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October 2017 - New Patentable Subject Matters for Design Patent in Taiwan (I)

 

Patent
 
I. New Patentable Subject Matters for Design Patent in Taiwan (I)
   
 
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 “a set of designs”, which allows two or more articles to be filed in one design application. 
   
  A Set of Designs
 
Under the present regulation in Taiwan, an application for a design patent shall be limited to one design applied on one article. However, in practice, multiple products which are sold or used together will usually be designed together to create an overall visual impression of the products. Thus, “a set of designs” is an available choice for two or more articles under the same classification or articles which are customarily sold or used together as a set to be filed in a single design application. The term “classification” refers to the main classification of an article’s Locarno International Classification. A set of designs is considered as a whole single design, and the patent right of each individual article cannot be separately enforced.
 
Examples of articles that are customarily sold in a set include a tea set (comprising tea cups, a tea pot and a tea tray), a tableware set (comprising knives, forks and spoons), and a hand tool set (comprising drills, wrenches and screwdrivers). Examples of articles that are customarily used in a set include: a jewellery set (comprising finger rings, necklaces, and earrings), a stationery set (comprising pencils, erasers, rulers and a pencil box), and a stereo set (comprising an audio player, speakers and an amplifier).
   
  Special Notices for filing an application of a set of designs
  1. The title of design
  To clearly indicate the claimed subject, the title of design should be written as “A set of ……”, such as “a set of tableware”, “a jewellery set”, etc. An application of a set of designs whose title does not include the terms “a set”, “a group” or the like will be regarded as violating the regulation of clear disclosure and thus need to be amended. 
   
  2. The drawings
  As a set of designs contains two or more articles, in order to completely disclose the appearance of the claimed design, the application shall include a sufficient number of views (i.e. the front, rear, right and left sides, top and bottom views and the perspective view) of each article respectively and at least a view that disclose the overall visual appearance of the set as a whole. 
   
  Example: sufficient drawings for a stereo set (comprising an audio player, speakers and an amplifier)
   
 
   
  However, if the designed features can be more clearly disclosed through the combination of each individual article in the drawings, the design can be disclosed through the views of the combined articles. 
   
  Example: A set of cup mats
   
 
   
  3. Suggestions for obtaining thorough protections
  The patent right of a set of designs only covers the set as a whole and does not protect the design of each individual article respectively. To obtain a thorough protection, the applicant can consider applying for individual design applications for each article respectively and also applying for a set of design for the combination of the articles.
   
  Example:
  Original application for a set of tableware
   
 
   
  only protecting the disclosed combination
   
  TIPO’s suggestion:
  (1) an application for a set of design to protect the combination
   
 
   
  (2) individual design applications for each designed article
   
 
   
II. The Final Invalidation Decision Can Be Used as Ground for a Rehearing Action Against the Final Judgment in Civil Procedure
   
  The invalidation appellant A, as the patentee of the patent at issue, claimed that the patent right of the patent at issue has been infringed by the appellee B, and claimed for damages suffered therefrom. The final decision by the Court was in favor of appellant A. The appellee B therefore filed an invalidation against the patent at issue to TIPO, and after examination, TIPO deemed that the patent at issue should be revoked. The appellant A then filed an administrative remedy against the invalidation decision. In the meantime, the appellee B requested the first rehearing action; however, the court deemed that the invalidation procedure is in progress and the patent at issue is still valid and thus dismissed appellee B’s request.

After the Supreme Administrative Court made a final decision and revoked the patent at issue, the appellee B requested the second rehearing action to the Intellectual Property Court and received the final decision in his favor.
 
 
  The appellant A’s viewpoint:
  The appellant A argues that the first and second requests for the rehearing actions filed by the appellee B are based on the same ground according to the Subparagraph 11, Paragraph 1 of Article 496, so it violates Paragraph 1 of Article 498, Code of Civil Procedure.
   
       Article 496 of Code of Civil Procedure: Except where the party has filed an appeal to assert the ground for a review or has failed to assert such ground known to him/her, a rehearing action may be initiated to request a review of a final judgment with binding effect in any of the following situations: ……(11) Where the referenced civil, criminal, administrative judgment, or any other decision or administrative disposition, based on which the judgment was entered, was amended by a subsequent final decision or administrative disposition with binding effect.

Article 498 of Code of Civil Procedure: Where the rehearing action has been dismissed on the merits, no rehearing action may be initiated on the same ground against either an original final and binding judgment or a final and binding judgment dismissing the original rehearing action.
   
  IP Court’s viewpoint:
  1. The appellee B requested the first rehearing action on the ground that “the invalidation is considered well grounded, and the patent at issue should be revoked” which is made by TIPO. The second rehearing action was filed based on the ground that the patent at issue has been revoked finally. Since the grounds are not the same, it does not violate the Paragraph 1 of Article 498, Code of Civil Procedure.
   
  2. Article 496 of Code of Civil Procedure indicates that when the judgment is based on the administrative disposition, if the said administrative disposition was amended by a subsequent decision, the ground of the original judgment is therefore no longer sustainable. Since the invalidation decision and the administrative remedy procedure thereof have judged that the patent at issue should be revoked, the said patent at issue shall be deemed not to have existed and the patent right is therefore extinguished ex post facto. Since the appellant A has no right to claim the patent right against the appellee B, it is not reasonable for the appellant A to request for damage.
     
  https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep10560.htm 

Trademarks
 
I. The Principle of Exhaustion for Trademark Rights Is Applied Only When the Owner of Domestic and Foreign Trademarks Is the Same One 
 
Trademark at issue
Reg. No. 01629381
I.C. 03 (Products at issue)
Cosmetics, Pomades for cosmetic purposes, Styling gel, Oils for hair conditioning, Hair protection creams, Milks [cosmetics], Hair spray, Hair styling preparations, Hair care preparations, Hair nutrition, Cosmetic preparations for skin care, Body wash [for humans], Bath concentrate, Shampoos, Perfumery, essential oils, Massage essential oils.
   
  Plaintiff:INFINITY BEAUTY LTD. 
  Defendant:OHWIN INC. (the owner of the trademark at issue)
   
  Plaintiff’s Claim: 
  Before the Defendant can obtain any credible evidence proving that the products parallelly imported by the Plaintiff are not genuine, the Defendant is not entitled to claim its trademark rights against the products under the trademark “PHILIP B” ordered by Plaintiff from the official website of PHILIP B since January 07, 2016 nor forbid the Plaintiff to sell such products. 
   
  IP Court’s Judgment: Dismissing the Plaintiff’s action 
   
  IP Court’s viewpoints:
   
   1.
According to Article 36.II of the Trademark Act, where goods have been put on the domestic or foreign market under a registered trademark by the proprietor or with his consent, the proprietor is not entitled to claim trademark rights on such goods. This is so-called “the Principle of Exhaustion” or “First Sales Doctrine”.   

The Trademark Act in Taiwan adopts the Principle of International Exhaustion. It means that when a trademark owner or his/her licensee put a product protected by trademark rights on either the domestic or foreign market, the trademark rights for the given product end with the product’s first sale. This is because when the trademark owner sells the product firstly, he/she has received reasonable remuneration so the consent to the trademark use is given implicitly during each transaction of the product from the manufacturers to retailers and then to consumers. The purpose is to avoid the trademark owner from profiting repeatedly due to the same trademark rights although he/she does have the exclusive right of use for the trademark. 
     
  2. In this case, the Plaintiff bought the products at issue from a U.S. company, Philip B, Inc. but not the Defendant. Thus, the Principle of Exhaustion shall not be applied because the trademark at issue is owned by the Defendant in Taiwan but not the U.S. company, Philip B, Inc. Since the Defendant is not the party firstly selling the products at issue nor received any remuneration, the Defendant’s trademark rights have not ended yet. Now that the Defendant does not conform to the trademark owner indicated in Article 36.II of the Trademark Act in Taiwan, the Principle of Exhaustion shall not be applied. Thus, the Defendant is still entitled to claim trademark rights against the Plaintiff. 
     
 
TIPO News on August 05, 2017
https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep10560.htm
 
II. Reminders to the Trademarks Containing the Terms of the Nature, Quality or Place of Origin
   
  In May of 2017, TIPO (Taiwan Intellectual Property Office) held a propaganda to explain the key points of Trademark Act Article 30.1 (8) and the relevant regulations issued by Ministry of Health and Welfare. 
        
  I
Trademark Act Article 30.1 (8): A trademark shall not be registered if the mark is likely to mislead the public as to the nature, quality, or place of origin of the goods or services.
     
  (i)
The terms of the nature, quality or place of origin contained in a trademark are likely to mislead the public to have wrong association. 
     
    Examples: 
    (a) Misleading of the nature: A trademark contains the term “abalone” but the designated goods are “dried vegetables”
    (b) Misleading of the quality: A trademark contains the term “Gold Prize” and designates the goods of “dried vegetables”.
    (c) Misleading of the place of origin: A trademark contains the term “Ishikawa Rice” and designates the goods of “rice; plumule rice”.
         * ps. “Ishikawa” is a county in Japan. 
       
  Appl. No. 105014070 for   (SWISSMOBILITY & device) in class 18 This mark was rejected because of the word “SWISS” which is likely to cause the misunderstanding of the place of origin. 
   
  Appl. No. 105001697 for   (POTATO CHIP INSTITUTE logo) in classes 29 and 30This mark was rejected because of the term “POTATO CHIP INSTITUTE”. Since “POTATO CHIP INSTITUTE” is a name for an international association, this mark is likely to cause misunderstanding of the nature.
       
  (ii) Even though the term of a name of place does not have direct relation to the designated goods, the regulations are still applicable due to the possible misleading. For example, a trademark contains the term “Attica” (i.e. a place in Greece) and designates the goods of “office desks”. Though “Attica” in Greece is not famous for manufacturing office desks, the use of a name of place would cause possible misunderstanding that the office desks under the trademark are from Attica. 
     
  App. No. 105058972 for  (Beypazari 貝伊帕莎) in class 32 This mark was rejected because of the term “Beypazari” is a name of a city in Turkey. Thus, it is likely to cause the misunderstanding of the place of origin.
   
  (iii) An organic certificate has to be submitted when filing if a trademark contains the term “organic”. In addition, the designated goods can only be the items that listed on the organic certificate. 
     
  (iv) A certificate proving that nanodiamond technology is applied during the manufacturing processes has to be submitted when a trademark contains the term “nanodiamond”. 
       
   
  II According to Statute for Control of Cosmetic Hygiene, Act Governing Food Safety and Sanitation, Pharmaceutical Affairs Act, the descriptions or terms shown on a trademark shall not imply, promote or advertise any medical efficacy and literal description or propaganda regarding the medical efficacy. Some examples regarding food, pharmaceuticals and cosmetics are listed below for reference. 
     
    Appl. No. 105058044 for “”. in classes 05 and 30→ This mark was rejected because of the word “Slim”.
     
    Appl. No. 105060438 for “ ” in classes 05, 30 and 32 This mark was rejected because of the word “Slim”
     
  (i) In case the trademarks are allowed to be registered in the TIPO but violate the said regulations because of the terms “slim”, “to prove your eyesight”, “science of weight reducing”, a fine may be still imposed to the use of these marks by Ministry of Health and Welfare. 
     
  (ii) For a trademark containing the term “Health Food”, the applicant has to submit the Health (Functional) Food Certificate in Taiwan. Otherwise, it will violate Health Food Control Act and the criminal sanction will be imposed. 


 

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