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New Patentable Subject Matters for Design Patent in Taiwan (II)

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Patent

New Patentable Subject Matters for Design Patent in Taiwan (II)

After the amendment of Patent Law in 2013, the design patent has been broadened to include more patentable subject matters in Taiwan. Partial designs become available for application. Icons and graphical user interface (GUI) can be protected as “Graphic Images Design”. Also, a set of designs can be filed in one design application. Further, the derivative design patents allow similar designs to have independent patent rights. These newly available patentable subject matters provide wider possibilities and choices for the applicants to better protect their designs. We will introduce these new patentable subject matters for design patent respectively and the related regulations that should be paid attention to at the filing stage.

In this issue, we will focus on “Graphic Images Design”, which includes computer-generated icons and graphic user interfaces (GUI) as patentable subject matters.

Graphic Images Design

Computer-generated icons and graphic user interfaces (GUI) are types of graphic interface that allow users to interact with electronic devices through a display or screen. Though unlike traditional patentable design subject matters in which a design is permanently embodied in an article, icons and GUIs are usually applied on a screen or display and thus can still be regarded as a visual design applied on an article and thus are patentable design subject matters.

Special Notices for filing an application of graphic images design

1. The title of design

The title of design should be written as“Icons of screen” or “GUI of display” or, more specifically, “Icons of cell phone” or “GUI of washing machine”. However, the terms “icons” or “GUI” themselves cannot serve as the title of such an application because they fail to indicate the applied article.

2. The drawings and the descriptions

(1) Front view or plane graphic will be sufficient:

As graphic images designs usually are plane graphic displayed on a screen, it is acceptable to submit only the front view or plane graphic and omit other views.

(2) Broken lines to indicate the unclaimed part are required:

It is required to use the broken lines to indicate the unclaimed part (i.e. the display or the screen) of the design. Also, icons and GUIs usually can be freely dragged to different positions or change the size on the screen. It is required to state in the design descriptions if the relative position, size or placement between the claimed part and the unclaimed part form no part of the design.

Design description:
The broken lines on the drawings indicate the part of screen which forms no part of the design. The relative position, size, and placement between the designed icon and the unclaimed part also form no part of the design.

(3) Use different identifiable expressions to distinguish the unclaimed part

If there are unclaimed parts on the icons such as words, numbers or dates, it is required to use the broken lines and other identifiable expressions, such as the boundary lines, to distinguish the unclaimed part of the icons and the screen which forms no part of the design.

(4) Multiple icons in one design application

Multiple icons applied on one screen or display can be accepted as one design application. If the relative position, size, and placement among each icon and the unclaimed part are not to be claimed, it is required to use broken lines or boundary lines to indicate the boundary of each icon and state the same in the design description.


The relative position, size, and placement among each icon and the unclaimed part are also a part of the design.	The relative position, size, and placement among each icon and the unclaimed part form no part of the design.

II.

Cases for Formalities Examination and Administrative Remedies (I)

Based on the examination principle, an application must meet the requirement of formality first before the substantial examination takes place. An application which does not meet the requirement of formality will be dismissed. As the formality requirements are essential for the rights of the patent applicants, the TIPO has published “Cases for formalities examination and administrative remedies (2013~2016)”. We will introduce some representative cases hereafter.

Drawing(s) is required for obtaining a filing date in a Utility Model Application:

Case: The determining of the filing date of Utility Model Application No. 104200885 titled “Gravity sucker for water purifier of water tower”

Related Article: Paragraph 2 of Article 106, Patent Act

The filing date of a patent application for utility model shall be the date on which the request form, description, claim(s), and drawing(s) are provided in full.

Examination Guidance of Patent Application:

The requirement for obtaining a filing date of a Utility Model application is the submission of the application form, the description, the claims and the drawings. When all required documents have been submitted by filing, TIPO will issue a corresponding filing date for the said application to the applicant. If the Utility Model application is not filed with the drawings, the date of the submission of the drawings will be considered as the filing date.

Case description:

The applicant of the Utility Model application No. 104200885 filed an appeal to argue that on January 19, 2015, the said Utility Model application has been filed with application form, abstract, description and claims through post. TIPO received the documents and issued the application number thereof as No. 104200885. The applicant further supplemented the drawings of the said application on January 22, 2015. Based on the Paragraph 2 of Article 106, TIPO issued an Official Notice to inform the applicant that the filing date was January 22, 2015. The applicant did not accept the decision and filed the appeal which has been rejected.

Ground of the appeal decision:

Based on the Paragraph 2 of Article 106, the filing date of a patent application for utility model shall be the date on which the request form, description, claim(s), and drawing(s) are provided in full. The Examination Guidance of Patent Application also points out that drawing(s) is a required part for obtaining a filing date for a Utility Model Application. The application cannot get a filing date without the drawings. If the drawings are supplemented within the specified time period, the date of the supplementation of the drawings will be the filing date. If the drawings are not supplemented within the specified time period, the application will be dismissed. According to the above explanation, it is obvious that the application form, the description, the claims and the drawings are all necessary documents to gain the filing date.

When the applicant filed the said Utility Model Application through post on January 19, 2015, the applicant only submitted the application form, the abstract, the description and the claims. The drawings for the said Utility Modal Application were supplemented later on January 22, 2015 through post. According to the above mentioned regulation, the filing date of the present application should be the date when the drawings were supplemented to the TIPO. Thus, the TIPO’s determination of the filing date as January 22, 2015 is in accordance with the regulations and thus shall be affirmed.

https://www.tipo.gov.tw/ct.asp?xItem=645268&ctNode=7834&mp=1

Trademarks

Amended “Examination Guidelines on Non-Traditional Trademarks” Effective as of September 12, 2017

The “Examination Guidelines on Non-Traditional Trademarks” was enacted and promulgated on May 31, 2012 and has been implemented for more than five years up to now. After accumulating considerable practical experience and instances during the examination, Taiwan Intellectual Property Office (TIPO) thinks it’s time to update and supplement more examples of cases. Also, it’s necessary to add examination guidelines for scent trademarks and trademarks consisting of sequential images. Thus, TIPO held a public hearing to solicit opinions from experts and scholars, and then finished the amendments to the “Examination Guidelines on Non-Traditional Trademarks”.

“Examination Guidelines on Non-Traditional Trademarks”

In filing an application for registration of a non-traditional trademark, in addition to the reproduction of the trademark, the applicant is generally required to furnish a description of the trademark and specimen(s) thereof in order to faithfully present such trademark, as well as to ascertain the scope of trademark rights and facilitate its examination. The description and specimen(s) of a trademark can supplement the reproduction of the relevant trademark and assist in the trademark examination. Therefore, the description and specimen(s) of a trademark must be consistent with the reproduction of the relevant trademark.

Key points of the amendments:

Adding single chapter introducing the examination guidelines for trademarks consisting of sequential images

Making reference to the domestic and the USPTO examination guidelines and practice, TIPO stipulates the examination guidelines for trademarks consisting of sequential images and introduces two acceptable expressions and descriptions as below.

Trademarks	Description of Trademark
	This is a trademark consisting of sequential images, i.e. abounding with the checkerboard square patterns on the upper vamp and back of the shoe. The shape of the shoe in broken lines is used to show the placement of the checkerboard square patterns which is not part of the trademark.
	This is a trademark consisting of sequential images, i.e. a series of diamond patterns dividing by green, red and green stripes in the middle, spreading allover or part of the products without specific orientation or placement.

During the examination, the examiners will determine if the trademark consisting of sequential images is distinctive synthetically based on the factors, such as whether the sequential images are commonly seen or widely used together with the nature of composition elements, how the industry practices and categories of the designated goods or services, etc. If the trademark itself affects the cost or quality of the goods or services, or has competitive advantages over the same categories of goods or services, i.e. being the decisive factor for relevant consumers to choose goods or services, it is deemed functional and cannot be allowed to register as a trademark.

Adding single chapter introducing the examination guidelines for scent trademarks

According to Article 19 III of the Trademark Act, a reproduction of the trademark shall be represented in a manner that is clear, precise, self-contained, objective, durable, easily accessible and intelligible. Principles with respect to how a scent trademark can comply with the preceding rule are introduced in the examination guidelines. For example, the applicant may submit a sample product or a paper with the scent as the specimen when filing a scent trademark. As to the description of a scent trademark, it can be described by existing smells in Nature or specific names of smells in the market.

Moreover, a scent must be an extra and special additional smell beyond the nature and characteristics of the designated goods/services so as to obtain the distinctiveness, such as embroidery yarn with fragrance of frangipani, engine oil with cherry smell or dart with a smell of bitter beer.

If the scent filed for registration is indispensable for the use or the intended purpose, or affects the cost or quality, of goods or services, such as perfume, essential oil, air fresheners, and medicinal oils for refreshing, etc., it is deemed functional, and cannot be allowed to register as a trademark.

Updating Examples of Cases

The former “Examination Guidelines on Non-Traditional Trademarks” mostly from foreign counties. In the amendment, TIPO replaces the foreign cases with the domestic ones. Examples are shown below:

Three-dimensional trademark (Shape of the packaging or container of goods)	Three-dimensional trademark (Shape of goods)

Description: The trademark is three-dimensional, and consists of an oval-shaped bottle and in the middle of the front and rear sides of the bottle, there is a concave ellipse. The edges of the front and rear sides of the bottle are designed with shape of scallop. The bottle has a flat oval-shaped bottom and a round bottle mouth and bottleneck on the top thereof.	Description: The trademark is three-dimensional, and consists of the 3D pattern of a car with a special model produced by the applicant.

Three-dimensional trademark (Decor of the place where services are provided)

Description:

The trademark is a motion trademark, as shown in the reproduction, and consists of 5 images. The words and images are in blue color. The moving image begins from an infinity symbol sequentially changing as shown by the 1st and 2nd images. Then, a blue upright strip appears in the middle of the infinity symbol and rapidly moves toward to the left and right orientations of the infinity symbol. After that, the infinity symbol quickly shifts to a stylized word “HISAMITSU” and simultaneously the free image of the infinity symbol on the background moves and disappears as shown in the 3rd, 4th and 5th images. The portion in gray color is background which is not part of the trademark."

Motion Trademark

Description:

The amended “Examination Guidelines on Non-Traditional Trademarks” is not only the principles of examination for the examiners in TIPO, but the applicants also have to comply with it when filing non-traditional trademarks.

https://www.tipo.gov.tw/ct.asp?xItem=644084&ctNode=7150&mp=1

II.

The Registered Trademark Cannot be Separated into Individual Element and Combined/cross-compared so as to Judge the Similarity with Others

Trademarks owned by the Plaintiff		Trademarks owned by the defendant
Reg. No.01281173	Reg. No.01281166	Reg. No.01739655
		The actual use of the mark

The plaintiff：TUTORABC, INC.

The defendant：Gjun information Co., Ltd.

The plaintiff’s arguments:

The plaintiff, TUTORABC, INC., claims that they are the earliest and biggest online real-person English teaching platform in Taiwan nowadays. They registered a series of famous trademarks, such as Registration No.01281173 (a device mark with letter “O”, headphone and microphone) and Registration No.01281166 (a stylized word mark “TutorABC”) and etc.

The plaintiff indicated that the defendant, Gjun information Co., Ltd., started to use the trademark (Registration No.01739655 “online abc 巨匠線上真人家教 (Gjun online real-person tutor) with device”) which has high similarity in appearance, concept and pronunciation with the plaintiff’s registered trademarks in the online English teaching market. Since the defendant's trademark designates the same services as those of the plaintiff's trademarks, it is likely to cause confusion of the same or related sources for relevant consumers as well as diminish the distinctiveness of the plaintiff’s trademarks. The plaintiff claims for damages from the defendant and requests for excluding infringement thereto according to the Trademark Act, Articles 68, 69-1 and 70.

Intellectual Property Court’s viewpoints:

The two plaintiff's trademarks (Registered No.01281173 and Registration No.01281166) were combined and cross-compared with the defendant's trademark (Registered No.01739655) by the plaintiff. The plaintiff deems that both of them have the same elements of headphone, letter “O”, microphone, letters “abc” and the Chinese term “線上真人家教(online real-person tutor)”. However, the plaintiff’s two trademarks do not have the Chinese term “線上真人家教(online real-person tutor)” which is the additional element.

In determining the protection range of the trademark right, the court should not unlimitedly protect the right of the registrant but also has to maintain fair competitions of markets. Further, the court deems that the range of protection of each trademark right is based on each registered trademark. The trademark right cannot be combined and cross-compared so as to judge the similarity with others. Although the additional element, the Chinese term “真人線上英語家教(online real-person English tutor)”, appears on the advertisement provided by the plaintiff , it is not included in any of the plaintiff's registered trademarks. The Chinese term “真人線上英語家教(online real-person English tutor)” should only be deemed as the description of the designated services. Hence, each of the plaintiff’s two trademarks is not similar to the defendant’s trademark.

TIPO Newsletter October 05, 2017

https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep10686.htm

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