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So far, TIPO and JPO have exchanged 3,354 electronic priority documents of applications filed bilaterally since the launch of the “Priority Document Exchange” (PDX) Program in December 02, 2013

[ September 2014 ] >Back
Patents
 
I. So far, TIPO and JPO have exchanged 3,354 electronic priority documents of applications filed bilaterally since the launch of the “Priority Document Exchange” (PDX) Program in December 02, 2013
 
The Association of East Asian Relations and Interchange Association Japan signed a memorandum of understanding on the PDX program which was implemented from December 02, 2013.

Under the PDX program, both offices can directly transmit and obtain electronic priority documents of applications filed bilaterally without wasting time and money on producing their paper version.

In turn, this simplified and cross-country request procedure can help the applicant to economize on postage. Moreover, the PDX program would enable synchronization of patent-family information by allowing patent examiners to quickly access to and review online priority documents from both offices, thereby enhancing examination and administrative efficiency.

As of the end of June 2014, the number of priority document exchange has been increased from 23 at the very beginning to 3,354 till the end of June.  Currently, there are in average 650 exchanges of priority documents every month under the PDX program. 

To encourage this online procedure, TIPO does not require any fees. Therefore, please do not hesitate to take advantage of the convenience and efficiency from the PDX program when it is available.
   
  Source: TIPO Newsletter published on August 5, 2014
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8298.htm)
   
II. Collective Interview for Relevant Invention Patent Applications Program” helps shorten the substantive examination term to seven (7) months at the earliest
 
In order to improve the examination efficiency, TIPO launched a pilot program “the Collective Interview for Relevant Interview Patent Applications program (Collective Interview Program, CIP)” on June 13, 2011.  Evaluation of the program shows that participants have experienced several benefits, including effectively advancing prosecution of a group of invention patent applications, enhanced understanding before issuance of an office action, having chances for the applicant(s) to file amendment after the interview, and expedited allowance of an application due to the enhanced communication. It is therefore the Collective Interview Program became permanent on September 28, 2012. Decreasing requirement for the Collective Interview Program was amended and commenced on May 10, 2013.

There are five requirements for requesting for examination under the Collective Interview Program. These are:
  (a) The applications are invention patent applications which meet the definition of “Relevant Invention Patent Applications”. That is it refers to invention patent applications with the same related technical subject(s).
  (b) The applications are filed by the same applicant(s) who has been notified that the substantive examination for the applications will begin shortly. And TIPO has not issued office actions on the applications.
  (c) The applications have been laid-open prior to filing for the Collective Interview Program; if not, the applicant(s) must request the applications to be published early pursuant to Article 37 Paragraph 2 of the Patent Act.
  (d) None of the applications is the earlier application of Article 30 of the Patent Act (priority claim based on an earlier application in Taiwan filed by the same applicant).
  (e) The number of applications in each request for examination under the Collective Interview Program shall be in the range of 2 to 10 cases in principle.
 
If the requirements are met and documents are submitted, TIPO will contact the applicant(s) within 1 month to arrange the collective interview. A written notification detailing the time and place of the collective interview will be provided to the applicant(s) prior to the interview.

During the collective interview, the applicant(s) shall provide an introduction to the technologies of the applications, specify the scope of claims, and provide reasons showing the claims to be patentable respectively.

In principle, office actions will be issued within 3 month after the collective interview or, if the applicant(s) provide a proposed amendment during the collective interview, office notices (either a decision of rejection or approval) will be issued within 3 month after the amendment is submitted to TIPO.

As of the end of June, 2014, the statistics show that it takes about 220 days on an average to obtain a granted patent after requesting for examination under the Collective Interview Program. Therefore, please feel free to well take advantage of the program when it is available.
     
  Source: News published by TIPO on August 19, 2014
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8298.htm)

 

Trademarks
 
I. Where a trademark as registered consists of a combination of a word and a device, whether it will be deemed sufficient use when the word is placed at a corner of one surface of a product package and the device is placed at the diagonal corner on the same surface? 
 

In principle, a registered trademark should always be used in its entirety as it was originally registered. However, use of a registered trademark in practice in a form which differs from the form in which it was registered, but does not affect the identity of the trademark according to general concepts prevailing in the society, shall be deemed to use the registered trademark. (Article 64 of the Trademark Act) The term “identity” means that the main features used to identify a trademark are not substantially changed even though there are minor differences in form between the trademark actually used and the trademark registered, so the two leave the same impression on general consumers and are perceived to be the same.

In practice, there have been several cases decided by the IP Court deeming that the registered trademarks can be considered to be in use where the main portions of a composite mark are used at the same time but separately, either where one on the top of a catalogue and the other on the bottom thereof, or where one at the front side of a product package while the other on the lateral side thereof.

However, it is the comprehensive consideration of the many factors in those cases, such as the format of catalog, the style of packaging, the impression left by the trademarks, the way how a trademark is displayed in the same industry, the general practice of trade and the perception of relevant consumers, etc. Thus, it may not be deemed sufficient use of a trademark in different industries and conditions, so we recommend a registered trademark always be used in its entirety.
     
 
Source: Q&A about trademark matters in the most recent forum collated by the TIPO and published on August 12, 2014
(http://www.tipo.gov.tw/ct.asp?xItem=527690&ctNode=7127&mp=1)
 
II.
How does the TIPO deal with the examination of a trademark application when a third party actively submits grounds and evidence to assert that it is filed in bad faith?
 

Although there are no procedures stipulated expressly in the Trademark Act for official consideration of third party’s objections to the grant of a trademark, a third party is still allowed to actively submit any grounds and evidence during the examination to cause the examiner's attention when he/she believes that a trademark application is filed in bad faith (Article 30 (12) of the Trademark Act).

Article 30 (12): A trademark shall not be registered when being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration, unless the proprietor of the said earlier used trademark consents to the application;

Where the third party would like to actively submit grounds and evidence against the registration of a trademark application, the following facts should be paid attention and included:
  (1) the similarity exists between two marks;
  (2) whether the trademark cited as the basis for refusal of registration is used earlier than the filing date of the trademark application;
  (3) whether the goods or services of the trademark application are identical with or similar to those for which the earlier used trademark is applied;
  (4) evidence to prove that the applicant is aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark so he/she files the application for registration; 
  (5) making a description of the applicant’s intent to imitate the earlier used trademark.
 

When the examiner receives grounds and evidence from a third party against the registration of a trademark application, he/she will look into them and
  (1) if the examiner thinks none of the submission is reasonable and adoptable, he/she will just keep them in file without sending any notice to the applicant or the third party;
  (2) if the examiner thinks the submission is reasonable and adoptable, he/she will issue a written notice with such submission to state grounds for refusal to the applicant, who may express his/her opinion on the intended refusal within the a period set by the examiner;
  (3) if the applicant submits his/her opinion against the written notice, the examiner shall make a disposition of refusal or approval at his/her end; it is not necessary for the examiner to serve a copy of the opinion submitted by the applicant to the third party for him/her to state his/her counter opinion.
 
 
 
The following are some examples where third parties actively submit grounds and evidence up to the TIPO against the trademark applications:
 
 
Example 1:
 
  Trademark at issue Trademark cited as the basis for refusal of registration
Logos
International class 28
Evidence submitted by the third party
(1) a copy of the trademark certificate of the trademark cited in China;
(2) an authorization signed by the trademark holder to appoint the third party to deal with the dispute on their behalf;
(3) a declaration signed by the trademark holder to state that they never assigned the applicant to file the trademark at issue in Taiwan.
Results The submission was not sufficient enough to identify the applicant’s bad faith in filing the trademark at issue.
 

Example 2:
 
  Trademark at issue Trademark cited as the basis for refusal of registration
Logos
International class 28
Evidence submitted by the third party
(1) historical orders showing the transactions of ALZRC airplane models from September 2011 to April 2013 downloaded from official websites;
(2) packaging boxes and bags bearing the trademark cited, “ALZRC”;
(3) delivery notes on which the addressee was just the same as the applicant; 
Results The examiner deemed the submission was adoptable so issued a written notice with the submission to the applicant to state his/her opinion by setting a period. The applicant did not respond to the written notice within the prescribed period, so the examiner rendered a disposition of refusal.
 

Example 3:
 
  Trademark at issue Trademark cited as the basis for refusal of registration
Logos
International class 07
Evidence submitted by the third party
(1) information of trademark applications and registrations of the trademark cited in US, PH, IN, MY and TH;
(2) import invoices proving that the holder of the trademark cited continued selling goods to the applicant of the trademark at issue in 2004 and from 2005 to 2010;
(3) basic information of the company;
(4) catalogs of products bearing the trademark cited.
Results The examiner deemed the submission was adoptable so issued a written notice with the submission to the applicant to state his/her opinion by setting a period. The applicant did not respond to the written notice within the prescribed period, so the examiner rendered a disposition of refusal.
 

Example 4:
 
  Trademark at issue Trademark cited as the basis for refusal of registration
Logos
International class 18
Evidence submitted by the third party
(1)
a copy of the trademark certificate of the trademark cited in China;
(2) a copy of the Sales Agency Agreement signed between the holder of trademark cited and the third party;
(3) a copy of web pages of Yahoo, PChome and Ruten, showing the sales of products bearing the trademark cited in the e-shops;
(4) a copy of notice of being reported sent to the applicant of trademark at issue by the Customer service department of Yahoo on March 02, 2012;
(5) a copy of criminal complaint against the applicant of trademark at issue filed to the Taichung District Court on March 14, 2012.
Results The examiner deemed the submission was adoptable so issued a written notice with the submission to the applicant to state his/her opinion by setting a period. The applicant did not respond to the written notice within the prescribed period, so the examiner rendered a disposition of refusal.
 

Example 5:
 
  Trademark at issue Trademark cited as the basis for refusal of registration
Logos
International class 28
Evidence submitted by the third party
(1) the trademark cited is very unique and distinctive;
(2) the trademark cited has been used on instant messaging software since June 2011;
(3) the trademark cited has been used in Taiwan since early 2012 by having a star speak for the instant messenger, cooperating with Family Mart to introduce stuffed toys of LINE characters and launching many kinds of LINE games.
Results The examiner deemed the submission was adoptable so issued a written notice with the submission to the applicant of the trademark at issue.  The applicant stated his opinion within the prescribed period, but the examiner deemed that the submission is sufficient enough to prove that the trademark cited has been used earlier than the filing date of the trademark at issue, so rendered a disposition of refusal.
   
  Source: Q&A about trademark matters in the most recent forum collated by the TIPO and published on August 12, 2014
(http://www.tipo.gov.tw/ct.asp?xItem=527690&ctNode=7127&mp=1)

 

 

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