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16

MAR

2020

NEWSLETTER March 2020

Copyright

  1. Draft Amendments to Copyright Act

Given that some regulations of the Copyright Act are deemed out of date, the specific authority for Copyright Act proposes to make further amendments to comply with the latest trends. For example, the development of digital transmission blurs the boundary of the way of use and the range of protection of the copyright, which may cause controversy. Also, the regulations of the copyright are not clear enough in the light of the judicial practice, and the protection of the rights of the copyright owner is not thorough enough. Further, the infringement of the copyright cannot be restrained effectively, which also needs to be further adjusted.

We conclude the main points of the draft amendments to the Copyright Act as follows.

    1. The definitions of “public broadcasting”, “public transmission” and other intangible use will be amended.

In recent years, there are rapid changes in the new techniques for the Internet, digital transmission, cloud technique, electronic books, and internet TV. The intangible use gradually becomes the core of the Copyright Act. Because the development of digital transmission blurs the boundary of the way of use and the range of protection of the copyright, the definitions of “public broadcasting” and “public transmission” should be amended. As to the development of the Internet and transmission equipment, the regulation related to “public retransmission” is added. Also, “public recitation” will be incorporated into "public performance", and the definitions of “public performance” and “public presentation” will be amended for clarity and simplicity.

    1. The reasonableness of the Copyright ownership

Currently, Articles 11 and 12 of the Copyright Act respectively indicate: "Where a work is completed by an employee within the scope of employment, such employee is the author of the work. …” and “Where a work is completed by a person under commission, …, such commissioned person is the author of the work. …

Because the current regulations lack flexibility and do not comply with the actual need of the society, to meet the principle of Freedom of Contract, both articles will be amended so that there can be a more flexible arrangement between the employee and the employer or between the commissioned person and the commissioning party.

    1. The moral rights of the author will be amended to promote the circulation of the works.

Based on the current regulation in Article 15, the author of a work shall enjoy the moral right to publicly release the work. However, performances are usually made based on the consent of the performer to publicly release the work, so that there is no question to “public” release or not. Thus, Article 15 will be accordingly amended to exclude the performer’s right of public release. The definition of “public release” in Article 3 will also be amended.

    1. Multiple articles related to Limitations on Economic Rights will be amended.

The current regulations for the fair use of the copyrighted work is inadequate in this digital age. In the proposed amendment, new regulations are added for the fair use of long-distance courses of schools and the fair use of on-line digital libraries. Also, other articles related to limitations on the economic rights are amended to relax the applicable conditions.

    1. The regulation to the compensation for damages will be amended.

Based on the current Article 88.II of the Copyright Act, the injured party should prove damages. However, as copyright is intangible property, it is often difficult to calculate actual damages. Article 88 thus will be amended that the injured party can choose to calculate compensation based on the licensing fee, or it may alternatively request that the court sets compensation at an amount of not less than ten thousand and not more than one million New Taiwan Dollars.

    1. Multiple articles related to penal provisions will be amended.

The criminal penalty in the current Copyright Act has the problem of unbalance between crime and punishment. For example, although there are penalty regulations for distributing genuine products without authorization and distributing pirated products in the current Copyright Act respectively, the severity of the penalty has only minor differences that do not comply with society’s expectations. Thus, the criminal penalties for distributing genuine products will be deleted and only the civil remedy will remain. Also, the distribution of parallel import products will be decriminalized and only the civil remedy will remain.

Source: https://www.tipo.gov.tw/tw/cp-85-863657-327fd-1.html

  1. Advice for Copyright Owners to Protect Copyright in Taiwan

The copyright registration system was abolished in a Copyright Act amendment promulgated on January 21, 1998, and the government agency in charge of copyright matters has ceased accepting copyright registrations since January 23, 1998 in Taiwan.

In principle, a work has been protected by copyrights as soon as it is completed. Because Taiwan became a member of the World Trade Organization (WTO) on January 1, 2002, under the WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), member countries are obligated to protect works of the nationals of other members. Therefore, a new work is entitled to the protection of copyrights in Taiwan due to the reciprocal principle.

Since copyrights are private rights, copyright owners have to bear the burden of proof of the existence of their rights when a dispute or lawsuit occurs. If the copyright owner worries that it’s difficult to prove ownership of copyrights, there are several ways for the copyright ownersto secure additional copyright protection as below.

  1. The copyright owner signs a Statutory Declaration (SD) testified by a lawyer or a Notary Public in the country where the copyright owner lives. In this way, should evidence be needed in Court, the SD can be produced as prima facie evidence (evidence at first sight, until rebutted by the other party) to prove that copyright subsists with the copyright owners.
  2. The copyright owner has the copyrights recorded in the countries where there are official copyright registration systems.
  3. The copyright owner has copyrights recorded in a private organization. There are several private organizations in Taiwan providing recordation services and the charges may not be the same. However, since the copyright certificate issued by a private organization is deemed as a private document, it would have the limited evidentiary weight in the court.
  4. The copyright owner can require a local legal attorney to issue a Legal Attest Letter indicating the information of the copyrights. The Legal Attest Letter will go through the Post Office and then come back to our firm. The Post Office will keep one copy thereof. When there is a dispute on the copyrights, the Court can check the copy of the Legal Attest Letter deposited in the Post Office. In our opinion, the evidentiary weight would be better than the private document produced by a private organization.

All the foregoing ways are auxiliary methods only and what they can prove are:

  1. the date when the SD and the work are testified by a lawyer or a Notary Public;
  2. the work has existed at the moment when any of the foregoing ways is conducted; and
  3. The copyright owner declares that they are the true copyright holder of the work, so they are presumed to be the true copyright holder of the work as declared.

Therefore, the most important matter is still that the copyright owners preserve and keep material from the creative process or release of a work or other material relating to their rights to a work, to serve as evidence of their rights.

Patent

Draft Amendment to Article 60-1 of the Patent Act

To push ahead with Taiwan’s participation in the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), and also to coordinate with the patent linkage system regulated in the Pharmaceutical Affairs Act, the Patent Act should be adjusted accordingly. As the patent linkage system regulated in the Pharmaceutical Affairs Act has already been implemented on August 20, 2019, there is an instant need for the amendment to the Patent Act to complete the related regulations. Thus, a draft amendment to Article 60-1 of the Patent Act was proposed.

In the patent linkage system, firstly, the patentee of the new drug shall disclose all related information of the patent rights of the new drug. When a generic drug permit is applied, whether the generic drug permit can be obtained is essentially linked to whether the generic drug infringes the patent rights of the new drug. In such a way, the potential infringement disputes can be clarified in the process of examination of the generic drug permit.

In the draft amendment to the Patent Act, for those who applies for a generic drug permit with a declaration of not infringing the patent right of the new drug or the invalidity of the patent right of the new drug, the patentee of the new drug may file an infringement lawsuit in the examination procedure of the generic drug permits. If the patentee of the new drug does not file an infringement lawsuit, the applicant of generic drug permits may instead file a request for a declaratory judgment (Amended Article 60-1).

Draft Amendment

Article 60-1

If an applicant for a drug permit has made a declaration related to the published patent rights of the permitted new drug in accordance with Paragraph 4 of Article 48-9 of the Pharmaceutical Affairs Act, after receiving the declaration, the patentee may request to stop or prevent the infringement pursuant to Paragraph 1 of Article 96 of the Patent Act.

Where the patentee fails to bring a lawsuit against the applicant in the preceding paragraph within the period specified in Paragraph 1 of Article 48-13 of the Pharmaceutical Affairs Act, the applicant may file a request for a declaratory judgment as to whether the drug for which the drug permit is applied infringes the patent right.

Source: https://www.tipo.gov.tw/tw/cp-85-859330-1189b-1.html

Trademark

Revocation Against the Trademark “Angelina and Device”

  1. Facts

The plaintiff filed an application for the trademark “Angelina and Device” to the defendant (the Intellectual Property Office of the Ministry of Economy) and was approved with Registration No. 00650036 (hereinafter referred to as “the disputed trademark”). The participant filed the revocation against the disputed trademark on the ground of the violation of Trademark Act Article 63 I (ii). After examination, the defendant judged that the disputed trademark should be revoked. The plaintiff refused to accept it and filed a petition of Appeal. After the dismissal of the Appeal, the plaintiff still refused to accept it, and then filed an administrative lawsuit. The court revoked the appeal decision and the original administrative action, and the defendant and the participant filed an appeal. The Supreme Administrative Court decided that there were no mistakes in the previous trial decision that the disputed trademark has been used on "cakes" within three years before the application for revocation. Therefore, the previous trial decision to overrule the appeal decision and the original administrative action that “ the registration of the disputed mark on “cakes” shall be revoked" will be maintained. The appeal of the defendants and participants has been rejected.

Fig. 1: The disputed mark

(Registration No. 00650036)

Class 24 (under the previous Act)Crystallized fruits, Candy, Biscuits, muesli, Bread, Cakes

Fig. 2: The actual mark in use

  1. Defining the issues in this case:

ISSUE: The plaintiff has used the disputed trademark on "cakes" within 3 years before the participant filed the revocation on September 25, 2014. Whether the use of the disputed trademark on “cakes” can also be regarded as the use of the disputed trademark on “Crystallized fruits, Candy, Biscuits, muesli, Bread”?

  1. The actual mark in use and the disputed mark have the same identity

The disputed trademark is a slightly designed English word, Angelina, and the letter "A" is composed of the side view of a lady in a hat with a hollow design as shown in Figure 1. The plaintiff actually used the mark Angelina with the letter “A” consisting of the side view of a lady wearing a hat with a hollow design that further outlines the decoration of the hat and the hair in detail, as shown in Fig. 2. When observing the overall impression of the disputed trademark, the slightly designed Angelina word is impressive to become the main identifying feature so that it is the focus to attract consumers’ attention. The plaintiff did not substantively change the main feature in the actual use of the mark and thus will not affect the identity of the disputed trademark according to the general concepts in the society. Therefore, the disputed trademark should still be deemed to be used.

  1. When the trademark owner has provided evidence of use of some goods or services, although evidence of other goods or services with the same nature has not been submitted, they should also be regarded as having been used.

If the trademark owner has submitted evidence of use of some goods or services, the other goods or services with the "same nature" may be deemed to have been used even if the owner has not submitted related evidence.

The so-called "same nature" goods or services can refer to the goods or services classified by the TIPO's 6-digit classification of the goods or services (for the groups that do not contain 6 digits, it should be based on the 4 digits instead). The designated goods/services with the same 6 digits should be regarded as the same nature of goods/services. However, if the judgement based on the 6 digits is not appropriate in specific case, it can be determined after considering the objective facts such as the use, function, material, process, or production of the goods or services and the type of production and marketing actually operated by the trademark owner. If the nature of the goods or services is determined to be different, the goods or services may still be considered unused and the trademark should be revoked.

  1. Whether the goods or services of the "same nature" should be determined according to the general concepts in the society and the market transactions.

The disputed trademark is used on "cakes". “Cakes” and "biscuits, muesli, bread" are both classified under the "300602" subgroup. Also, "biscuits, muesli, bread" and "cakes" are both produced by the pastry baking industry. The materials are all flour (rice) and the making processes are very similar. Also, "biscuits, muesli, bread" and "cakes" in the business trade practices are highly overlapping. For the same trader, these goods can be produced from existing materials at any time to supply to relevant consumers. The needs of relevant consumers are also the same. According to the general concepts of society and market transactions, these goods should be regarded as goods of the same nature.

As for “crystallized fruits", it is classified under the "290802" subgroup, and "candy" is classified under the "300601" subgroup, which are all different from “cakes” that is classified under "300602" subgroup. “Crystallized fruits" are made from the raw materials like plums, peaches, apricots, pears, dates, white gourds, ginger or nuts, etc., which are processed by pickling with sugar or honey. Sugar is the main ingredient of “candy” and it is made by boiling sugar at a high temperature. Comparing "cake" with “crystallized fruits" and “candy”, they are different in raw materials, making processes or actual production and sales types and suppliers. Thus, they are not goods of the same nature with “cakes”.

To sum up, the plaintiff used the disputed trademark on "cakes" within 3 years before the filing date of the revocation. It should be considered that the disputed trademark was also used on "biscuits, muesli, bread", which are of the same nature with “cakes”, but not on “crystallized fruits” and “candy", which are of different nature. Thus, the disputed trademark was used on "biscuits, muesli, bread", and there is no reason to revoke on the ground that “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". However, as to the designated goods “crystallized fruits” and “candy”, the disputed trademark should be revoked on the ground that “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”.

  1. Except for the definite part of the appeal decision and the original sanction, the part that " “Angelina and device” Registration No. 00650036" used on the "biscuits, muesli, bread" should be revoked” should be overruled.

Source: https://www.tipo.gov.tw/tw/cp-85-803408-0ff13-1.html

IP FAQs

Differences Between “NICE Classification” and “the Practice of TIPO” in Class 11

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 1~9 NICE classification. Please be informed that all the descriptions of the designated goods in Class 10 of NICE classification are acceptable in Taiwan. Thus, in this issue, we provide the list of some examples in Class 11 as below for your reference.

Nice (Indication of Goods)

Our suggestions

Class 11

burners

Please be informed this item is too broad to be accepted under the practice in Taiwan. The item should be specified into the standard description(s), such as “Burners for lamps; Incandescent burners; Gas burners; Alcohol burners; Oil burners; Petrol burners; Oxhydrogen burners; Germicidal burners; Vaporizing oil burners; Laboratory burners; etc”.

chromatography apparatus for industrial purposes

Please be informed that this item is not acceptable in class 11 under the practice in Taiwan. However, the TIPO accepts “Chromatography apparatus for laboratory use” in class 09.

cooking utensils, electric

cookers

Please be informed these items are too broad to be accepted under the practice in Taiwan. These items should be specified into the standard description(s), such as “Electric heating bowl; Electric hot pot; Deep fryers, electric; Electric chafing warmer; Electromagnetic frying pan; Electromagnetic cooker; Electric frying pan; Electric stewpot; etc”.

cooking apparatus and installations

Please be informed this item is too broad to be accepted under the practice in Taiwan. If the item is relating to "Electric cooker" and "Gas burner", it should be classified in class 11. If the item is relating to "Pots" and "bowl", it should be classified in class 21.

deodorizing apparatus, not for personal use / deodorising apparatus, not for personal use

Please be informed that these items are not acceptable under the practice in Taiwan. These items should be specified into the standard description(s), such as "Deodorizer for drinking fountain; Air sterilizers and deodorizer; Deodorizer for sewage treatment; Scented air purifier; etc".

desiccating apparatus

Please be informed these items are too broad to be accepted under the practice in Taiwan. If the item is relating to "Drying apparatus for photographic prints", it should be classified in class 9. If the item is relating to "Air dryer ", it should be classified in class 11.

drying apparatus

drying apparatus and installations

heaters for vehicles

Please be informed this item is not definite enough under the practice in Taiwan. The item should be specified into the standard description(s), such as "Heating apparatus for defrosting vehicle windows; Air reheaters; Vehicle cold and warm air conditioner; Transportation heater; etc".

heating installations [water]hot water heating installations

Please be informed these items are not definite enough under the practice in Taiwan. These items should be specified into the standard description(s), such as "Water heaters; Heaters for baths; Electric water heater; Sun energy water heater; etc".

heating apparatus, electric

Please be informed that this item is not acceptable under the practice in Taiwan. We suggest amending this item into the broader and standard description(s), such as “heating apparatus; Heating installation”.

hot air bath fittings

Please be informed this item is not definite enough under the practice in Taiwan. We suggest amending this item to the standard description “Feeding apparatus for heating boilers”.

lighters*

Please be informed this item is not definite enough under the practice in Taiwan. We suggest amending this item to the standard description(s), such as “Gas lighters; Electronic ignition gun”.

oven fittings made of fireclay

Please be informed this item is too broad to be accepted under the practice in Taiwan. It should be specified into concrete ones.

pipes [parts of sanitary installations] / water-pipes for sanitary installation

Please be informed these items are not definite enough under the practice in Taiwan. These items should be specified into the standard description(s), such as "Safety accessories for water pipes; Regulator for water and pipes; Regulating accessories for water and pipes; etc".

radiators [heating]

Please be informed this item is not definite enough under the practice in Taiwan. The item should be specified into the standard description(s), such as "Radiators, electric; Warming machine; Cold and warm air heating radiator; etc".

sanitary apparatus and installations

Please be informed this item is too broad to be accepted under the practice in Taiwan. The item should be specified into the standard description(s), such as “Exhaust fume processor; Sewage and sludge purifier; Waste water processor; Waste water filtering processor; Exhaust fume installation; Purification installations for sewage; etc”.

water distribution installations

water supply installations

water intake apparatus

Please be informed these items are too broad to be accepted under the practice in Taiwan. These items should be specified into the standard description(s), such as “Level controlling valves in tanks; Water apparatus; Safety accessories for water pipes; Mixer taps for water pipes; Regulator for water and pipes; Regulating accessories for water and pipes; Regulating accessories for water apparatus; Safety accessories for water apparatus; etc”.

water conduits installations

Please be informed this item is too broad to be accepted under the practice in Taiwan. If the item is relating to "Drain pipes of metal ", it should be classified in class 6. If the item is relating to "Overflow for bath fitting", it should be classified in class 11. If the item is relating to "Drain pipes, not of metal", it should be classified in class 19.

water filtering apparatus

Please be informed this item is too broad to be accepted under the practice in Taiwan. The item should be specified into the standard description(s), such as “Faucet filter; Filters for drinking water; Waste water filtering processor; etc”.

watering installations, automatic

Please be informed this item is too broad to be accepted under the practice in Taiwan. If the item is relating to "Fire extinguish auto sprinkler", it should be classified in class 9. If the item is relating to "Automatic emitting device", it should be classified in class 11. If the item is relating to "Aerosol dispensers, not for medical purposes", it should be classified in class 21.

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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