the Law of Trademarks, STLT” and amended the related regulations in the new Trademark Act which has been effective as of July 1, 2012. According to the present Trademark Act, the registration fee should be paid within two months from the next day of receiving the notice of allowance. For an applicant who unintentionally fails to pay the registration fee within the official due date, the applicant may pay the said fee in double within six months from the official due date to restore the trademark right.
 
However, in order to avoid the coexistence of the same or similar trademarks, the request of restoration of the trademark right shall not be accepted if the interests of other third parties for their trademark applications or registrations would be affected during such period.
   
 
(Source: TIPO News issued on June 26, 2012)
   
II. It is not regarded as the use of a trademark for a name of an advertising character which is not used as an indication of the source of goods or services
 
The trademark in dispute
   
 
A trademark “花太郎” (transliteration: Hua-Tai-Lang. A Japanese name)” designating the services of “restaurants” was allowed for registration in Taiwan. The complainant filed an opposition against the above trademark during its publication period according to the old Trademark Act, Article 23.1(14) by the reason that the complainant has used “花太郎” as a trademark earlier than the filing date of the “花太郎” trademark registration.
 
The defendant (the TIPO) and the participant (the registrant) argued that “花太郎” used by the complainant was a name of an advertising character for promoting the complainant’s products, but not a trademark. What the consumers recognized was the complainant’s well-known trademark “黑松”.  The main arguments in this legal case were: 1. if the complainant’s use of the term “花太郎” complied with the requisites of the use of a trademark, 2. if the “花太郎” trademark registered by the participant (the registrant) violated the old Trademark Act, Article 23.1(14) and should be invalidated. 
 
The use of a trademark means “the utilization for marketing purpose of trademark on goods, services or relevant articles thereof, or the utilization through means of two-dimensional graphic, audio and visual digitization, electronic media, or other mediums to sufficiently make relevant consumers recognize it as a trademark.” as regulated in the old Trademark Act, Article 6. So, the requisites of the use of a trademark are:
   
  1. The user should have the subjective intention of using the trademark in the course of trade. The “trade” means commercial transactions in the market. The territory of sales includes domestic and exporting markets.
     
  2. There should be an active action in displaying the trademark by the user.
     
  3. The display of such trademark should be capable of being recognized by relevant consumers as a trademark.
   
  The Judge analyzed whether the complainant’s use of the term “花太郎” complied with the requisites of the use of a trademark as follows:
   
  1. The complainant’s trademark displayed on the product was “黑松”: According to the web pages provided by the complainant, they were advertisements about the introduction and promotion of various “黑松” trademarks, but not of the “花太郎” mark. Furthermore, the big amount of the advertising expenses was for promoting the products bearing “黑松” mark instead of “花太郎” mark. So, “花太郎” used by the complainant was not capable of being recognized by relevant consumers as an indication of the source of goods.
     
  2.
“花太郎” was a name of an advertising character for promoting the complainant’s products: 
From the various advertisements provided by the complainant, they were evident that “花太郎” was a name of a fictitious character, an ex-Japanese sumo wrestler, in a series of advertisements, for promoting the complainant’s products. According to the consumers recognition, “花太郎” was only a character in the advertisement, but not an indication of the source of goods. So, the evidence provided by the complainant could only prove that the consumers recognized “黑松” as the complainant’s trademark of the products, but “花太郎” was merely a name of the advertising character. “花太郎” was not used as a trademark.
     
   
  Since the complainant’s use of “花太郎” did not comply with the requisites of the use of a trademark and the participant (the registrant) did not have specific relationship with the complainant to know the complainant’s “花太郎” prior to filing their “花太郎” mark, the “花 太郎” mark registered by the participant (the registrant) did not violate the old Trademark Act, Article.23.1(14).
   
 
(Source: TIPO Newsletter issued on July 5, 2012; the administrative decision No. 10 in the IP Court in 2012 )
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=6091)
   
III. The evidence of use against the revocation application of a trademark registration
   
 
According to the present Trademark Act, Articles 63.1(2) and 63.4, “The Registrar Office shall, ex officio or by request, revoke the registration of a trademark if such trademark is in any of the following:
 (2) where the trademark has not yet been put to use or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use, unless the trademark has been put to use by a licensee.”
 
“Where grounds for revocation exist in respect of some of the designated goods or services of the registered trademark, the registration may be revoked in respect of those goods or services.
 
In the past, even though there were many designated goods/services in a trademark registration, where the applicant of a revocation application did not specifically indicate what goods or services of the registered trademark should be revoked because of non-use, the revocation application would be rejected if one of the designated goods/services was proven having been used by the registrant. 
 
In 2010, a seminar about intellectual property laws held by Judicial Yuan discussed the above issues and concluded: according to the old Trademark Act, Article 57.1(2) (presently, Article 63.1(2)), the “non-use” meant that all kinds of the designated goods/services of the registered trademark had not yet been put to use. If the evidence of use only showed the use of one kind of the designated goods/services, it could not be deemed the use of all of the designated goods/services of the registered trademark. The registrant had to supplement further evidence of use to show the use of all kinds of the designated goods/services of the registered trademark. Failure to do so, the trademark registration might be revoked in respect of those goods or services which had not yet been put to use.
 
Presently, the TIPO, MOEA and the IP Court follow the above conclusion made in the said seminar. When submitting the evidence of use against a revocation application, in principle, the registrant should submit the evidence of use on each item of the designated goods/ services. However, it is acceptable not to submit the evidence of use by each item if the goods/services have the similar nature. For example:
   
  1. If the designated goods are “lipsticks, pressed powder, cosmetics for animals”, the evidence of use for “lipsticks” can also be deemed the use of the “pressed powder” since they have the similar nature, i.e. they are kinds of cosmetics for human use. However, the other goods “cosmetics for animals” cannot be deemed having been used by such evidence due to the different nature. 
     
  2. With the same designated goods as shown above, if the evidence of use for “skin lotions” is submitted, even though “skin lotions”, “lipsticks” and “pressed powder” have the similar nature of cosmetics for human use, “skin lotions” cannot be deemed the qualified evidence of use because it was not designated in the said trademark registration.
     
  3. If the designated goods of a trademark registration are “cosmetics, lipsticks, pressed powder”, the evidence of use for “lipsticks” or “skin lotions” can also be deemed the use of the “cosmetics” since the specific goods can be encompassed in the generic term of goods as designated.
     
   
  (Source: The seminar held by the TIPO in June 2012 )

 

 

 

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