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Agreement on the Ownership of Patent Rights

[ July 2014 ] >Back
Patents
 
I. Agreement on the Ownership of Patent Rights
 

According to Article 7 II of the Patent Act, where a fund provider engages another party to conduct research and development, the ownership of the right to apply for a patent and the patent right in connection with the outcome of such research and development shall be vested in the party as mutually agreed upon in an agreement between both parties, or such right shall be vested in the inventor, utility model creator or designer in the absence of such covenant in the agreement. However, the fund provider shall be entitled to exploit such invention, utility model or design.

In the case of No.29 year of 2013, a decision made by the IP Court, the Defendant is the fund provider and the Plaintiff is the party engaged by the Defendant to conduct researches and development of the product at issue. For starting the project, the Defendant signed a Statement to the Plaintiff and according to Article 7 of the Statement, the copyrights, trademark rights, patent rights and all relevant intellectual property rights derived from this project should be vested in the Plaintiff. The Plaintiff also granted the Defendant the exclusive possession of the trade in the commodity thereof. Therefore, the patent rights and the relevant intellectual property rights derived from this project should be vested in the Plaintiff based on such Statement in despite of the facts that it was the Defendant to provide fund or bring up the idea of the project.

However, the Defendant ignored the Statement they signed to the Plaintiff, and surreptitiously sought for patent protection of the research achievements by filing a utility model application which was granted as Patent No. M406889.
 
Due to the mutual agreement between two parties and the legal relationship of the tort and the unjust enrichment, the Plaintiff has the legitimate right to claim the return of the patent right (Patent No. M406889) from the Defendant via a recordation of assignment.
 
  Source: TIPO Newsletter issued on June 05, 2014
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8170.htm#521617)
 
 
II. Whether a Utility Model, which is dismissed because of failing to pay the issue fee and the first year annuity within the official deadline set for such payments, can be the base application for claiming priority of a subsequent patent application?
 

According to Paragraph 1 of Article 30 of the Patent Act, where an applicant, based on his/her earlier invention or utility model patent application in the ROC, files a subsequent patent application, he/she may make a priority claim with respect to the invention or utility model disclosed in the description, claim(s) or drawing(s) submitted for the earlier patent application. However, this provision shall not apply where the earlier patent application is for a utility model patent application that has been published or has been irrevocably rejected; or where the earlier patent application has been withdrawn or dismissed. (Item (5) & (6) of Paragraph 1 of Article 30)

In the case of No.102, year of 2013, an administrative decision made by the IP Court, the Plaintiff filed a Utility Model patent application on January 04, 2013 claiming priority based on an earlier Utility Model patent application filed on February 29, 2012 in Taiwan. After the formality examination, the earlier Utility Model patent application received the written decision of allowance from TIPO on June 13, 2013. Thus, the official deadline for the Plaintiff to pay the issue fee and the first year patent annuity was due on September 13, 2013 (within three months after the service of the aforesaid written decision) but the Plaintiff failed to conduct the payments on time.

According to Paragraph 1 of Article 101 of the Patent Act effective at the moment when the earlier Utility Model patent application received the aforesaid written decision, a claimed utility model in a patent application will not be published until the applicant shall have paid the issue fee and the first year annuity within three (3) months after the applicant has received the written decision for grant of the patent as requested; if the applicant fails to make the foregoing payments upon expiry of the given deadline, no publication of said utility model will be made, and the patent right granted thereof shall not exist ab initio.

The Plaintiff failed to pay the issue fee and the first year annuity before the expiry of official deadline, i.e. September 13, 2013, so no publication of said utility model was made, and the patent right granted thereof deemed to be non-existent from the beginning. That is just the situation as stipulated in Item (5), Paragraph 1 of Article 30 of the current Patent Act that the earlier Utility Model patent application cannot be the base application for priority claimed by a subsequent Utility Model patent application if it has been irrevocably rejected. Therefore, the Plaintiff should not make a priority claim based on the earlier Utility Model patent application for their subsequent patent application.
 
  Source: TIPO Newsletter published on May 5, 2014
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8108.htm)

 

Trademarks
 
I. How does the IP Court identify evidence of trademark use in practice?
 

Trademark at issue: “ ” (Reg. No. 01033546)

Trademark Owner: FORMOSA AUTOMOBILE CORPORATION 
 
  Designated goods: Automobiles; Vans; Jeep; Stage wagon; Bodies for vehicles; Rims for vehicle wheels; vehicle steering wheels; Transmission shaft; Driving motors for land vehicles; Windscreens; Car engine; Electric vehicles; Electricity-driven motorcycle; Vehicle transmission; Catalytic converters; Vehicle suspension device; Vehicle anti-lock braking system (ABS); Bicycles; Steamship; Aeroplanes.
 

A Chinese company, Beiqi Foton Motor Co., Ltd., filed a revocation against the trademark Reg. No. 01033546 “ ” (hereinafter “the trademark at issue”) based on the ground of non-use for three years up to Taiwan Intellectual Property Office (TIPO).
 
 
TIPO affirmed the revocation so that the said registration was cancelled.  However, after the trademark owner of the trademark at issue (hereinafter “the Plaintiff”) filed an administrative litigation up to the IP Court, the IP Court revoked TIPO’s decision.  From the decision made by the IP Court, we are able to know how the IP Court identifies evidence of trademark use in practice. The followings are main points where the IP Court holds different viewpoints from TIPO on this case.
 
 
1. Can it be regarded as the legitimate use of a trademark when the trademark at issue is adhered to products by adhesive labels?
TIPO IP Court
No, it can’t because adhesive labels may be adhered to the products any time.
Yes, it can because:
(1) The shock absorbers and transmission shafts are mental castings made of firm and solid material. Model numbers are hard to be imprinted thereon, so it’s feasible to adhere labels to the products. In addition, both the shock absorbers and transmission shafts are placed inside the body of cars, but not what consumers can see from the appearance of cars. Therefore, whether to imprint dates and model numbers on the shock absorbers and transmission shafts is the cost consideration which the manufacturers have to take into account.
(2) The Plaintiff submitted the photos of the shock absorbers bearing the model number of “YAKZ000000000A”. From the copies of delivery lists, invoices and order forms submitted by the Plaintiff’s subsidiary company, those documents recorded the same model number “YAKZ000000000A” for a batch of vehicle parts, so they can mutually prove the correspondence among them.
2. Can the use of the trademark at issue on “wheel cover, shock absorbers, oil core, valve cover gasket, eccentric shaft seals, timing belt and assembly of rear shock absorbers” be regarded as the use of the trademark at issue on the designated goods?
TIPO IP Court
No, it can’t because those goods are not parts of the designated goods. Yes, it can. Those goods are general and essential components of vehicles so they fall in the scope of the designated goods of the trademark at issue.
3. Can the combination use of “ ” (the trademark at issue) and “FORMOSA” (another trademark owned by the Plaintiff) be regarded as the legitimate use of the trademark at issue?
TIPO IP Court
No, it can’t. The overall impression gives a combination trademark consisting of foreign languages and a device, which is different from the trademark at issue, a sole logo. There is no identity between the trademark at issue and the combination. Yes, it can.
The word “FORMOSA” is the main portion of the Plaintiff’s company name. The purpose of using the word “FORMOSA” together with the trademark at issue is to strengthen the identification of the source of the goods, and enable related consumers or manufacturers to recognize the trademark at issue and the Plaintiff easier. Therefore, the combination use of “ ” and “FORMOSA” can connect related consumers with the trademark at issue so as to identify the source of goods.
 
 
II.
There is still the probability for two trademarks to be deemed similar even though their designated goods/services belong to different classes.
 

If goods have the same marketing channels or services are provided at the same locations, it is more likely that they will cause confusion as there is a higher probability that relevant consumers will come across them simultaneously.

Under the foregoing condition, two trademarks may be still deemed similar even though their designated goods/services belong to different classes.  Here are some samples below.
 
 
Case 1:
 
Trademarks in conflict
I.C. 26 10
Goods/Services in conflict Pacifier chain clip Pacifiers for babies; Soother
Reasons sustained by MOEA No.09306211210 The function of a “pacifier chain clip” is to assist a “pacifier” being worn on a baby to avoid losing the pacifier. The “pacifier chain clip” and the “pacifier” are complementary goods in function and usage. Both pacifier chain clip and pacifier are goods which consumers who have babies must buy or must know, especially for housewives. And, they are usually displayed in the same venue for sale, such as baby specialty stores, department stores and baby specialty departments in shopping malls, etc.
  Case 2:
 
Trademarks in conflict
I.C. 16 09、37
Goods/Services in conflict Inking ribbons; Carbon ribbon for typewriter; Carbon ribbon for printer; Inking ribbons for printers; Copying paper; Fax paper; Paper for ink jet printer; Carbon ribbon and ink for computer; Paper and office requisites, etc. Telephone apparatus; Facsimile machines; PBX; Computer keyboards; Printers for use with computers; Computer memory; Mouse; Laser printer; repair of computer hardware, etc.
Reasons sustained by MOEA No.09506177510 Both goods and services complement each other very closely in functions, usage, manufacturers, marketing channels or locations. They can jointly satisfy customers’ specific demands. According to general concepts prevailing in the society or trading situations in the marketplace, it will likely cause consumers to misidentify them as goods/services from the same source, or different but related sources. Thus, these goods and services are deemed to have a similar relationship.
  Case 3:
 
Trademarks in conflict
I.C. 09 18
Goods/Services in conflict Mobile phone pouch made of leather Wallet; Purse, etc.
Reasons sustained by MOEA No.09106129090 Both goods have common aspects in raw materials and manufacturers.

A mobile phone pouch made of leather belongs to accessories of mobile phones. It is generally sold in the same locations as mobile phones. However, it is also common to find a mobile phone pouch made of leather in locations where wallets and purses are sold, no matter whether it is sold in collocation with a purse or individually. Although the target consumers for the mobile phone pouch are those who carry mobile phones, it is not easy to distinguish consumers using mobile phones from those buying wallets and purses because people carrying mobile phones is a universal phenomenon in Taiwan. Thus, we cannot say that the marketing channels and locations thereof are different, the chance for relevant consumers to come across them simultaneously is small, or consumers for both goods are different.

 
 
Source: decisions made by MOEA (the superior institution of TIPO)

 

 

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