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2020

Newsletter September 2020

Trademark

The proper reasons for non-use in Article 63.I.(2) of the Trademark Act do not include the situation where the registrant does not use the trademark based on his own factors

The disputed trademark

Registration No. 01629306


Class 5: Gel for protecting the rectum during prostate cancer radiation treatment


Class 10: Medical instruments and devices

The disputed trademark, registration No. 1629306 “BARRIGEL & device” designating the goods in classes 5 and 10, was transferred to the plaintiff, a Swiss company, on September 9, 2016. The participant, Han.biomedical Inc., filed the Petition of the Revocation against the disputed trademark on the ground of the violation of Article 63.I.(2) of the Trademark Act. After the examination, TIPO decided that the registration of the disputed trademark in class 5 should be cancelled by a formal decision of case No. L01060426. The plaintiff had objection to the decision and filed an appeal, but it was dismissed. The plaintiff then filed an administrative litigation. The IP Court's judgment and opinions are shown as follows.

According to Article 63.I.(2) of the Trademark Act, “The Registrar Office shall, ex officio or upon an application, revoke the registration of a trademark if such trademark is in any of the following:…(2) where the trademark has not yet been put to use or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use, unless the trademark has been put to use by a licensee”.

The plaintiff claimed that the disputed trademark could not be used due to patent litigation in the European Union, and during the dispute period, the plaintiff actively developed, promoted and cooperated in trial plans for the product related to the disputed trademark, which were their so-called proper reasons for non-use in Article 63.I.(2) of the Trademark Act.

However, the “proper reasons for non-use” defined in Article 63.I.(2) of the Trademark Act refer to the factual obstacles or other reasons not attributable to the plaintiff which cause the plaintiff unable to use the disputed trademark for production, manufacturing or wholesaling of the designated goods, such as the termination of shipping, lack of raw materials or natural disasters. The plaintiff’s claim about involvement in patent litigation in the European Union was not equivalent to the factual obstacles. Moreover, acquisition and protection of patent rights in the European Union and Taiwan both apply to the principle of territoriality. The involvement of patent infringement litigation in other countries does not mean it will also occur in Taiwan. Furthermore, the plaintiff stated that the related products were manufactured in foreign countries and then imported to Taiwan for sale. It was hard to find a manufacturer that could cooperate to make their products in Taiwan. Given this, the plaintiff did not manufacture medicines as well as using their trademarks in Taiwan. It is due to the plaintiff’s decision based on its own commercial policy which is a voluntary strategic decision. Thus, it is determined that the plaintiff’s no use of the disputed trademark on the goods in class 5 was not due to an unforeseeable or unavoidable reason based on objective standards.

A subjective cause not attributable to oneself is not a "proper reason of non-use". Therefore, these "proper reasons of non-use” do not include situations in which the trademark owner does not use the trademark based on his own factors. The plaintiff’s claim about the involvement in patent litigation in the European Union is merely the plaintiff’s subjective belief that there will be a risk of infringement. It does not necessarily mean that it will constitute infringement in Taiwan and cause the inability to use the disputed trademark. Further, in Taiwan, no selling of medical product shall be allowed until a medical device permit license is approved by the competent authority. However, since the registration of the disputed trademark on February 16, 2013, the plaintiff has not provided any evidence that they had applied for the permit license to the central competent health authority so far. Even if the plaintiff stated that the products they originally intended to produce have infringement concerns, the plaintiff could still obtain authorization, negotiate, or design around, change the design, etc. to produce non-infringing products, and use the disputed trademark at least in relevant commercial documents or advertisements, which would be sufficient to comply with the use of the trademark. However, the plaintiff made their own decision not to use the disputed trademark based on their own subjective preconceptions and commercial considerations. This was obviously not an objective obstacle to their use.

Furthermore, whether the technology of the product of the disputed trademark is patented or not should be a question of the sustainable protection of the relevant technology by patent rights, and it has nothing to do with the use of the disputed trademark. The plaintiff on the one hand asserted that they were unable to commercialize mass production and sell products with the disputed trademark due to the patent dispute procedures. On the other hand, they claimed that they continued to carry out research, market development, promotion and cooperative trial plans for products with disputed trademark, but these were not affected by the patent dispute procedures. It is obvious that the plaintiff has not mass-produced and sold the products bearing the disputed trademark based on their own factors. Since it is not objectively impossible to use the disputed trademark, it belongs to the voluntary strategic decision. Hence, it does not comply with the proper reasons of non-use according to Article 63.I.(2) of the Trademark Act.

Based on the existing evidence and information, it is not sufficient to prove that the plaintiff has proper reason of not using the disputed trademark on “Gel for protecting the rectum during prostate cancer radiation treatment” in class 5 within 3 years before the filing date of the revocation. It constitutes the violation of Article 63.I.(2) of the Trademark Act, so registration of the disputed trademark in class 5 should be cancelled.

Source: https://www.tipo.gov.tw/tw/cp-887-879800-b1b33-1.html


Patent

I. TIPO announced amendments to the Enforcement Rules of the Patent Act relaxing regulations for patent applications

Amendments to the Enforcement Rules of the Patent Act were announced on June 24, 2020 to relax regulations of patent applications and to improve the examination quality by encouraging public participation in the examination procedure. After amendment, applicants for invention patents can submit a sequence listing containing one or more nucleotides or amino acids in an electronic format prescribed by TIPO instead of submitting the sequence listing in written form. Also, the limitation that only after an invention patent application is laid open can a third-party observation be submitted is deleted. The key points of the amendments are as follows.

1. Applicants for invention patents can submit a sequence listing in an electronic format instead of in written form.

Before the amendments, Article 17.VI of the Enforcement Rules regulated that for an invention patent application that contains one or more nucleotides or amino acids, a sequence listing is a part of the specification and should be submitted in the written form by the applicant as a part of the duty for disclosure.

After the amendments, the applicant is allowed to submit the sequence listing in the electronic formats that are acceptable for TIPO, such as in TXT file or in a copyable PDF file, which releases the applicants from the duty of making a written copy.

2. Anyone can submit a third-party observation before the examination decision is rendered.

To promote public participation and improve examination quality, Article 39 of the Enforcement Rules regulates the mechanism of third-party observation. Before the amendments, it was regulated that a third party can submit a third-party observation after the application is laid open and before the examination decision is rendered. However, in the present examination practice, if an invention application and a utility model application for the same creation are filed simultaneously by the same applicant, before the invention application is laid open, a third party will be able to learn the technical contents of the invention application from the corresponding utility model patent. In such case, if a third party provides evidence proving that this invention application should not be granted, such evidence should also be allowed to be considered in the examination process by TIPO. Thus, this article is amended so that now anyone can submit a third-party observation as long as it is before the examination decision is rendered.

For more detailed information related to the third-party observation for invention patent application, please refer to our following article about the Guidelines for Third-Party Observation published by TIPO.

Source: https://www.tipo.gov.tw/tw/cp-86-878230-0c388-1.html

II. “Guidelines for Processing Third-Party Observations on Patent Applications” was implemented on September 01, 2020

To specify and clarify the third-party observation mechanism for invention patent applications that can help the examiners investigate evidence, improve the stability of the granted patents, and increase public participation of examination, TIPO prescribed “Guidelines for Processing Third-Party Observations on Patent Applications”. The key points of the guidelines are briefly introduced as follows.

1. The guidelines are prescribed to implement the regulation of Article 39 of the Enforcement Rules of the Patent Act and to provide a standard for the third-party observation by which before the examination decision is rendered, anyone except for the applicant of the invention application (hereinafter as “third party”) can submit a statement (hereinafter as “third-party observation”) if he or she deems that the invention shall not be granted.

2. The third party shall submit the third-party observation before the examination decision is rendered for an invention patent application.

3. The third party can submit the third-party observation on the ground that the invention patent application violates the regulations of Article 46 (grounds for decision of rejection) of the Patent Act and shall be rejected.

4. When submitting the third-party observation, the third party shall fill in the standard form for a third-party observation on an invention patent application, indicating the application number of the invention patent application and providing a list of the citing documents, arguments, and the related proving documents.

5. A third-party observation shall be submitted in written form or via the e-filing system of TIPO.

6. For a third-party observation related to an invention patent application with a utility model patent application for the same creation being filed by the same applicant, the indication of the application number of the invention patent application can be replaced by the application number of the published corresponding utility model patent application.

7. After examination, if it is deemed that the third-party observation is not clear, the contents, arguments, or proving documents are obviously not recognizable or unrelated to the application, TIPO may not dispose the third-party observation. The above provisions shall apply when the third-party observation is not submitted in accordance with the regulations, or when the invention patent application has been withdrawn or dismissed, or when the examination decision of the invention patent application has been rendered.

8. After the third-party observation is submitted, TIPO shall notify the applicant of the invention patent application of the submission of the third-party observation.

9. After the third-party observation is submitted, TIPO is not obliged to notify the third party of the disposal of the third-party observation and the examination decision of the invention patent application.

10. The list of the cited documents submitted with the third-party observation will be available on TIPO’s File Wrapper Search System for patent applications after the invention patent application is laid open or published.

Source: https://www.tipo.gov.tw/tw/cp-86-880698-8c060-1.html

IP FAQs

Differences Between NICE Classification and the Practice of TIPO in Classes 22 ~ 34

TIPO generally follows NICE classification of the designated goods and services. However, some descriptions of the designated goods and services in NICE classification are not acceptable in Taiwan because some of them are not definite enough under the present practice in Taiwan. We will continuously provide the list of descriptions in NICE classification which are not acceptable along with our suggestions of how to amend these descriptions in accordance with the regulation in Taiwan.

In our previous issues, we have introduced examples in Classes 1~21 NICE classification. Please be informed that all the descriptions of the designated goods in Classes 232829303233 and 34 of NICE classification are acceptable in Taiwan. Thus, in this issue, we provide the list of some examples in Classes 22, 24, 25, 26, 27 and 31 as below for your reference.

Nice (Indication of Goods)

Our suggestions

Class 22

nets*

This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “Twine for nets; Fishing nets; Hunting net; Nets for camouflage; Court fencing net; Rockfall prevention nets, not of metal; Purse seines; fan guard dust cover net mesh dustproof protection family kid baby finger protector safety; Clothes washing net; Net bag for rice washing and cooking; mesh bags for washing laundry; etc”.

network

Same as above.

ropes

This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “Hemp rope; Rope ladders; Packing rope; Nylon rope; Plastic rope; Mountaineering rope; Ropes, not of metal; Car towing ropes; etc”.

Class 24

textiles

This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “Woven lining; Linings [textile]; Filtering materials of textile; Fabrics for textile use; Textile material; tapestry [wall hangings], of textile; towels of textile; Tablemats of textile; Non-woven textile fabrics; Sheets [textile]; etc”.

substitutes for textiles

This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “Fiberglass fabrics, for textile use; Plastic material [substitute for fabrics]; etc”.

household linen

This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “Curtains; mattress covers; crib bumpers [bed linen]; Bath linen, except clothing; Diapered linen; Tick [linen]; Linen cloth; Table linen, not of paper; etc”.

Class 25

headwear

This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “cap [headwear]; caps being headwear; visors being headwear; etc”

sashes for wear

Please be informed that this item should belong to class 26 instead of class 25 under the practice in Taiwan.

Class 26

needles*

This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “Safety Pin; Hand Sewing Needle; Knitting needles; Knitting needles; Circular needle; Shoemakers' needles; Saddlers' needles; Pins; Entomological pins; Binding needles; etc”

Class 27

floor coverings

This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “Straw mat; Reed mats; Woven mat; Carpets; Door-rugs; beach mats; Rugs; Bath mats; Floor mats; Artificial turf; etc”.

vinyl floor coverings

This item is too broad to be accepted under the practice in Taiwan. The item should be amended into the standard description(s), such as “Plastic carpet; Plastic mat; Rubber mat; etc”.

Class 31

cannabis plants

Please be informed this item is illegal under the practice in Taiwan.

cannabis, unprocessed

Please be informed this item is illegal under the practice in Taiwan.

JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES

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

TEL: 886-2-25310876 FAX: 886-2-25812761

http://www.jaw-hwa.com.tw E-mail: jawhwa@jaw-hwa.com.tw

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