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After our firm adopted the computerized system and paperless office some years ago, it enables us to provide efficient, cost-effective computing and networking services and collaboration for our domestic and international clients and associates.

[ July 2015 ] >Back
Patent 
 
I. JAW-HWA was Ranked the Second on Patent Applications and the Third on Trademark Applications for Electronically-submitted Ones in TIPO
 

After our firm adopted the computerized system and paperless office some years ago, it enables us to provide efficient, cost-effective computing and networking services and collaboration for our domestic and international clients and associates. 
 
Hence, in order to thoroughly perform our e-work, since TIPO launched the e-filing system, we have spared no efforts to file electronic applications in coordination wherever possible. 
 
We are pleased to share the outcome of our efforts from the latest official statistics that our firm is the second on electronically-submitted patent applications and the third on electronically-submitted trademark applications on monthly statistics in May 2015 as shown in the tables below. 
 
 
 
Top 20 Firms Filing Patent Applications via E-filing System in May 2015
Ranking Firm Percentage Ranking Firm Percentage
1  Tai-E 8.53% 11  Weideband 2.51%
2  Jaw-Hwa International 6.79% 12  Wood & Wu 2.41%
3  AIPT 6.52% 13  ScienBizIP 2.27%
4  Hua-Ding 6.49% 14  Taiwan-tech 1.94%
5  Sundial 4.65% 15  NAiP 1.54%
6  Jou & Jou 4.31% 16  Giant Group 1.40%
7  JEPAT 3.78% 17  Genus 1.34%
8  NAN E 3.18% 18  PWC 1.30%
9  TJIP 2.67% 19  YU CHENG 1.27%
10  Yuh Chang 2.61% 20  Hongrui 1.24%
 
Top 20 Firms Filing Trademark Applications via E-filing System in May 2015
Ranking Firm Percentage Ranking Firm Percentage
1  Saint Island 12.64% 11  Long River 1.66%
2  Tai-E 7.95% 12  Wanlin 1.59%
3  Jaw-Hwa International 4.04% 13  CHIEN YEH 1.41%
4  NAN E 2.72% 14  TPTO 1.20%
5  Hwachian 2.45% 15  ZHU XING RONG 1.20%
6  Lian Ya 2.43% 16  SHENG-QIAO 1.20%
7  ALIPO 2.32% 17  A & Finet 1.14%
8  LIU JIA 1.82% 18  Tsai Lee & Chen 1.09%
9  YONG HSIN 1.73% 19  BSPT 1.09%
10  AIPT 1.73% 20  SinoWise 1.04%
 


Source: TIPO’s website published on June 8, 2015
(http://www.tipo.gov.tw/ct.asp?xItem=550097&ctNode=7582&mp=1)

 
II. Two MOUs on PPH MOTTAINAI and on Exchange of Industrial Property Information and PDX Signed between Taiwan and Korea
 


On June 15, 2015, the Taipei Mission in Korea and the Korean Mission in Taipei signed two Memoranda of Understanding (MOUs) in order to establish cooperation on Patent Prosecution Highway (PPH) MOTTAINAI program, exchange of industrial information and electronic exchange of priority documents between TIPO and KIPO. The two MOUs will not only advantage applicants to expedite examination procedures but also allow the public to utilize industrial property information exchanged between the two IP offices. 
 
Since 2011, TIPO has established cooperation on Patent Prosecution Highway (PPH) with USA, Japan and Spain. In 2014, there were 797 patent applications which applied for the PPH. The average examination period was shortened to 11 months which was only one-third of the general examination period of patent applications. So, there are prominent effects on PPH. 
 
Korea is one of the top patent filing nations in Taiwan. The new PPH MOTTAINAI program will benefit some types of industry, especially chemical engineering, electronics, and semiconductor sectors. TIPO and KIPO have commenced PPH MOTTAINAI program on July 1, 2015. 
 
As to the implementation of the second MOU on electronic exchange of priority documents, TIPO and KIPO will work together to complete the establishment of the related data exchange for such cooperation. This electronic exchange of priority documents will save applicants’ time and money for postal delivery, streamline respective application procedures, accelerate examination work at both IP offices, as well as reduce storage space for printed documents.
 


Source: TIPO News published on June 15, 2015
(http://www.tipo.gov.tw/ct.asp?xItem=551910&ctNode=7123&mp=1 )

 
III. TIPO-JPO Cooperative Program on Mutual Recognition of Deposit of Biological Materials for the Purpose of Patent Procedure Officially Started on June 18, 2015
 

After the Association of East Asian Relations and Interchange Association, Japan signed a cooperative memorandum of understanding for the above captioned subject in November, 2014, Taiwan and Japan announced to officially start the “Cooperative Program on Mutual Recognition of Deposit of Biological Materials for the Purpose of Patent Procedure” on June 18, 2015. 

This is the first one that Taiwan has ever had with a foreign country to sign a cooperative program on mutual recognition of deposit of biological materials. It also makes Taiwan the first non-member state of the Budapest Treaty that Japan has ever signed such a program with. The applicants in Taiwan who intend to file patent applications relating to biological materials with JPO or any applicants in Japan who plan to file patent applications relating to biological materials with TIPO are able to deposit their biological materials in nearby designated depository institutions after the implementation of this cooperative program. In the program, JPO recognizes the deposit effect of the depository institution designated by TIPO (the Food Industry Research and Development Institute or also called “FIRDI”) and TIPO recognizes the deposit effect of the depository institutions designated by JPO (International Patent Organism Depositary, NITE, also called “NITE-IPOD”; and NITE Patent Microorganisms Depositary, also called “NPMD”).
 
Furthermore, before the implementation of this cooperative program, both TIPO and JPO also recognize the fact of biological material deposits in nearby designated depository institutions under some conditions. The patent applicants on both sides who meet the following two conditions will be no need to make deposits repeatedly: (1) the patent applications filed on or after the implementation date, June 18, 2015, of this cooperative program; and (2) the patent applications filed together with copies of the deposit certificates submitted before the corresponding deadlines. 
 


Source: TIPO News published on June 18, 2015
(http://www.tipo.gov.tw/ct.asp?xItem=552111&ctNode=7123&mp=1 ) 

 
IV. Where A Patent Right Is Jointly Owned, Each of the Patentees May Exploit the Patent Right Independently (a written judgment No. 345 made by Supreme Court in 2015 and No.17 made by IP Court in 2013)
 

A patent was jointly owned by Patentees A and B. Patentee B (defendant) sold their products manufactured by the method of the patent. The Patentee A (plaintiff) alleged that Patentee B　(defendant) infringed his patent right by exploiting the whole patent right without his consent. Furthermore, the Patentee B (defendant) got the profits by exceeding the exploitation of the patent right. It was an unjust enrichment.

The Patentee B (defendant) responded that patent right was a kind of intangible asset. The patent right did not exclude others from using the patent and getting profits from the patent. So, a joint owner of a patent did not infringe the patent right of the other joint owner(s) when exploiting the patent. In principle, a patentee can exploit his patent right without causing an infringement to the other joint owners’ patent rights or unjust enrichment.

The Patentee A (plaintiff) failed in the first and second instances in the Administration Suit, so he appealed the case to the Supreme Court. The Supreme Court has rejected the appeal by the following reasons:
 
  1. Where a patent right is jointly owned, each of the patentees may exploit the patent right independently.
   
According to the Patent Act, Article 64, where a patent right is jointly owned, each of the patentees may exploit the patent right independently without the consent of all the joint owners. However, when the patent is assigned, entrusted, licensed, pledged, or abandoned, the consent of all the joint owners is required.
 
  2. Where a patent right is jointly owned, it cannot exclude the other owner(s) from exploiting the patent right.
   
Since the patent right is a kind of intangible asset, unlike rights in rem, it will not cause conflicts among people on using and collecting benefits from the patent. That is, a patent can be used by more people and get profits at the same time. The patentees who exploit their own patent rights need not to pay royalties, so it also does not exclude other joint owner(s) from using the patent.
 
  3. Where a patent right is jointly owned, it is not necessary to sign a contract and record up to the TIPO if any of the patentees exploits the patent right independently.
 


Source: TIPO Newsletter issued on June 05, 2015
(https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8905.htm#551184 )

 

Trademark 
 
I. Where A Geographic Designation Is Used as A Trademark Instead of An Indication of A Geographic Origin, Article 36, Paragraph 1, Subparagraph 1 of the Trademark Act Shall Not Be Applied
 


 


Facts:
 

The plaintiff filed the trademark at issue “金門華龍 & device” (pronounced as KIN MEN HWA LONG) designating the goods of “Kaoliang liquor, fruit wine, Maotai liquor, Shaohsing wine and white wine” in International Class 33 and the mark was approved by Taiwan Intellectually Property Office (TIPO) with Registration No. 1577621.
 
The opponent (the intervening party) filed an opposition up to TIPO against the trademark at issue for violation of Article 30, Paragraph 1, Subparagraphs 10~12 of the Trademark Act. TIPO decided that the trademark at issue actually did not comply with the said Article and cancelled the registration of the trademark at issue. The plaintiff was not satisfied with the decision, filing an appeal and an administrative lawsuit sequentially.
 
  IP Court’s viewpoints:
 
The distinctiveness of a trademark mainly refers to a character of a sign being able to make relevant consumers identify the sources of goods or services and distinguish them from others. In this case, the trademarks cited as the bases for opposition are all constituted by “金門 (pronounced as KIN-MEN)”, a geographic name of Taiwan. The intervening party has domestically used “金門　(KIN-MEN)” on various alcoholic goods for a long period of time and their products have therefore impressed the Taiwanese consumers deeply. Since the foundation of the predecessor “Kinmen Distillery in Kinmen County” in 1952, the intervening party has used “金門 (KIN-MEN)” of its registered trademark No. 794068 “金門高粱酒及圖 (KIN-MEN Kaoliang liquor & device)” on various products of Kaoliang liquor for more than 50 years. Besides Taiwan, the sales territories have now included western countries and the good quality of the alcoholic products earns good reputation from consumers. “金門 (KIN-MEN)” have been a basis for the consumers to distinguish the goods of Kaoliang liquor and are widely indicated by relevant businesses and consumers as a source of products. Therefore, “金門 (KIN-MEN)” possess the distinctiveness.

Although the plaintiff claimed that “金門 (KIN-MEN)” are supposed to be a description of place of origin and should not be exclusively used by the trademarks cited as bases for opposition, since “金門 (KIN-MEN)” in the trademarks cited as bases for opposition have had the distinctiveness, the two Chinese words are a source of distinguishing the goods from others and shall be protected.  If the plaintiff uses the words “金門 (KIN-MEN)” to indicate the place of origin in accordance with honest practices in industrial or commercial matters but not uses it as a trademark, the trademark proprietor may not prohibit the trademark at issue from registration according to Article 36, Paragraph 1, Subparagraph 1 of Taiwan Trademark Act. The original meaning of “金門 (KIN-MEN) as an indication of the source of goods should be protected.  However, that situation is different from the trademark at issue that was used as a trademark.

According to Article 30, Paragraph 1, Subparagraph 10 of Taiwan Trademark Act, a trademark shall not be registered if it is “ identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers, unless the consent of the proprietor of the said registered trademark or earlier filed trademark to the application has been given and is not obviously improper.” Comparing the trademark at issue and the trademarks cited as bases for opposition, the trademarks owned by both parties all have the two Chinese words “金門 (KIN-MEN)”. Although the words “金門 (KIN-MEN)” are not highly distinctive, the long-term use of the trademarks cited as bases for opposition makes “金門 (KIN-MEN)” have a certain degree of distinctiveness. Since the appearances, concepts and pronunciation between the trademark at issue and the trademarks cited as bases for opposition are similar, the trademarks of both parties are regarded as similar trademarks. The designated goods of the trademark at issue and the trademarks cited as bases for opposition are both alcoholic products and are common or related in functions, sales channels, manufacturers and consumers. The goods of those trademarks are regarded as the same or highly similar.

The trademark at issue and the trademarks cited as bases for opposition are distinctive. However, although the words “金門 (KIN-MEN) of the trademarks cited as bases for opposition are a description of place of origin, they have had a function of indicating the source of the goods and are widely known by relevant businesses and consumers because the intervening party has used “金門(KIN-MEN)” on various goods of Kaoliang liquor for a long period of time. The trademark at issue is similar to the trademarks cited as bases for opposition. The trademarks cited as bases for opposition were filed and registered earlier than the trademark at issue. The goods of the trademark at issue and the trademarks cited as bases for opposition are the same or highly similar. Taiwanese consumers are more familiar with the trademarks cited as bases for opposition.

The associated factors as mentioned above exist a likelihood of confusion for the relevant consumers mistaking the goods of the trademark at issue and the trademarks cited as bases for opposition from the same source or mistaking both parties as having affiliation, license, franchise or any other similar relationship. The proprietor of the trademarks cited as bases for opposition also did not consent the registration of the trademark at issue. Therefore, the registration of the trademark at issue did not comply with Article 30, Paragraph 1, Subparagraph 10 of the Trademark Act.
 

Source: TIPO Newsletter issued on June 6, 2015
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8905.htm)

 

 

 

JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

10-1FL., NO.23, SEC.1, CHANG-AN E. RD., TAIPEI 10441, TAIWAN, R.O.C

      TEL: 886-2-25310876            FAX: 886-2-25812761

      http://www.jaw-hwa.com.tw           E-mail: jawhwa@jaw-hwa.com.tw