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Lack of Novelty and Lack of an Inventive Step are Different Reasons for Patent Invalidation. So New Evidence Does Not Need to be Considered and Examined.

[ November 2015 ] >Back

Patent

I.	Lack of Novelty and Lack of an Inventive Step are Different Reasons for Patent Invalidation. So New Evidence Does Not Need to be Considered and Examined.

	Fact
	The Intervening party (patentee of the Utility Model patent) filed a utility model patent application up to the Defendant (TIPO), and was granted through formality examination. The Plaintiff (Invalidation requester) filed an invalidation action against the granted Utility Model patent based on the grounds that it did not conform to the Article 94(IV) of former Patent Act, in effect at the time of the said Utility Model patent being approved, which was revised and published on August 25, 2010 and enforced on September 12, 2010. After examined by the Defendant, it rejected the petition of invalidation against Claims 1 and 2 of the Utility Model patent. The Plaintiff then applied an appeal up to the MOEA but was also rejected. Then, the Plaintiff filed an administrative litigation up to the IP Court. After being judged by the IP court, the petition was still turned down.

	IP Court’s viewpoint
	The Plaintiff brings up evidence 3~7 as new evidence in the administrative litigation to prove that the Utility Model patent lacks of novelty. The IP court deems that it is not necessary to investigate and examine whether the evidence 3~7 can prove the Utility Model patent lacks novelty or not and indicates the matters below in the judgment:

	(1)	New evidence will be taken into account only when it is submitted for the same ground in the invalidation action: According to Article 33 of the Intellectual Property Case Adjudication Act, in an administrative action concerning cancellation or revocation of a registered trademark or patent, the Intellectual Property Court shall take into account any new evidence submitted on the same grounds for the cancellation or revocation prior to the end of the oral argument. The competent intellectual property authority shall provide written briefs in response to the new evidence in the preceding paragraph, indicating whether arguments provided by the opposing party concerning such new evidence have merit. Although the Plaintiff claims that the evidence 3~7 can prove the lack of novelty of the granted Utility Model patent, the Defendant argues that even if the new evidence 3~7 is brought up in the administrative litigation process, except that it has not been deliberated during the invalidation action or the appeal, the allegation of lack of novelty in the litigation is not identical ground based on the same fact for revoking. Therefore, the IP court should judge whether the Plaintiff should bring up the evidence 3~7 claiming that the Utility Model patent lacks of novelty in the administrative litigation or not.

	(2)	Lack of novelty and lack of an inventive step are different reasons for patent revoking: Although the Plaintiff brought up evidence which is the combination of evidence 2 and 3 as well as the combination of evidence 2 and 4 in the invalidation action and appeal process to show that Claims 1 and 2 of the granted Utility Model patent lack an inventive step, the Plaintiff did not bring up the evidence 3~7 in the administrative remedy processes as evidence of lacking novelty. It is because the lack of novelty is in violation of Article 94(I) of the former Patent Act while the lack of inventive step is in violation of Article 94(IV) of the former Patent Act. The said two unpatentable grounds are different reasons for the administrative litigation regarding revoking patent rights. According to the above, whether the Utility Model patent lacks novelty or not is another reason concerning patent revoking. The Plaintiff cannot bring up with new revoking reason regarding the lack of novelty of the Utility Model patent in the litigation. This is why the IP court does not have to judge whether the evidence 3~7 can prove the Utility Model patent lacks novelty.

	IP Court Judgment No.103, 2014
	Source: TIPO Newsletter published on October 05, 2015 (http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep9155.htm#565334)

II.	The Court Can Investigate Evidences to Ferret Out the Truth Ex Officio within the Range of the Same Invalidation Evidence

	Fact
	An invalidation action against the patent at issue was filed for the violation of Patent Act Articles 23, 31.I and 22.IV in effect at the time of the said patent being approved. After examination, TIPO deemed the patent at issue violates Patent Act Article 22.IV (lack of inventive step) and that Claims 1~6 of the patent at issue should be invalidated. The Plaintiff (the patentee of the patent at issue) filed an appeal against TIPO’s decision up to the MOEA, the higher authority of TIPO, but it was dismissed. Then, the Plaintiff filed the administrative litigation up to the IP Court. The IP court held that though the manufacturing procedures defined in Claim 1 of the patent at issue have not been disclosed by the evidence presented by the invalidation requester, the defined manufacturing procedures are technologies commonly known by people with the general knowledge of the related field at the time of the said patent at issue being applied, as disclosed by two citations whose publication dates or issue dates are both prior to the application date of the patent at issue. Thus, the litigation was dismissed. The Plaintiff argued against the IP court’s decision and alleged that the court’s judgment should be grounded on evidence presented by the invalidation requester instead of on new citations investigated by the court ex officio.

	IP Court’s viewpoints
	1.	Administrative Court shall investigate the facts ex officio without being bound by the request of the parties. Based on the Articles 125.I and 133 of Administrative Procedure Law, the administrative court should investigate the evidence to ferret out the truth and has an obligation of elucidation when investigating a case and shall urge the parties to clarify and testify their statement and evidence. Also, the court shall conduct the investigation ex officio in order to elucidate the fact.

	2.	The judgment regarding inventive step shall be grounded upon whether the invention can be easily achieved by people with the general knowledge of the related technical field through simple modifications, transformations, adaption or combinations of the technical features disclosed in the prior art along with the general knowledge of the related field at the time of the said patent at issue being applied. Thus, the “prior art” defined in the Article 22. IV is not restricted to the evidence presented by the invalidation requester.

	IP Court Judgment No.85, 2014
	Source: TIPO Newsletter published on September 05, 2015 https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep9091.htm

Trademark

The Supreme Administrative Court Ruled against the Appellant (Hugo Boss) in the Case of “Baby Boss & device” V.S. ”Boss”, “Hugo Boss” and “Boss Hugo Boss”

Trademark at issue

Fact:

Based on the Article 23 I (12) and 23 I (14) of the former Trademark Act in effect at the time of the trademark at issue being approved to registration, the HUGO BOSS Trade Mark Management GmbH & Co. KG (hereinafter “the Appellant”) filed an invalidation application against Babyboss City Limited’s (hereinafter “the Appellee”) trademark registration “Baby Boss & device” (hereinafter “trademark at issue”) designating the goods of “candies, chocolate bars, cookies, popcorns and etc.” The TIPO once accepted the Appellant’s allegations and cancelled the trademark at issue.

Article 23 I (12) of former Trademark Act [Equivalent to Article 30 I (11) of the current Trademark Act]

A trademark shall not be registered in any of the following:
(12) being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark, unless the proprietor of the said well-known trademark or mark consents to the application;

Article 23 I (14) of former Trademark Act [Equivalent to Article 30 I (12) of the current Trademark Act]

One that is identical or similar to a trademark that has been used prior by another person on the identical or similar goods or services, and the applicant thereof is aware of the existence of the said trademark through contractual, geographical, or business connections, or any other relationship with the said person. However, the aforementioned shall not apply to an application filed with consent from the said person;

The registrant, Babyboss City Limited, then filed an appeal and an administrative litigation sequentially against the decision. The appeal decision and the original action were revoked by IP Court.

The Appellant dissatisfied IP court's decision so filed an appeal to the Supreme Administrative Court. The Supreme Administrative Court remanded the case to IP court for the second trial. The appeal decision and the original action remained revoked in the second instance. The Appellant accordingly filed another appeal to the Supreme Administrative Court. The Supreme Administrative Court dismissed the Appellant's appeal.

The Supreme Administrative Court’s viewpoints:

The Appellant’s marks are mainly composed of plain words. However, the trademark at issue contains three colored figures (a chef, a painter and a fireman) with the words “Baby Boss” occupied only a relatively small portion of the mark. The trademark at issue creates completely different impression to consumers from the Appellant’s marks. The Supreme Administrative Court assumes that the Appellant’s marks and the trademark at issue are with low similarity.

In addition, the designated goods/services of the parties are in distinguishable fields and markets. Though the Appellant’s marks have been well-known to the consumers, the evidence of use submitted by the Appellant failed to prove that their business diversification has reached the field of food/provisions. Based on the aforesaid reasons, the trademark at issue does not cause confusion to the relevant consumers concerning the origin of goods/services. Accordingly, the Supreme Administrative Court dismissed the Appellant's appeal in this case.

Supreme Administrative Court Judgment No.454, 2015

Source: Database of the Judicial Yuan

http://jirs.judicial.gov.tw/Index.htm

II.

The distinctiveness of the registered mark “台灣の青啤& device”

Trademark at issue	Class	Goods
Reg. No. 1522984 (the terms “台灣の青啤” , “FRESH” and the figure of Taiwan are disclaimed)	32	Beer; Malt beer; Draft beer; Light beer; Ginger light beer; Ginger beer; Malt beer; Beer wort; Preparations for making liqueurs; Extracts of hops for making beer; Non-alcoholic beer; Beer containing fruit juice.

Facts:

TAIWAN TOBACCO & LIQUOR CORPORATIO (the “Registrant of the trademark at issue”) filed the subject “台灣の青啤& device” on May 13, 2010 in class 32. The trademark at issue was registered under the registration No. 1522984 on June 16, 2012 (term: June 16, 2012 to June 15, 2022).

TAIWAN TSING BEER CO., LTD. (the “Appellant”) deemed that the trademark at issue lacks distinctiveness because the devices of barley and the shield are quite common. Barley is the description of raw materials of the designated goods while the shield is merely a background picture for decoration. Moreover, the terms “台灣の青啤”, “FRESH” and the figure of Taiwan are disclaimed. So, they filed the opposition application against the trademark at issue.

TIPO (the “Appellee”) rejected the opposition application because they deemed that the trademark at issue as a whole is distinctive enough to make the differentiation for the consumers to tell one from another.

Registrant of the trademark at issue alleged that they have registered two similar trademarks with the shield device in similar goods early in 2004. The trademark at issue is one of the series of the trademarks. Further, the two marks have been used in the market for more than 10 years so the arrangement of elements has made the marks stand out from other beer brands. Consequently, the trademark at issue as a whole has become a strongly distinctive trademark.

Supreme Administrative Court’s viewpoints:

The terms “台灣の青啤” and “FRESH” mean “fresh draft beer in Taiwan”. These terms combine with the figure of Taiwan, device of barley and shield device make the entire mark quite distinctive for the related consumers. Therefore, the trademark at issue is a creative and distinctive mark. Though some elements of the trademark at issue are commonly used in beer market and have been disclaimed, the arrangement of the whole mark makes the consumers easily recognize the provider of the goods. Further, since the provider of the beer bearing the trademark at issue “台灣の青啤” is TAIWAN TOBACCO & LIQUOR CORPORATION, a company which has been registering and using the term "Taiwan" on numerous alcoholic products, the consumers will not be mislead or get confused with other providers.

Supreme Administrative Court Judgment No.442, 2015

Source: Database of the Judicial Yuan

http://jirs.judicial.gov.tw/index.htm

Fair Trade Act

Amendments to "Fair Trade Act" published on June 24, 2015.

The Fair Trade Act has taken effect for more than 20 years since February 4, 1992. Taking the rapidly changes of domestic and foreign social-economic environment into consideration, the Act has to be amended and adjusted to response to the rapidly changes. The following are IP related amendments of the Fair Trade Act this time.

Articles	Amendments	Reasons for Amendments
Article 22	No enterprise shall have any of the following acts with respect to the goods or services it supplies: 1. using in the same or similar manner in the same or similar category of merchandize, the personal name, business or corporate name, or trademark of another, or container, packaging, or appearance of another's goods, or any other symbol that represents such person's goods, commonly known to the public, so as to cause confusion with such person's goods; or selling, transporting, exporting, or importing goods bearing such representation; or 2. using in the same or similar manner in the same or similar category of services, the personal name, business or corporate name, or service mark of another, or any other symbol that represents such person's business or services, commonly known to the public, so as to cause confusion with the facilities or activities of the business or service of such person; or 3. using on the same or similar goods the mark that is identical or similar to a well-known foreign trademark that has not been registered in this country; or selling, transporting, exporting, or importing goods bearing such trademark. The provisions of the preceding paragraph are not applicable to the personal name, business or corporate name, or trademark of another, or container, packaging, or appearance of another's goods, or any other symbol that represents such person's goods, as referred to in the preceding paragraph, if that enterprise has obtained a legally registered trademark. The provisions of Paragraph 1 shall not apply to any one of the following: 1. using in an ordinary manner the generic name customarily associated with the goods or services, or the representation customarily used in the trade of the same category of goods or services; or selling, transporting, exporting or importing goods or services bearing such name or representation; 2. using in good faith one's own name, or selling, transporting, exporting or importing goods or services bearing such name; 3. using, with good faith, in the same or similar manner the representation referred to in the first or second subparagraph of the first paragraph before such representation having become commonly known to the public, or using such representation by any successor that acquires such representation together with the business from a bone fide user; or selling, transporting, exporting or importing goods or services bearing such representation. Where any enterprise has any of the acts set forth in the second or third subparagraphs of the preceding paragraph which is likely to cause confusion or mistake concerning the origins of such goods or services with another enterprise, the latter enterprise may request the former to add appropriate distinctive labeling, unless the former only transports such goods.	(i) To unify the legal requirements between the original “commonly known to the related business and consumers” and “commonly known to the public". This amendment is referred to Trademark Act. Further, the amendments are made to limit the protection of unregistered mark to the range of the same or similar category of goods and services. (ii) To delete the original protection of foreign well-known marks because of the principle of equality. In addition, the definition of “well-known mark” should be subject to whether a mark is well recognized by the domestic consumers. (iii) The amendments are made to exclude the protection for those marks which the enterprises have obtained registration according to Trademark Act. This is to avoid double protection between Fair Trade Act and Trademark Act.

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