Main Points of Amendments to Guidelines for Design Patent Examination in 2020

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Main Points of Amendments to Guidelines for Design Patent Examination in 2020
The newly amended Guidelines for Design Patent Examination of Taiwan Intellectual Property Office (TIPO) took effect as of November 1, 2020.
To stay current with the latest development of the new technologies in the world and to summarize the experience in the design patent examination, the TIPO decided to amend some chapters of the Guidelines for Design Patent Examination (hereafter “Guidelines”). Five topics are amended this time, namely (I) Relaxing the requirements for disclosing design specifications and drawings; (II) Clearly defining the designs of constructions and interior design as protected objects of design patent applications; (III) Relaxing the regulations for applying for a design divisional application; (IV) Adding the computer program product to be an article to which a graphic image design may be applied; and (V) others.
In our last issue, we have summarized the main points of topics (I) and (II). In this issue, we will keep introducing the main points of topics (III) and (V). Topic (IV) will be introduced in the next issue. 
(III) Relaxing the regulations for applying for a design divisional application
  In the former Guidelines for Design Patent Examination, if the drawings in the design application filed only disclose one design applying to one object, a design divisional application cannot be filed for the “portions form no part of the claimed design” because the drawings did not explicitly and substantially disclose two or more designs. However, to comply with the regulation of the Guidelines, i.e. “an amendment should not go beyond the scope of the specification and drawings initially filed”, as long as the design divisional application does not violate this regulation, it should not be forbidden. Thus, in the newly amended Guidelines, the prohibition is removed. That is if the specification or drawings initially filed may substantially cover two or more designs, the applicant may file a design divisional application(s) for one or more designs clearly disclosed in the specification or drawings initially filed.
Here are two examples for clear reference.
(V) Others amendments
  Three additional amendments are also included in the newly amended Guidelines for Design Patent Examination:
  (1)  Adding regulations for the disclosure of colors
When a design patent application is filed with computer drawings to present the shape or patterns, to prevent that the claimed design will be deemed containing the colors black, white, or gray, the applicant can specify in the description: “The subject design is represented by black-and-white photos (computer drawings) and the subject design does not claim the colors as shown in the drawings.” to define the claimed scope.
  (2) Adding an explicit description for the shape of an object only having functional purposes.
    The original Guidelines already stipulated that “a shape of an object created solely for a functional purpose is unpatentable”. In the newly amended Guidelines, the TIPO further adds a description to explain this issue more concretely. If the shape of an object merely depends on the basic shape of a “must-fit” portion of an article, and the design as a whole is related to a consequential outcome for connecting or mounting the article but does not have any creative ideas, such a design is unpatentable.
  (3) Revising the principles for evaluating the novelty and creativeness of a design application containing colors
    When examining the novelty of a design patent application, the effect of the colors on the overall impression must be taken into consideration as well. The amended Guideline states that when comparing the shape, patterns, or colors disclosed in the design patent application with the prior arts, although in principle every single part of the design should be examined and compared with the prior arts if the difference between the claimed design and the prior arts is only a single color selected or changed from the existing color system, the single color applied or changed by the claimed design should be regarded as not affecting the overall visual impression and the claimed design and prior arts should be deemed related designs.
However, if the claimed design contains two or more colors, when determining if such a combination of colors would be easily conceived, it should be also taken into consideration whether the combination of the colors provides the design as a whole with a unique visual effect. If the combination of the colors does not provide the design with a unique visual effect, such combination should be deemed easily conceivable.
    …to be continued.

I. Announcement of the Classification Changes and Amendments to the Goods "Medicated Toiletry Preparation; Medicated Shampoo; Medicated Mouth Washes"
1. The Ministry of Health and Welfare (hereinafter the “TFDA”) announced the "List of Specific Purpose Ingredients and Use in Cosmetic Products" on May 30, 2019, which came into effect on January 1, 2020. Then, the TFDA announced the abolition of "Criteria for Cosmetics Containing Medical, Poisonous or Potent Drugs" (hereinafter the “Criteria for Cosmetics Containing Medical”) which became effective from, August 6, 2020.
In response to the TFDA’s abolition of the “Criteria for Cosmetics Containing Medical” and to avoid contradiction to the newly amended regulations concerning “Specific Purpose Cosmetics” of “Cosmetic Hygiene and Safety Act”, the TIPO determined that the following goods, "Medicated Toiletry Preparation; Medicated Shampoo; Medicated Mouth Washes" in class 5  listed in “Classification of Goods and Services and Cross Reference Index” (hereinafter referred to as “Reference Index”),  are no longer accepted from January 1, 2021. The explanation is as follows.
  (1)  An applicant intends to designate toiletry preparations, after-shave lotions, shampoo, mouth washes in class 5, he(she) should note that these goods will be classified as pharmaceutical drugs in nature and must be specified as "for medical purposes" to be distinguishable. Also, the special attention must be paid to the regulations of TFDA for the use of the trademark on these goods.
  (2) Due to the amendment of the regulations, the designated goods previously registered as “medicated toiletry preparations; medicated shampoos; medicated soaps" and “medicated mouth washes“ in class 5 are no longer available to be used as product names in the market. The traders should follow the relevant regulations of the “Cosmetic Hygiene and Safety Act”. In the actual use of the specific purpose cosmetics, the traders cannot manufacture or import such goods until a license is approved and issued.
  (3) To determine whether a trademark is actually used on the goods, such as “medicated toiletry preparations; medicated shampoos; medicated mouth washes", not only the use of the trademark should comply with the regulations of “Specific Purpose Cosmetics”, but the TIPO will also consider how the actual goods are transacted under general practice in the trade. If the trader uses the trademark on the goods, “medicated after-shave lotions, medicated shampoos; medicated toiletry preparations; medicated mouth washes ", such goods should have the same identity as the registered goods, without affecting the determination of the use of the registered trademarks on the designated goods.
3. Please pay attention to the remarks in the reference for the classification and the scope of goods and services to be cross-checked of “medicated after-shave lotions, medicated shampoos; medicated toiletries; medicated mouth washes" in class 5. The trademark registrations designated the goods in the subgroups of “medicated toiletry preparations; medicated shampoos; medicated soaps" and “medicated mouth washes” in class 5 should be cross-checked with the subgroups of “hair waving preparations; hair dyes, shampoos, hair conditioners”, “body wash [for humans]” and “non-medicated mouth washes” in class 3 because they are deemed identical or similar goods. An applicant should not file an identical or similar trademark which designates identical or similar goods or services to avoid causing a likelihood of confusion on relevant consumers.
4. for the examination of whether consumers will misidentify the goods as goods from the same source, or different but related sources, the TIPO will determine it by comprehensively considering the degree of similarity of the two trademarks, the goods and services, and other factors according to the “Examination Guidelines on Likelihood of Confusion”.
II. Draft Amendments to Trademark Act Sent to the Executive Yuan for Approval
In order to complete the Trademark Act to comply with the trends, the TIPO has drafted the amendments to Trademark Act and sent the same to the Executive Yuan on October 27, 2020. It is now under examination.
We conclude the main points of the draft amendments to the Trademark Act as follows.
1. According to the demands of the market, a qualified applicant of a trademark application is defined in Article 19 and Article 99 of the amended Trademark Act, namely natural persons, juridical persons, partnership (e.g. accountancy firms, law firms, and architect offices), an unincorporated body (e.g. associations and temples), or a business registered based on Business Registration Act (e.g. sole proprietorships and partnership for profit).
2. The procedure of the Accelerated Examination for trademark applications is introduced in Article 19 and Article 104 of the amended Trademark Act. The operational program of the Accelerated Examination and the official fee thereof will be set up shortly by the TIPO. However, the Accelerated Examination procedure will not be applied to certification marks, collective membership marks, and collective trademarks.
3. According to the present Trademark Act, a trademark that is exclusively necessary for the goods or services to be functional shall not be registered. In the amended Article 30, it defines the scope of a trademark with the functional part.  That is the functional part of a trademark shall be presented in broken lines to indicate that is not a part of the trademark. If the functional part cannot be presented by broken lines, an application can be filed for registration subject to having to claim it not to be a part of the trademark.
4. Concerning the limits on effect of a registered trademark, in order to meet the judicial practice, “nominative fair use”, “using bona fide, prior to the filing date of a registered trademark” and "exhaustion doctrine" are definitely stipulated in the amended Article 36 of the draft Trademark Act.
5. According to Article 30.1.15 of the Trademark Act, a trademark shall not be registered if it is an infringement of another person’s copyright, patent right, or any other right, where a final judgment of the court has been rendered unless the said person consents to the application.  When a person files an opposition with the ground of Article 30.1.15 against a registered trademark, the datum point of time on which the final judgment of the court has been rendered will be determined on the date of filing the opposition application. The datum point of time shall apply mutatis mutandis to invalidation of a registered trademark and shall be unrestricted to the five-year time limit on filing invalidation.
6. According to the present Trademark Act, an application for revocation may be dismissed directly if the application is devoid of any concrete facts and evidence or based on obviously groundless claims. The amended Article 65 of the draft Trademark Act will delete the term “devoid of any concrete facts and evidence” to reduce the burden of proof for an applicant of revocation. In other words, an investigation report might not be the necessary material for filing a revocation application in the future.
In the amended Articles 54, 62, and 66 of the draft Trademark Act, the final disposition and the legal consequences are clearly defined.
A disposition of the opposition, invalidation, or revocation to a registered trademark will become final and binding under any of the following circumstances:
  (1) where no administrative remedy proceedings are filed in accordance with laws; or
  (2) where administrative remedy proceedings are filed but dismissed finally and bindingly.
  Where a trademark is cancelled finally and bindingly, the effect of trademark right shall be deemed not to have existed.
8. According to the present Trademark Act, No invalidation shall be filed, or no proposal for invalidation shall be submitted, against a trademark registration on the grounds that such registration falls under Subparagraph 1 or 3 of Paragraph 1 of Article 29, any of Subparagraphs 9 through 15 of Paragraph 1 of Article 30, or Paragraph 3 of Article 65 if the registration has at that date been published for not less than five years. In the draft Trademark Act, where an interested party possesses recoverable legal interests due to the revocation of a trademark, such interested party may file an invalidation action after the said trademark has become extinguished ipso facto or invalid.



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

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