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August 2017 - If the technical problem to be solved has been taught by the prior arts in the said technical field, it should be reasonably expected that a person with ordinary skill in the field may have the motive to combine the prior arts.

 

Patent
 
I. If the technical problem to be solved has been taught by the prior arts in the said technical field, it should be reasonably expected that a person with ordinary skill in the field may have the motive to combine the prior arts.
   
 
The plaintiff A, as the patentee of the patent at issue, has filed a utility patent application which is granted by the defendant B(TIPO). The  intervening party (the invalidation requester) took an invalidation action based on the argument that the patent at issue violates the Article 120 of the Patent Act and lacks novelty as well as an inventive step. Then, a request for post-grant amendment is filed by the plaintiff A which is allowed by the TIPO. Based on the amended specification, the defendant B deems that the present utility patent violates the regulation of the Patent Act, and the invalidation is considered well grounded so that the patent right of the patent at issue shall be revoked. The plaintiff A further filed an appeal which is rejected by the Ministry of Economic Affairs. The plaintiff A refuses to accept the result and filed an Administrative Litigation to the Intellectual Property Court. After examination, the Intellectual Property Court rejects the request of the plaintiff A.
   
  The plaintiff’s viewpoint:
  The plaintiff deems that the combination of two prior arts cannot prove that the patent at issue lacks an inventive step.
   
  IP Court’s viewpoint:
  To judge whether a patent has an inventive step or not, it should be taken into consideration that whether there are reasonable and concrete grounds for a person with ordinary skill in the field to combine the prior arts in order to achieve the patent at issue. That is to say, it is crucial to consider whether there are commonalities between the prior arts and between the prior arts and the patent at issue. The commonalities may be the relevance of the technical fields, the technical problems, the technical means to solve the problem and the accomplishable effect. Based on these commonalities, it can be judged that whether the prior arts are obviously unable to be combined with or inherently incompatible from each other. If the technical problem to be solved has been taught by the prior arts in the field, it should be reasonably expected that a person with ordinary skill in the field may refer to the prior arts which  solve the same or similar technical problems in the relevant technical field and  will have the motive to combine the prior arts. By using the prior arts as background, a person with ordinary skill can modify, substitute, change or combine other prior arts and easily accomplish the patent at issue as well as expect to achieve desired effect.
   
 
TIPO Newsletter June 05, 2017
http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep10429.htm
   
II. Three-way Comparison is a Subsidiary Method for Design Patent Infringement Assessment
   
 
   
 
Facts:
  The plaintiff A, the patentee of the design at issue, sued the defendant B for infringement.
   
  The plaintiff’s arguments:
  1. Both the patented design and the accused product share similar features on the front shell of the luggage: with paralleled convex ribs on the front, using a zipper to define the front side and the rear side, with a broad-to-narrow visual impression from the side view. 
   
 
  2.  The differences of the patented design and the accused product are merely the bending angle of the zipper and the position of the lock. However, the side of the luggage is not a notably visible part in normal use, and the zipper and the lock should be regarded as functional features. Thus, these are merely trivial differences that should not be taken into consideration in the comparison.
     
  3. Using “three-way comparison” to compare the front views of the patented design, the accused product and the prior arts, it can be seen that the accused product is more similar to the patented design than the prior arts. 
     
  The defendant’s arguments:
  1. The front shell of the patented design and the accused product are different in that the endpoints of the patented design are arranged in an obtuse angle while the endpoints of the accused product are arranged in a straight line. Also, the upright part of the front shell of the accused product is ornamented with a label while the front shell of the patented design is plainly unornamented except for the convex ribs.
     
  2. As the lock is essential for the safety of the luggage, the consumers will notice the position of the lock when purchasing and thus the different positions of the locks will prevent confusion of the patented design and the accused product. 
     
  Intellectual Property Court’s viewpoints:
  The court makes the decision of non-infringement based on the following reasons:
  1. The notably visible part in normal use of the luggage is not merely the front shell of the luggage. The sides and top side of the luggage will also be noted by the consumer during purchasing. Thus, the plaintiff’s argument that “the feature of the inclined zipper is merely a trivial difference that will not influence the overall visual impression” is ungrounded. Also, in the patented design, the upper parts of the ribs are bending and the endpoints are arranged inclinedly. However, the ribs of the accused product are unbending and arranged straightly.  Thus, the front shells of the accused product and the patented design have different features.
     
  2. Three-way comparison method is a subsidiary method in assessing design infringement through comparing the similarity of the overall visual design among the accused product, the patented design and the prior arts in the related field. Where the similarity or dissimilarity between the accused product and the patented design is sufficiently distinct, there is no need for a three-way comparison. Also, three-way comparison should be conducted based on the overall visual design instead of a specific feature only. 
   
 
TIPO Newsletter May 05, 2017
https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep10372.htm

Trademarks
 
I. Trademark shall be protected by the trademark law upon registration. A later filed trademark similar to the earlier registered trademark will be deemed causing confusion even when the relevant consumers are familiar with the later filed trademark through massive advertisement afterward.
   
 
Trademark at issue owned by the Plaintiff
App. No.103061807
Trademark cited as the basis for refusal
Reg. No.01636022
   
  Facts:
 
The plaintiff:CHANYEE HOTELDAY CO., LTD.
The defendant:TIPO
 
The plaintiff filed the trademark application, “承億文旅桃城茶樣子”, up to the TIPO on October 27, 2014 with the disclaimer of the word, “桃城”. After the examination, the TIPO issued the Formal Rejection to the plaintiff’s trademark application for causing confusion with the similar trademark on similar designated services according to Article 30.1.10 of the Trademark Act in Taiwan. The plaintiff filed the appeal and the appeal was rejected by the Ministry of Economic Affairs. Afterward, the plaintiff raised the administrative litigation to the Intellectual Property Court.
   
  Intellectual Property Court’s viewpoints:
 
Article 30.1.10 of the Trademark Act: “Other grounds for refusal of registration
A trademark shall not be registered in any of the following:…(10) being identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers, unless the consent of the proprietor of the said registered trademark or earlier filed trademark to the application has been given and is not obviously improper; …”
   
  1.
Based on the Trademark Act in Taiwan, the trademark right shall be granted to the first party to file the trademark application. If the later filed trademark is deemed similar to the earlier registered trademark, it will be deemed causing confusion to the consumers. Despite whether the relevant consumers are familiar with the later filed trademark through the massive advertisement, the later filed trademark will not obtain the registration of the trademark.
 
  2. The trademark at issue and the cited trademark are both distinctive. These two trademarks are highly similar and designate similar services. Though the owner of the trademark at issue provided a lot of evidence of use, the date of use was unknown or later than the registration date of the cited trademark. Hence, it cannot be determined whether the relevant consumers were familiar with the trademark at issue before the cited trademark registered. Moreover, it also cannot be judged whether the reverse confusion will be raised by anyone and whether the plaintiff is in a good faith for the trademark application. On the whole, the trademark at issue will cause confusion to the consumers with the cited trademark.
   
 
TIPO News on June 05, 2017
https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep10429.htm
   
II. The marks used on the products indicating the source of the products are not protected by Trademark Act Article 36.1 (1): The Act of Fair use.
   
 
Plaintiff’s marks:
(1) (2) (3)
The defendant’s product:
     
  The plaintiff is the trademark owner and the trademark at issue “金門” has been recognized as a well-known mark in the field of sorghum liquor by the official authorities. “金門” is the Chinese name of the Kinmen island. The defendant has been aware of the said well-known “金門” mark but still uses “金門 & device of Kinmen island” on their sorghum liquor products. The said products were seized by the official coast guards. So, the plaintiff filed legal proceedings based on Trademark Act Articles 68.1, 68.3, 69.1, 69.3, 70.1 and 70.3, etc. The abstract of the Court’s decision: 
     
  (1) The plaintiff (KINMEN KAOLIANG LIQUOR INC.) is founded in 1952 and their product “Kiinmen sorghum liquor” has been sold in Taiwan market for a long time due to the system of monopoly of tobacco and liquor in Taiwan in the past. The Court’s verdicts have recognized that “the Kinmen sorghum liquor produced by the plaintiff has been well-known for a long time.”  The plaintiff has kept devoting themselves in branding by sponsoring a basketball team and inviting celebrities to endorse their products for a long time. Thus, the product “Kinmen sorghum liquor” has been famous in Taiwan and worldwide and has successfully gained a significant market share in liquor market. In Taiwan, general consumers know this product quite well. 
     
  (2) The defendant’s products are made in the main island of Taiwan instead of Kinmen. So, the device of Kinmen island and the words “金門” are misleading. Furthermore, the device of Kinmen island and the words “金門” are placed in the middle of the package which are quite apparent to the consumers. In addition, since the device of Kinmen island and the words “金門” are in the same yellow color of “53°高粱酒” (53% sorghum liquor) that is also shown on the package, the consumers are very likely to be misled that this sorghum liquor is made in Kinmen. It is clear that the defendant attempted using the plaintiff ‘s reputation on the sorghum liquor products by placing the device of Kinmen and the words of “金門” in an apparent way. That may also mislead the consumers to think that the two parties are from the same business group or have other relationship such as license, franchise and the like. It is not an act with goodwill that happens in the general course of business dealing. So, it is not the situation of “fair use” regulated in Trademark Act Article 36.1 (1). 
     
  (3) The defendant uses the same or similar trademark on similar products without consent. It violates Trademark Act Article 68.1 (1) or Article 68.1 (3) for the act of trademark infringement.
     
 
TIPO News on July 07, 2017
https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep10498.htm


 

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