1. Home
  2. News

Vacation Notice of Head Office in Taipei

[ March 2016 ] >Back
Important Notice
 
 Vacation Notice of Head Office in Taipei
 
Our office will be closed for annual trip from March 24 (Thursday) to March 28 (Monday), 2016.  We will resume working on March 29 (Tuesday), 2016.

Kindly send us any urgent matters and instructions due in the above periods as early as possible, so that we could have enough time to review and respond to you. Thank you for your kind attention and cooperation. We apologize for inconvenience caused to you, if any.

Patent
 
I. Draft Amendment on Article 56 of "Enforcement Rules of the Patent Act"
 
The laid open or publication of a patent application enables the public to be aware of the technology to avoid overlapping research and investment. But, the creation of patents is susceptible to counterfeiting. Once the infringing products take the precedence over the patent products in the market, the patent products may lose the commercial opportunities.

Considering the interests of the general public and the patent applicants, the period of publication postponement is extended from three months to six months in the draft amendment to enable the patent applicants to adjust the best timing for the publication of their patented technologies.
   
 
  Draft Amendment
Article 86
 Where the applicant has a need to postpone the publication of a
patent, he or she may apply to the Specific Patent Agency for the postponement thereof at the time of paying the patent certificate fee and the first year patent annuity fee. The requested term of postponement shall not exceed a period of three (3) six (6) months.
   
 
Source: TIPO news published on January 30, 2016
(http://www.tipo.gov.tw/ct.asp?xItem=578358&ctNode=7452&mp=1)
   
II. The Standard of Judgment of “Person Having Ordinary Skill in the Art” in the Patent Act
   
  An invalidation action against the patent at issue was filed for the violation of Articles 94.IV of Patent Act in effect at the time of the said patent being approved. After examination, TIPO deemed the patent at issue violated Article 94.IV of Patent Act (lack of inventive step) and that Claim 1 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 superior authority of TIPO, but it was dismissed. Then, the Plaintiff filed the administrative litigation up to the IP Court.

During the oral argument in IP Court, the Plaintiff alleged that the standard of “the person having ordinary skill in the art” for the patent at issue should be defined as a person with education background in primary or high school who might have a few years of work experience. TIPO and the intervening party (the invalidation requester), on the other hand, argued that “the person having ordinary skill in the art” for the patent at issue should be determined as a person with bachelor’s degree and with two or three years of relative work experience.
   
  IP Court’s viewpoints
   
  1. The assessment of whether a patent has an inventive step is mainly based on whether the patent at issue is obvious and can be easily achieved by a person having ordinary skill in the art in view of the prior art.
     
  2. The concept of “a person having ordinary skill in the art” is similar to the concept of “a reasonable person” or “ a good administrator” which is used to define the legal standards in Civil Code and in Criminal Code. That is, the court uses “a person having ordinary skill in the art” as an objective standard of judgment to avoid subjective evaluation. The assessment of inventive step of a patent should focus on the technical level of the patent at issue. Thus, if a patent can be easily achieved through the prior art(s) viewing from the technical level of a person having ordinary skill in the art, the patent lacks inventiveness. Just as there is no need to elaborate who “a reasonable person” or “ a good administrator” is in general civil or criminal actions, in many technical fields that are well developed or whose effect of combination can be easily predicted, the technical level of the person having ordinary skill in the art can be plainly determined from the technical level disclosed in the prior art(s) as long as the relative parties do not argue otherwise. Also, as a patent focuses on industrial application instead of scientific research, practical experience is regarded as more essential than education level. Thus, determining “the person having ordinary skill in the art” through the combination of education level and work experience cannot be applied in all cases.
     
  3. The patent at issue belongs to a well-developed technical field. Hence, though TIPO did not define “the person having ordinary skill in the art” in the Official Notice, in view of the prior art references raised by the intervening party (the invalidation requester), it is convincing that TIPO’s assessment on the inventiveness of the patent at issue is based on the technical level of the person having ordinary skill in the art. As to the Plaintiff’s question about this issue, the IP court judges that considering the Plaintiff, who is also the inventor of the prior art references of the patent at issue, has many years of relative work experience, and the intervening party (the invalidation requestor) has many years of relative work experience as well, the person having ordinary skill in the art for the patent at issue should thus be determined objectively as a person with general related knowledge as well as few years of relative work experience.
     
  IP Court Judgment No.34, 2015
Source: TIPO Newsletter published on January 05, 2016
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep9354.htm#576433)

Trademark
 
I. The Calculation of Civil Damage Compensation for a Trademark Infringement 
   
 
Trademark at issue
   
  Facts:
   
  TAIWAN HOPAX CHEMICALS MFG. CO., LTD. (the “Plaintiff”) is the registrant of “N次貼” mark and has used this invented mark for more than 20 years in Taiwan and worldwide. WEN PINE INTERNATIONAL CO., LTD. (the “Defendant”) bought ten thousand pieces (10,000) of the counterfeit sticky note products bearing the “N次貼” mark at a purchase price of ten NT dollars (NTD10) per piece in March 2014 from a third party A and sold all of them to another third party B in a sale price of NTD29.25 per piece. After that, the third party B sold all of the counterfeit products to the retailer PRESIDENT CHAIN STORE CORPORATION. The retail price per piece is 65 NT dollars (NTD65). The Plaintiff claimed that the damage compensation should be calculated based on the quantity of the counterfeit products sold to the retailer, i.e. 10,000 pieces in the retail price of NTD65 per piece. However, the Defendant claimed that the calculation should be based on the quantity of the counterfeit products that were actually sold to the consumers by the retail stores, i.e. 866 pieces in the retail price of NTD65.
   
  Intellectual Property Court’s viewpoints:
   
  The mark at issue “N次貼” is deemed as a description to the quality and function of the designated goods, i.e. adhesive paper, adhesive bands and sticky notes, etc. Therefore, the distinctiveness of “N次貼” is relatively weak. However, the Plaintiff founded the company in 1975 and has been the biggest provider of sticky notes in Asia. Their “N次貼” sticky note products have been extensively sold in Taiwan and abroad. Since the “N次貼” mark was registered in 1992, the company has won several awards and took the second place of the provider of the sticky notes around the world. In addition, the “N次貼” has been recognized as a “well-known mark” in the Official Decision No. G00950429 made by the TIPO. Therefore, the Court did not accepted the Defendant’s arguments that they were not aware of the Plaintiff’s “N次貼” mark so their action was not in bad faith. The Defendant also claimed that “N次貼” is an indistinctive mark that has been commonly used by the public. The Court responded that even though the Defendant did not intentionally infringe the Plaintiff's trademark, the negligence is obvious.
   
  Relevant Articles in Trademark Act:
   
 
(§68.1) Any acts without consent of the proprietor of a registered trademark, shall be deemed infringement of the right of such trademark: using a trademark which is identical with the registered trademark in relation to goods or services which are identical with those for which it is registered; 
 
(§69.3) A proprietor of a registered trademark is entitled to demand a person who infringes or is likely to infringe the trademark right to stop or prevent such infringement; 
 
(§71.1.3) Any of the following acts, without consent of the proprietor of a registered trademark, shall be deemed infringement of the right of such trademark: …(3) the amount not more than 1,500 times of the unit retail price of the infringing goods; if over 1,500 pieces of infringing goods were found, the amount of damages shall be a lump sum of the market value of the infringing goods.

Regarding “the unit retail price” regulated in Trademark Act § 71.1.3, it refers to the unit price that Defendant offered. In this case, the Defendant sold the counterfeit products to the third party A at NTD29.25 per unit and then the third party A resold the products to the third party B who sold the products to the consumers at NTD65 per unit eventually. The “unit retail price” should refer to the price offered by the Defendant, i.e. NTD29.25. The reselling actions afterwards should not be imputed to the Defendant. In addition, the “amount of the infringing goods” refers to the total number of the infringing goods that were found but not the infringing goods that were actually sold to the consumers. According to Trademark Act § 71.1.3, when the Defendant “uses a trademark which is identical with the registered trademark in relation to goods or services which are identical with those for which it is registered”, the infringement of trademark rights has occurred. It is not a necessary condition that whether the goods are actually sold or not. 
   
  Therefore, the damage compensation should be calculated as NTD29.25 * 10,000 pieces = NTD292,500.
   
 
Reference: Taiwanese Year 104 Civil & Commercial Judgment No. 9 of IP Court
Source: TIPO Newsletter published on January 05, 2016
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep9354.htm#576433)
   
II. NON-EXCLUSIVE LICENSEE IS NOT ENTITLED TO BRING INFRINGEMENT PROCEEDINGS IN HIS/HER OWN NAME
   
  According to Article 39 (I) & (VI) of Trademark Act, a registered trademark may be licensed by the proprietor, exclusively or non-exclusively, for all or some of the designated goods or services for which it is registered and for a particular locality. Also, unless otherwise prescribed in a licensing contract, an exclusive licensee is entitled, within the scope of the license, to bring infringement proceedings in his/her own name. To interpret the aforesaid articles on a reverse side, a non-exclusive licensee is not entitled to bring infringement proceedings in his/her own name yet.

The former Trademark Act did not specify whether a non-exclusive licensee is entitled to bring infringement in his/her own name. However, referring to the contemporaneous Patent Act and Copyright Act, both Acts specified that a non-exclusive licensee is not entitled to bring infringement in his/her own name. Hence, the former trademark act should apply to the same interpretation. That is only an exclusive licensee is entitled to bring infringement proceedings in his/her own name. An infringement action filed in the name of a non-exclusive licensee will be dismissed.
   
  Article 39 (I) Recordal of license in the Register
       A registered trademark may be licensed by the proprietor, exclusively or non-exclusively, for all or some of the designated goods or services for which it is registered and for a particular locality.
 
  Article 39 (VI) Recordal of license in the Register
       Unless otherwise prescribed in a licensing contract, an exclusive licensee is entitled, within the scope of the license, to bring infringement proceedings in his/her own name.
   
 
IP Court Judgment 2014, No.6  
Source: Database of the Judicial Yuan
http://jirs.judicial.gov.tw/Index.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