Guidelines for Requesting Deferral of Substantive Examination for Design Patent Application

[ August 2018 ] >Back

I. Guidelines for Requesting Deferral of Substantive Examination for Design Patent Application
  1. Background: 
    In consideration of the strategy of application, patent portfolio and commercialization of the patent, TIPO accepts the request for Deferral of Substantive Examination for design patent application from July 1, 2018.
  2. Applicability:
    (1) Design patent application
    (2) Design patent application subject to any of the following situations shall not apply for the deferral:
a. An Office Action or a formal decision has been issued by TIPO.
b. A divisional application has been filed.
  3. Timing for applying for the request of Deferral:
    The request for deferral for substantive examination should be applied at the same time of filing the design patent application or thereafter.
  4. Period of the Deferral:
    The deferral of substantive examination of a design patent application cannot exceed one (1) year from the filing date of the design patent application. In case the design patent application has claimed the priority, it will be dated from the priority date.
  5. Filing procedure:
The request for deferral should be applied with following information in written form by the applicant:
a. Filing number
b. Name of the applicant
c. The names of the patent attorney and the patent office when a patent attorney is designated.
d. The specific date to resume substantive examination 
    (2) Fee: No official fee is required.
  6. Resuming of the substantive examination
    (1) The applicant should designate a specific date to resume substantive examination, which should be within one year after the filing date or one year after the priority date.
    (2) When designating the date to resume substantive examination, the applicant should indicate a specific date such as “the substantive examination should be resumed on January 1, 2019”. It is not allowed to only describe that “the substantive examination will be resumed one year after the filing date” or “the substantive examination should be deferred for five months”.
On the designated date for resuming the substantive examination, the design patent application will be put into the cases filed in the same year and will be examined.
  7. Notices
    (1) The request for deferral of substantive examination will not affect the publication date of the design patent.
    (2) The applicant may withdraw the request for deferral of substantive examination; however, after the withdrawal, the request for deferral cannot be applied again.
    (3) After the request of the deferral of substantive examination, the applicant can change the date to resume substantive examination; however the changed date must not go beyond the time period prescribed.
II. Guidelines on Hearing Procedures for Patent Invalidation Cases Became Effective on March 31, 2018 
Taiwan Intellectual Property Office (TIPO) has published the Guidelines on Hearing Procedures for Patent Invalidation Cases, which became effective on March 31 2018. The guidelines are based on the Article 107.2 and Articles 54~66 of the Administrative Procedure Act.
The implementation of the hearing procedures aims to provide an opportunity for both parties concerned in a patent invalidation case to make an oral statement and cross-examination on the facts, evidences, and the court’s judgment. It also helps the examiner to have a full understanding based on all of the facts and evidences presented in the hearing and the result of the inter parties disputes so that the examiner may make a final decision thereof.
  The main points of the guidelines are as follows:
Both parties concerned in a patent invalidation case can file a request of holding a hearing in written form stating the reasons for holding a hearing. With the consent of the other party, TIPO will hold a hearing when deemed necessary. TIPO can also decide to hold a hearing ex officio when necessary.
If TIPO deems that the reasons for holding a hearing are obviously irrelevant to the case at issue or the case at issue has already been clarified so that there is no need to hold a hearing, TIPO will notify the applicant or state the reasons for not holding a hearing in the final decision. 
  (2) Hearings for Patent Invalidation Cases should be held by a panel of three examiners and the final decision will be made by the panel collectively, so that the examination may be more thorough and comprehensive.
  (3) To clarify facts and discover the truth, both parties concerned in a patent invalidation case may give oral statement to express their opinions fully regarding the confirmed issues to help the clarification of the thorough truth.
In principle, patent invalidation hearings should be held publicly. That is, in addition to both parties, interested parties concerned in a patent invalidation case may also apply to attend the hearings. Also, the general public may apply to observe the hearings online so that more audience can participate in the hearings.  
However, if the concerned parties have applied before the hearing that the hearing should not be open to the public or have claimed in the hearing that the disclosure of the related documents and evidence will cause serious damage to personal interest, the examiners may decide not to disclose a part or all of the documents.
  (5) According to Article 109 of the Administrative Procedure Act, in the case of dissatisfaction having been raised against the administrative disposition of the hearing, no administrative appeal is required and an administrative litigation can be raised directly.
According to the guidelines, both parties can submit evidence and make oral statements about the facts. Also, the examiner can request the concerned parties to provide evidence or request related institution to proceed with necessary investigation ex officio. 
Through holding the hearing which allows greater participation of the public for Patent Invalidation Cases, it is hoped to improve the correctness of examination results on patent invalidation cases and elevate public confidence in the decisions of the patent invalidation cases. 

I. Altering Parallel Imported Products Constitutes Trademark Infringement
  The defendant is the legal representative of Brother International Company (hereafter called “Brother Taiwan”). Brother Taiwan imported the printers and the peripheral manufactured by BROTHER INDUSTRIES, LTD., a company in Japan (hereafter called “Brother Japan”). On the website, Brother Taiwan tagged the toner cartridges for printers with the item numbers “TN-720” and “TN-750”of Brother Japan as “All BROTHER products with best quality are imported from the USA”. Brother Taiwan is aware that the printers and toner cartridges made in different countries have different item numbers. The toner cartridges cannot be compatible with different printers made from different areas. The plaintiff, Brother Japan, is the owner of registered mark “brother” designating “printers and the toner cartridges thereof”. Brother Japan claimed that without permission or authorization, Brother Taiwan altered and sold the toner cartridges from the USA in order to make them compatible with the printers in Taiwan in years of 2015 and 2016. Brother Japan raised a lawsuit due to trademark infringement.

According to the verdict of Supreme Court (No. 5380) in 1993, the selling of parallel imported products is legal as long as the products are not altered, processed or modified. Also, it is acceptable for the seller to use the trademark on the advertisement material of the parallel imported products. On the other hand, if the products have been altered, processed or modified by the seller, using the trademark on the advertisement material may cause confusion to the consumers. The consumers may be misled that the seller is the trademark owner, is authorized to use the trademark or is the designated agent or distributor. This conduct is deemed using the other’s trademark in bad faith and there is evidently an intent to infringe the other’s trademark rights.
 Getting back to the Brother’s case, Brother Taiwan argued that the toner cartridges TN-750 were actually imported from the USA. The Judge opined that though the toner cartridges are not counterfeits, those cartridges are not the original products since they have been altered. Hence, the Court affirmed that using the “brother” trademark under such kind of situation constitutes trademark infringement according to Article 95.1 of the Trademark Act.
II. The Trademark As a Whole Still Has the Trademark Right Even Though the Non-Distinctive Part Of the Trademark Has Been Disclaimed For Exclusive Right To Use
Trademark at issue owned by the defendant 
Reg. No.1717413
Class 35: department store; Retailing and wholesaling of bags.
Class 25: Clothes
Trademarks owned by the plaintiff
Reg. No.165568 and Reg. No.165569
Class 35: department store; Retailing and wholesaling of clothes.
「台北」 and 「101」 are disclaimed.
「TAIPEI」 and 「101」 are disclaimed.
  The plaintiff is the owner of the registered trademarks No.165568 and No.165569. These trademarks are well-known and are familiar to the consumers in Taiwan as well as having extremely high distinctiveness. The registered trademark No.1717413 owned by the defendant was cancelled by TIPO through an opposition raised by the plaintiff. After the appeal procedure, the original decision of the cancellation sustains. However, the defendant continues using the registered trademark No.1717413 for their services related to retailing and wholesaling in the market via their own online shopping platform after the trademark has been formally cancelled. For the said reason, the plaintiff raised a court action based on Article 68.3 and 70.1.2 of the Trademark Act. The court’s decision is as below:
According to the Article 29.3 of the Trademark Act in Taiwan, “Where the reproduction of a trademark contains an element which is not distinctive, and where the inclusion of that element in the trademark could give rise to doubts as to the scope of the trademark rights, the applicant shall state that he/she disclaims any exclusive right to such element. Such trademark without disclaimer shall not be registered.”, which means the trademark as a whole still has the trademark right even though the non-distinctive part of the trademark has been disclaimed for exclusive right to use. For the said reason, although the Plaintiff disclaimed the exclusive right  to use the term “101” from the trademarks of Reg. No.165568 and Reg. No.165569, they can still claim the trademark rights of “台北101” and “TAIPEI 101” as a whole when making comparison with the defendant’s trademark.
  2. The term “101” is included in both the defendant’s and the plaintiff’s above trademarks. The pronunciations of the term “101” of the aforesaid trademarks are the same. Moreover, the term "101" forms a part that cannot be ignored in the trademark as a whole in both the defendant’s and the plaintiff’s trademarks. Hence, in this case, it should not be judged to be non-infringement merely by the disclaimer of the term “101” in the plaintiff’s trademarks. Instead, other elements consisted in the plaintiff's trademark should also be examined in the judgment of infringement.
  3. The defendant’s trademark and the plaintiff’s trademarks have middle degree of distinctiveness, middle degree of similarity in the appearance and high degree of similarity in the designated services. There exists actual and serious confusion and misleading between them. Due to the fact that the plaintiff's trademarks are very familiar to the consumers, the defendant cannot sufficiently prove that the consumers can well recognize the relevant goods/services of the plaintiff’s and the defendant’s marks as being from the different sources. Moreover, the defendant is unable to provide the evidence of use to prove that they used the trademark at issue earlier than the plaintiff’s trademark use.  At the time on which the defendant used the trademark at issue, the plaintiff's trademarks have become famous.
  In short, the defendant’s trademark is similar to the plaintiff's trademarks and thus is likely to cause the actual confusion to the consumers. It indeed constitutes a trademark infringement according to the Article 68.3 of the Trademark Act.



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

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