Draft of Amendment to multiple Articles of Patent Act[ June 2018 ] >Back
|I.||Draft of Amendment to multiple Articles of Patent Act|
|In order to tie in with the national economic rules, to adapt to international regulations as well as to improve the patent examination and practice, Taiwan Intellectual Property Office (TIPO) proposed the amendments to parts of the Patent Act which have been announced on May 17, 2018 for public review. The main points of the draft amendment are as follows:|
|1.||Introducing the reinstatement of international priority claim when filing a new invention|
In the current Patent Act, where an applicant has first applied for a patent in a foreign country, which reciprocally allows ROC nationals to claim patent priority, or with any member of the World Trade Origination (WTO), the applicant may claim priority in respect of an ROC patent application for the same invention if the ROC patent application for the same invention is filed within twelve (12) months after the filing date of the said first patent application.
In the draft amendment, where an applicant unintentionally fails to file a patent application for the same invention in Taiwan within 12 months after the filing date of the first patent application, or 6 months after the filing date of the first design patent application, but files the patent application within two(2) months after the expiry of the 12-month or 6-month period, the applicant is still allowed to claim priority.
|2.||Expanding the applied range and deadline for the request of division made after the approval decision is served|
Based on the current Patent Act in Taiwan, a request for division for a patent application should be filed after the date on which an approval decision for the original patent application is served. The same regulation will also apply to a Utility model patent application and design patent application in the draft amendment.
Presently, a request of division shall not be filed if a reexamination decision has been rendered. After the amendment, a request of division is also allowed to be filed after the approval decision of the reexamination is served. Also, the deadline for filing the said request will be extended from thirty (30) days to three months in maximum.
The amended articles will also provide that the divisional application shall be based on the specification and drawings of the original application but cannot disclose the same invention which is identical with that in the allowed claims of the original application. In violation of any of the new regulations, the divisional application shall be determined to be unpatentable or such a violation will become a ground of invalidation.
|3.||Extending the deadline for the request of substantive examination|
|Where an applicant unintentionally fails to make the request of substantive examination within three (3) years after the filing date of the patent application, the applicant may file the same within 2 months after the three-year deadline and pay the required fee to allow the application going into the stage of substantive examination.|
|4.||Introducing a new regulation to legally use the files after the application has been laid open or published|
|Because the establishment of patent databases helps the circulation of techniques, a new regulation has been added that the one who builds patent database for others to search is allowed to reproduce, transmit in public or translate the specification, claims, abstract and drawings which have been laid open or published .|
|5.||Establishing the principle that the Licensee still can claim rights under the license agreement against the Assignee|
|In the amended regulation, where the license agreement is recorded with the Patent Agency, the license agreement continues to exist to the assignee notwithstanding the patent right is assigned .|
|6.||Promoting the efficacy in the invalidation proceedings|
|The deadline for supplementing the invalidation reasons or evidence will be prescribed clearly in the amended regulations. The reasons or evidence provided after the deadline shall not be examined. Also, in the amended regulations, the limitation and exception for the patentee to file the post-grant amendments during the invalidation proceedings will also be stated.|
|7.||The timing for filing the post-grant amendment for a utility model patent is restricted. The post-grant amendments for a utility model patent will be proceeded under the substantive examination.|
|A utility model patentee can apply for the post-grant amendments when the utility model patent is in the invalidation proceedings and is under the statutory conditions, when the request of the technical evaluation report of utility model patent is accepted and when the utility model patent is in the litigation proceedings. The post-grant amendments for a utility model patent will be proceeded under the substantive examination.|
|8.||Extending the patent term of design patent|
|The term of a design patent will be extended from twelve (12) years to fifteen (15) years.|
|9.||Amendments to the preservation period of patent files|
|Patent files such as application documents, descriptions, claims, abstracts, drawings shall be kept permanently under the current regulations. In the amended version, the documents which are valued to be preserved should be kept permanently. Other documents can be preserved for no more than thirty (30) years under classification.|
|(1)||concerning the right to apply for a patent and the patent right owned by joint owners, when the joint ownership has to be assigned under the reason(s) of compulsory enforcement, etc., the assignment can be done without the consent of the other joint owner(s);|
|(2)||the procedure as to when one of the joint owners abandons his own share of the right to apply for a patent or the patent right;|
|(3)||for two or more patent applications filed for the same invention on the same date, or for an invention patent application and a utility model patent application filed for the same creation on the same date;|
|Transition terms between the old and new regulations will be stated clearly, including that if the decisions for the patent applications, the invalidation applications and amendments haven’t been made at the time of the implementation of the new regulations, the new regulations should govern. As to points 2, 3 and 8, applicable regulations will be prescribed separately .|
Source: TIPO Newsletter published on June 05, 2018
|I.||Trademark Disputes about the Famous Brand “RIMOWA”|
|Jaw-Hwa takes charge of the trademark portfolio owned by RIMOWA GmbH in Taiwan and collaborates with Rimowa’s local attorney in Germany, DOMPATENT von Kreisler Selting Werner, to have won several trademark contentious cases in Taiwan. The case introduced below is one of the successful instances.|
KGT International Corporation (hereinafter “KGT”) registered the trademark “ ” which designated the same and similar goods, travelling trunks, as the famous trademarks, “ 、RIMOWA” owned by RIMOWA GmbH (hereinafter “RIMOWA”) in Taiwan.
However, KGT altered the trademark from “ ” to “ and the like” when putting the trademark into use in the markets. Such actions have caused confusion to consumers. In order to protect the trademark rights, RIMOWA filed an opposition application against the trademark registration of “” up to the TIPO. The TIPO sustained RIMOWA’s claims and cancelled the trademark registration. KGT was not satisfied with the TIPO’s decision so went on the relief procedures. But, their appeal to the MOEA, the higher authority of the TIPO, failed, their administrative suit to the IP Court did not succeed either and their last appeal to the Supreme Administrative Court was rejected too. Finally, the cancellation of the trademark registration of “” was affirmed in March 2018.
|II.||Defining the issues in this case:|
|Issue 1: whether “ ” is similar to “ 、RIMOWA” in appearance, concept idea and/or pronunciation?|
|Although KGT’s trademark “ ” comprises a logo “ ”, in proportion, the word “ROWANA” is the main distinguishing part of the trademark to consumers. Thus, the comparison should be made mainly between “RIMOWA” and “ROWANA”. Because both “RIMOWA” and “ROWANA” have the same four letters, R, O, W and A, as well as the same prefix “R” and suffix “A”, the degree of similarity between the two trademarks is not low.|
|KGT alleged that the concept idea of the trademark “ ” is originated from “Arowana” which has the totally different meaning from “RIMOWA”. However, the IP Court deems that both “RIMOWA” and “ROWANA” are foreign words without a meaning and are less familiar to local consumers. It is not easy for consumers to distinguish the two trademarks when observing the trademarks separately at different times and places. Also, consumers have no way to get to know the concept idea of the trademark “ ” when seeing the trademark, so the origination of “Arowana” is not acceptable.|
|Based on the＂Examination Guidelines on Likelihood of Confusion＂ published by the TIPO, for alphabet-based foreign languages such as English, French, German and Japanese, the appearance and sound pronunciation of the initial have substantial effect on the impression of the entire phrase conveyed to consumers. Hence, in judging trademark similarity, the beginning of words is accentuated in comparison. Accordingly, the IP Court determined that the appearance and pronunciation of the two trademarks will cause confusion among consumers, so “ROWANA” is similar to “RIMOWA”.|
To sum up, although the trademark “” comprises a word and a logo, it gives the objective impression that the word “ROWANA” is the main distinguishing part of the trademark to consumers.
When identifying the Chinese trademarks and trademarks in a foreign language, local general consumers exercise somewhat different levels of attention. This is because Chinese is the customary language for local general consumers. Thus, when two Chinese trademarks consist of different characters but sound the same, local general consumers can still distinguish them. On the other hand, the local general consumers are usually not familiar with the foreign languages. Thus, they will exercise a lower level of attention when distinguishing trademarks in a foreign language. Also, they usually have rough impression of trademarks in a foreign language. As a result, when two trademarks in a foreign language have the same prefix and suffix, there will exist difficulty for consumers to distinguish them.
In this case, “RIMOWA” and “ROWANA” are just in line with the situation that four letters out of six are the same as well as they have identical prefix and suffix. Thus, it is not easy for consumers to distinguish the two trademarks so they are similar.
|Issue 2: whether the two trademarks designated the same or similar goods?|
|1.||KGT alleged the travelling trunks bearing the trademark “ ” cost only thousands and are sold merely on TV shopping channels while the “ ” travelling trunks are sold for tens of thousands. The prices and targeted markets between “RIMOWA” and “ROWANA” travelling trunks are different so the intended purpose of the two trademarks are not the same.|
|2.||However, the designated goods under the trademark registration “ ” are “purse, backpacks, suitcases, travelling trunks and etc.” while those under “ ” are “travelling cases and suitcases, trunks, and cosmetic cases”. The use purpose and function of the designated goods under both two trademarks are almost the same, especially on suitcases and travelling trunks. No matter what the prices and sale channels of the travelling trunks from both parties are, for consumers, they are travelling trunks which will not change just because of different prices or targeted markets. Thus, it is not easy for consumers to distinguish the two trademarks.|
|Issue 3: whether “ ” is a distinctive trademark and well recognized by consumers?|
|Yes, the IP Court determined that “ ” is a distinctive trademark and consumers are quite familiar with it due to the following factors:|
|1.||The word “RIMOWA” has no specific meaning and does not convey to consumers any information about the goods. It has the strongest distinctiveness and serves to identify and distinguish the source.|
|2.||It is obvious that consumers are more familiar with “ ” from the evidence of use submitted by RIMOWA, such as registration certificates issued in different countries, points of sale all over Taiwan, advertisement materials and media reports, etc.|
|3.||Even if KGT alleged the trademark “ ” has accumulated certain reputation after the goods bearing the trademark “ ” were launched and broadcasted on TV shopping channels, it is not sufficient to prove that consumers are able to distinguish the two trademarks because there have been articles published by consumers on Internet to express consumers’ confusion with the two trademarks.|
|Issue 4: whether the application to register the trademark “ ” is filed in good faith?|
|After KGT was found selling their travelling trunks under the logo “ ”, RIMOWA once issued a formal letter to request KGT to stop using the word ”ROWANA” with an oval frame. After receiving RIMOWA’s letter, KGT turned to file the trademark application for “”. It is obvious that KGT has become aware of the existence of the trademark “ ” before filing the trademark application for “ ” and had an intention to take unfair advantage from the famous trademark “ ” . Thus, the IP Court determined that the application to register the trademark “ ” is NOT filed in good faith.|
|After looking into the evidence in detail, the IP Court learnt the facts that (1) “ROWANA” is similar to “RIMOWA” and designates highly similar goods, (2) “RIMOWA” has strong distinctiveness, (3) consumers are more familiar with “RIMOWA”, and (4) the application to register the trademark “ ” is not filed in good faith, so determined that the application to register the trademark “ ” did violate Article 30 I (10) of Trademark Act and should be cancelled.|