| General | ||
| I. | Updated Practice for Power of Attorney of Patent and Trademark | |
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Where the applicants are companies organized and existing under the laws of China, Hong Kong and Macao, it is no longer necessary for those applicants to stamp the “company seal” on the Power of Attorney for either patent or trademark applications. Representatives’ signatures or stamps on the Power of Attorneys alone are sufficient. |
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Source: TIPO News issued on November 18, 2014 (http://www.tipo.gov.tw/ct.asp?xItem=535517&ctNode=7127&mp=1) |
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| Domain Name | ||
| I. | New Top-Level-Domain (TLD) “.taipei” is available now. | |
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Taipei City Government and ICANN entered into a Registry Agreement in August 2014, under which Taipei City Government operates the top-level domain “.taipei”. According to the regulations, there are four steps for the public to access to the registrations of the top-level domain “.taipei” gradually. |
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| (1) |
Sunrise Period has been opened on December 01, 2014 and closed on December 31, 2014. At this stage, only members of Trademark Clearinghouse (TMCH) were given the first priority to apply for the registration of the TLD “.taipei”. |
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| (2) |
The Greater Taipei Precedence Period will be opened on January 21, 2015 and scheduled to close on February 19, 2015. This period is open for incorporated companies registered in Taipei City and the New Taipei City. |
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| (3) |
Snatch Period will start from February 24 and end on March 26, 2015. At this stage, everyone is allowed to apply for registration of the TLD “.taipei”. After the end of the period, if there is more than one person applying for the same domain name, competitive bidding will decide the owner. |
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| (4) | All-Round Opening Period will start from March 31, 2015. During this period, everyone is allowed to apply for registration of the TLD “.taipei” and the registration will be allocated on a “first come first served” basis. Therefore, the open day (March 31, 2015) should be the best timing to apply for the registration of the TLD “.taipei”. | |
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There is sufficient time to well consider your demands on the TLD “.taipei” since the 3rd and 4th periods haven’t yet been open. If you are interested in the registration of the TLD “.taipei”, please feel free to contact us for details and quotations. |
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Source: News issued by iThome on November 21, 2014 (http://www.ithome.com.tw/news/92458) |
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| Patents | ||||||||||
| I. | Discussion on the Amendment of Numeric Values in Claims | |||||||||
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When amending the scope of a claim by narrowing the range of the numeric values, such as narrowing the range of “0.001~2wt%” to “0.1~1wt%” in a claim, intuitively the scope of the claim is narrowed and such amendment seems to be acceptable. However, a simple amendment by narrowing the range of the numeric values in a claim may be deemed to have extended beyond the scope of the original specification and cannot be supported by the original specification therefore. According to Article 22.II of the Patent Act in Taiwan “Except for correction of translation errors, any amendment shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed.” Furthermore, “Substantive Examination Guidelines for Invention Patent” in Taiwan gives some examples to illustrate the rules of amending the range of the numeric values in claims. One of the examples in “Substantive Examination Guidelines for Invention Patent” describes that the range of condition for the chemical reaction is pH=6~12 as mentioned in the claim and the embodiment in the specification mentions that the range of preferable condition for the chemical reaction is pH=6~8. If the technical feature pH=10~12” has been disclosed by the prior art, it is allowable to amend the condition in the claim from “pH=6~12” to “pH=6~8” since the specification has disclosed the condition pH=6~8. However, it is not allowed to amend the condition in the claim from “pH=6~12” to “pH=6~9” since the specification does not describe “the range of condition for the chemical reaction is pH=6~9” clearly. The critical point is whether the numeric value is disclosed and substantively supported by the specification or not. From the previous example, the specification does not disclose the technical feature and the effect that “the condition for the chemical reaction is pH=9”. In general, if an invention needs to be defined by numeric values in order to be distinguished from the prior arts, the said invention usually belongs to the technical fields which are more unpredictable. On the other hand, if the range of an invention is predictable, merely changing the range would be deemed to lack an inventive step. Hence, if a claim of an invention is defined by a range of numeric values, the content of the specification thereof should at least illustrate the connection between the numeric values with upper and lower limits and the special effects which the invention achieves. A claim should be substantively supported by the specification, which means the specification should describe the claimed technical features and the effects to be achieved. On the contrary, if the specification merely describes various numeric values but does not mention the features and the effects thereof, it would merely be “formally” instead of “substantively” supported by the specification. Although whether a claim is substantively supported by the specification or not depends on the examiner’s point of view in a certain extent, a claim which is “formally” supported by the specification is not consequentially allowable under the practice in Taiwan according to our experience. There is another example to illustrate the rule of amending the range of the numeric values in a claim as below. |
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| Trademarks | ||||||||||||||||||
| I. | A Chart of Goods and Services in Chinese Japanese Parallel Texts | |||||||||||||||||
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According to the statistics released by TIPO, the top trademark filing country in Taiwan is mostly “Japan” every year. To facilitate Japanese and Taiwanese applicants’ advance trademark searches before filing and reference for designated goods/services of new trademark applications, TIPO especially collects and compiles a chart of goods and services in Chinese Japanese parallel texts. Hopefully, it will be contributive to Taiwanese and Japanese applicants’ advance planning for their new trademark applications in Taiwan. TIPO used the Nice Classification (NCL) 10-2014 as a base for the chart and compiled the Chinese and Japanese translation of goods and services as well as the similar group codes one by one. TIPO will update the chart based on the amendment of the NCL from time to time afterwards. We will be pleased to provide you with the chart of Goods and Services in Chinese Japanese Parallel Texts upon request. |
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Source: TIPO News issued on November 27, 2014
(http://www.tipo.gov.tw/ct.asp?xItem=536077&ctNode=7127&mp=1)
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| II. | The Combination of Individual Logos with Distinctiveness is not Necessarily Distinctive | |||||||||||||||||
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The trademark at issue was filed by a Taiwanese company designating goods in I.C.18, such as purses, wallets and umbrellas. TIPO regarded that the trademark at issue consisted exclusively of different kinds of geometrical patterns, so that it was not distinctive according to Article 29 I (3) of the Trademark Act. Moreover, the evidence of use submitted by the applicant thereof was unable to prove that trademark at issue had acquired distinctiveness through long-term and extensive use. Therefore, TIPO rejected the application of the trademark at issue. |
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Article 29 I (3):
A trademark shall not be registered if it consists exclusively of other signs which are devoid of any distinctiveness.
The applicant then filed an administrative appeal up to the MOEA against the decision made by TIPO but the MOEA deemed the appeal was unsustainable, so dismissed the appeal as well. After that, the applicant filed an administrative litigation up to the IP Court. Unfortunately, the IP Court sustained the TIPO’s decision that the trademark at issue was not distinctive enough to be registered as a trademark. According to Article 18 of the Trademark Act, a trademark shall refer to any sign with distinctiveness, which may, in particular, consist of words, designs, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or any combination thereof. The term “distinctiveness” used in the preceding paragraph refers to the character of a sign capable of being recognized by relevant consumers as an indication of the source of goods or services and distinguishing goods or services of one undertaking from those of other undertakings. In addition, a trademark shall not be registered if it consists exclusively of other signs which are devoid of any distinctiveness, but it shall not apply if the trademark has been used by the applicant and has become, in trade, a sign capable of distinguishing the goods or services of the applicant due to Article 29 I (3) and Article 29 II of the same Act. In the IP Court’s opinion, the trademark at issue consisted of 4 stylized diamond patterns respectively arranged vertically and horizontally to form a big diamond which was deemed an ornamental pattern only. When it was used on the goods, such as wallets, purses….and umbrellas, it was unable to make relevant consumers recognize it as a sign identifying the source of goods or distinguish such goods from those of others, for leather products or umbrellas were usually decorated by a variety of lines, basic geometrical patterns or ornamental patterns. Therefore, the trademark at issue gave an impression that it was an ornamental pattern on the goods rather than a sign identifying the source so it was not distinctive. Although the plaintiff’s affiliated company has registered the elements of the trademark respectively at issue in I.C.18 (Reg. No.1066756, No.1066757 and No.1066758), the combination of those elements, i.e. the trademark at issue, was not consequentially distinctive. Whether a device is distinctive, it should be comprehensively evaluated by what kind of impression the entire trademark gives to the customers. Even if each element of a trademark is distinctive separately, it does not assure that the combination of all elements will be distinctive as well and vice versa. For instance, combining several distinctive elements together as a continuous and infinitely extendible pattern will not be distinctive enough to be a trademark. Such continuous and infinitely extendible pattern will be regarded as the ornamental pattern on the goods rather than a sign identifying the source. The applicant has filed several trademarks as shown in the following table under similar situation in Taiwan, which were unfortunately not allowed to register in Taiwan by the TIPO nor won the administrative litigation. |
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Source: TIPO Newsletter issued on December 05, 2014 (http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8525.htm#536315) |
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