JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

The TIPO Expediting the Substantive Examination of Pending Invention Applications and Making a Breakthrough in Patent Examination for Greater Than 70 Thousand Applications in 2014

[ March 2015 ] >Back

Patent

I.	The TIPO Expediting the Substantive Examination of Pending Invention Applications and Making a Breakthrough in Patent Examination for Greater Than 70 Thousand Applications in 2014
	In order to enhance the efficiency and shorten the period of the substantive examination for patent applications, the TIPO has done the best to proceed with the “Patent Application Backlog Reduction Program” approved by the Executive Yuan since 2010. The number of the finished substantive examination for patent applications is rising year by year. In 2013, the number of clearing up the substantive examination of patent applications exceeded 60 thousands. In 2014, the number even exceeded 70 thousand patent applications, up to 70,206, which was more than the target amount, 63,400 patent applications per year. There were 70,206 patent applications which were finished the substantive examination in 2014. It is far more than the number of 41,168 patent applications which requested for substantive examination in 2014. In comparison with the number, 128,902 of patent applications which requested for substantive examination accumulated until the end of 2013, the accumulated number had been decreased to 100,014 at the end of 2014. 28,861 cases decreased in 2014. So, the accumulated number of the substantive examination for patent applications is getting less and less now. In 2014, the average period of finishing the substantive examination for a patent application has been decreased to 33.43 months per case which was less than the target period, 35 months per case. In comparison with 38.12 months per case in average in December 2013, the examination period was 29.68 months per case in December 2014, which was 8 months shorter in average. It is expected that the number of finishing the substantive examination can be kept up to 60 thousand Patent applications in 2015. Then, the average period for the substantive examination of a patent application could be further shortened to less than 26 months per case in 2015.
	Source: TIPO Newsletter issued on February 05, 2015 (http://www.tipo.gov.tw/ct.asp?xItem=541561&ctNode=7150&mp=1)

Trademark

The Revision of the 10th Edition of the Nice Classification

In order to comply with the revision of the Nice Classification made by the WIPO each year, the TIPO has collected and summarized the amendments of classification annotation and descriptions of goods and services in the Revision of the 10th Edition of the Nice Classification which was effective as from January 1, 2015. The said collection and summary have been announced by TIPO on January 20, 2015.

Source: TIPO Newsletter issued on February 05, 2015

(http://www.tipo.gov.tw/ct.asp?xItem=540559&ctNode=7573&mp=1)

II.

Although the Trademark at Issue Has Established Its Goodwill Through Using, the Registration Should be Invalidated Under the Trademark Act in Taiwan


Trademark at issue Registration No. 1334761	The earlier used trademark

The applicant filed a device mark designating goods in Class 07 and got the trademark right under registration No. 1334761 in Taiwan (hereafter referred to as “trademark at issue”). The trademark was invalidated by a Japanese company according to the Article 23.(I)14 of the old Trademark Act (the Article 30.(I)12 of the current Trademark Act).

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. The IP Court sustained the TIPO’s decision that the trademark at issue should be invalidated.

The Article 23.(I)14 of the old Trademark Act (the Article 30.(I)12 of the current Trademark Act) is mainly for avoiding a third party from filing a trademark by pirating the trademark created by others in order to prevent the unfair competition. It gives the owners of the earlier used trademarks a remedy to stand up for their trademark rights when their trademarks are preempted by others. Taiwan Trademark Act adopts the principle of first-to-file instead of the principle of first-to-use. So, in principle, a prior-used trademark which is not registered in Taiwan is not protected by the Trademark Act. However, the meaning and value of being a trademark are established on the use of the trademark, so the Trademark Act added some articles about the spirit of first-to-use principle in order to provide the certain protection for those non-registered trademarks but prior used in Taiwan or other countries.

In the IP Court’s opinion, the trademark at issue and the earlier used trademark are almost the same and used on the highly similar goods. The evidence appeared that the Japanese company used the trademark in Japan and Taiwan earlier than the filing date of the trademark at issue. The registrant of the trademark at issue (the “plaintiff”) knew the trademark because of having business relationship with the Japanese company’s distributor in Taiwan and being the competitor in business with the Japanese company (the “litigious participant”). The plaintiff imitated and registered the earlier used trademark which violated the Article 23.(I)14 of the old Trademark Act (the Article 30.(I)12 of the current Trademark Act). Therefore, the trademark at issued should be invalidated.

As alleged by the plaintiff, they have obtained the trademark at issue for more than three years. Through the wide use by the plaintiff, the trademark at issue has gained consumers' awareness in Taiwan. The Japanese company (the “litigious participant”) has never registered their earlier used trademark in Taiwan but would like to take over the fame of the brand established by the plaintiff through the Administrative litigation. The trademark protection provided to the litigious participant should not be broader than that provided to the trademark registrant (the plaintiff).

The IP Court stated that: the Article 23.(I)14 of the old Trademark Act (the Article 30.(I)12 of the current Trademark Act) is mainly for avoiding an earlier used trademark from being preempted by others. Although the earlier used trademark is not registered in Taiwan, it has gained its distinctiveness and goodwill through earlier use. If the applicant imitated and registered an earlier used trademark because of being aware of the existence of the earlier used trademark through contractual, regional, or business connections, or any other relationship, it violates the good faith principle. Even though the plaintiff alleged that they have established goodwill of the trademark at issue through use of the trademark for years, the trademark at issued should be invalidated in order to avoid the confusion of the consumers and unfair competition. So that, the fair trade can be maintained and such decision conforms to the spirit of the Trademark Act.

Source: TIPO Newsletter issued on February 05, 2015

(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8656.htm#541559)

Copyright

I.	The Requirements of The Copyright Recordation
	Taiwan follows the principle of copyright protection upon creation. According to Article 10 of the Copyright Act in Taiwan, a creator enjoys copyrights as soon as a work is completed. Copyright registration is not a prerequisite for obtaining copyright. The official copyright registration system was abolished in the Copyright Act amendment promulgated on January 21, 1998, and the government agency in charge of copyright matters has ceased accepting copyright registrations since January 23, 1998 in Taiwan. For this reason, it is very important and essential for the authors and copyright owners to preserve complete information of the copyrights, including the process of manuscripts of works, the work and the date of creation. The authors or copyright owners can consider recording their copyrights through a private organization to preserve the complete information of their works. In case one’s work is infringed by others or is accused of infringement, the authors or copyright owners can submit the information of copyright recordation as available evidence. So, it is advisable to record the copyrights in a private organization and let the impartial third party to provide contributory evidence for the authors or copyright owners. This is an additional option to improve the credibility of evidence as adduced. For recording the copyrights for drawings/ pictures, it is allowed to put some drawings/pictures on the same A4 page and make only one recordation of copyrights instead of more. Since it is not available to record the copyrights via e-filing system, the hard copies of the following documents are required:
	1.	an original Power of Attorney executed by the representative of the applicant if the applicant is a company;
	2.	a colored copy of the works; Since the outputs from different printers may bring different effects, please print out the works at your end in order to avoid the discrepancy in color.
	3.	a hard copy of the assignment agreement signed and dated between the applicant and the author(s) if the applicant and the author are not the same ones. The Date on which the applicant obtained the copyrights of the works from the author(s) should be stated in the assignment agreement;
	4.	ID number / passport number, birthday and the address of the author(s);
	5.	Business registration number, date of incorporation and location of the applicant if it is a company;
	6.	the Date when the author(s) completed the works;
	7.	the Date of the first publication of the works in the applicant’s home country; it is not available to mention “worldwide”;
	8.	the Date and place of the first publication of the works in any country; it is not available to mention “worldwide”.

	According to Taiwan Copyright Act, Article 30: “Except as otherwise provided in this Act, economic rights endure for the life of the author and fifty(50) years after the author's death” and Article 33: “Economic rights in works authored by a juristic person endure for fifty (50) years after the public release of the work”. Should you need our assistance in Copyright recordation, please feel free to let us know.

JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

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