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10

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2020

Newsletter November 2020

Patent
Main Points of Amendments to Guidelines for Design Examination in 2020
The newly amended Guidelines for Design 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 examination, TIPO decided to amend some chapters of the Guidelines for Design 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 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 graph design may be applied; and (V) others.
In this issue, we will introduce topics (I) and (II) of the main points.
(I) Relaxing the requirements for disclosing design specifications and drawings.
Based on the current regulations in Taiwan, drawings of a design application shall fully disclose all views of a design. Only when the views are merely duplicated, in symmetry of other views of the design or based on other reasons, the views may be omitted from the drawings if the specification makes this explicitly clear. As to the “other reasons”, it in principle only applies to views which do not have specific feature and will not be noticed by consumers. Under examination, it is often controversial to determine whether the omitted views meet the requirements of the “other reasons”. Further, once the views are omitted based on the “other reasons”, the effect is the same as the portions that form no part of the claimed design in partial designs.
Thus, the amendments of the Guidelines in 2020 will relax the requirements of the disclosure of the drawings based on the concept of the partial design to solve the dispute. In other words, if views are omitted in a design application, they do not have to meet the above-mentioned requirements anymore. Once there are views not to be disclosed in a design application, they will be regarded as the portions which form no part of the claimed design, and the applicant does not have to specify the same in the specification.
Example:
Amended contents Current contents
  1. Views in a design application should fully disclose all claimed content of the design.
  2. Views that are not disclosed in the drawings will be regarded as “portions form no part of the claimed design”.
  3. If a design comprises a portion which forms no part of the claimed design, it should be specified in the specification. However, details that are not disclosed in the drawings (the omitted parts), in principle, do not need to be specified in the specification.
  4. Taking the above design as an example, the rear view is not disclosed. Thus, the content of the rear view should be deemed to be a portion that forms no part of the claimed design.
  5. If the views are not sufficiently disclosing the claimed design, or cannot clearly define the range of the “parts to be claimed”, since the examiner cannot judge the actual content with insufficient disclosure, the design will be deemed not being able to carry out.
  1. Views in a design application should comprise all views of the design.
  2. If a design comprises a portion which forms no part of the claimed design or omits any view, it should be specified in the specification.
  3. Taking the above design as an example. Because the rear view does not have any feature, it can be omitted.
  4. If the omitted view leads to the insufficiency of the design content, other views should be submitted to allow a person with ordinary skill in the art can understand the content and carry out the design.
(II) Clearly defining the design of constructions and interior design as protected objects of design applications
Based on the regulations of Design Guidelines in 2005, a design must be a fixed type of personal property that can be independently traded by consumers but not a design of real estates, such as constructions like houses or bridges or interior design or gardens. This regulation has been deleted in 2013 during the amendments of the Patent Act, and TIPO announced that design patents did not limit to personal property which can be independently traded. However, it comes often to the question of whether a real estate such as a construction or an interior design belongs to the object of a design application or not. Thus, the amendments of the Guidelines in 2020 will clearly define the designs of constructions, interior designs and bridges may be the object of a design application.
As indicated in point (I), if there are views which will be omitted in this kind of design application, the parts that do not disclose in the views will be deemed to be the portions which form no parts of the claimed design as well.
…to be continued
Source: https://www.tipo.gov.tw/tw/cp-85-881881-d8fd4-1.html


Trademark
Use of a Trademark on Goods of Subordinate Concept Will be Considered Sufficient Use on Goods of Superordinate Concept Thereof
Trademark at issue: Reg. No.01583371
Designated Goods:
[Int’l Class 08]
Hand tools, hand-operated;
Taps [hand tools];
Spanners [hand tools];
Hand-operated nail guns;
Wrench set;
Lifting jacks, hand-operated;
Ratchets [hand tools];
Perforating tools [hand tools];

Screwdriver bits;
Saws [hand tools];
Compound spanners;
Other locking hand tools;
Hand-operated socket wrenches;
Metal band stretchers [hand tools];
Screw-thread cutters [hand tools];
Gouges [hand tools]
The Case
The Plaintiff filed a revocation application with the Taiwan Intellectual Property Office (TIPO) against the trademark at issue “ifixit” (Reg. No.1583371) in 2016 based on the ground of Article 63 I (2) of Trademark Act, i.e. the trademark has not yet been put to use on the designated goods or such use has been suspended for a continuous period of not less than three years without proper reasons for non-use.
The trademark registrant (also “the intervening party” in the administrative litigation) filed a response with the evidence of use for the product “SDS quick-release connector” against the revocation. The TIPO deemed that the nature of “SDS quick-release connector” was equivalent to the nature of all the designated goods so the trademark at issue should be regarded as having been used. Therefore, the TIPO made a disposition to overrule the revocation application after the examination.
The Plaintiff was not satisfied with such disposition and thus filed an administrative appeal up to the TIPO’s superior institution, the MOEA, but failed in the administrative appeal. Then, the Plaintiff carried on the relief procedure to file administrative litigation up to the IP Court.
The IP Court determined that the trademark at issue should be partially revoked because the ground for revocation existed in the rest of the designated goods (subordinate items) of the trademark at issue except “hand tools, hand-operated” (the superordinate goods).
The IP Court’s Viewpoints
1. With reference to the judgment made by the Supreme Administrative Court, No.163 of 2017, from the perspective of the Trademark Act, whether a trademark is in use and whether the use thereof constitutes grounds for revocation under Article 63 of the Trademark Act are matters related to registered trademarks and their designated goods or services. Further, attention should be paid to whether the range of the goods or services on which a trademark is put to actual use conforms to the designated goods or services. On another note, the general concept, the superordinate concept as well as the subordinate concept of the goods or services should also be considered. A trademark put in use on specific goods (the subordinate concept) will be deemed sufficient use of the superordinate goods or services. On the contrary, it shall not be applicable.
2. In the subject case, the applicant submitted the evidence of use for the product “SDS quick-release connector”. “SDS quick-release connector” is the subordinate goods of “hand tools, hand-operated” (the superordinate concept of goods) and therefore the trademark at issue can be deemed having been put in use on the goods “hand tools, hand-operated”. However, the other 15 designated goods are also the subordinate goods of “hand tools, hand-operated” but are not equal to “SDS quick-release connector”. Thus, the evidence of use of “SDS quick-release connector” cannot prove the use of the rest of the designated goods. The registrant failed to submit the evidence of actual use for the rest of the 15 designated goods and consequently the trademark at issue should be partially revoked.
We herewith list some other examples of sufficient use on superordinate terms for extra reference:
Goods registered
(Superordinate term)
Goods actually in use
(Subordinate goods)
Class 03 Cosmetics compact foundation
Class 11 Air conditioning equipment Air conditioning box
Class 12 Bicycle parts and components Bicycle chain
Motorcycle parts and components
Driving chains for land vehicles
Cycle chains
Class 17 Adhesive bands, other than stationery and not for medical or household purposes Duct tapes
Class 33 Alcoholic beverages, except beer champagne
Class 36 banking services issuance of credit cards
Source: https://www.tipo.gov.tw/tw/cp-887-881824-0f8e1-1.html


IP FAQs
Patent filing
Q1: We haven’t yet decided on an applicant when filing the new patent application. Can we leave the applicant’s information blank when filing and submit the applicant’s information after filing?
When filing a Patent application, the applicant should be clearly indicated on the application form. Lack of the applicant’s information, the patent application will not be accepted under the practice in Taiwan since it is not unable to confirm whether the applicant is corresponding to the subject of the intention and the efficacy in the application form. However, if the applicant’s information is provided before the dismissal decision is served, the date on which the applicant is provided shall be regarded as the filing date.
Exception: (Examination Guidelines of Patent 1-5-1)
If the relevant documents submitted at the time of filing are sufficient to determine the applicant, the filing date of the patent application will be unaffected even though the applicant's name is not indicated in the application form. However, the application form with the completed information should be provided within the specified time period as stated.
For example, only the foreign name of the applicant is stated in the application form without the Chinese translation/transliteration, or the applicant's name is not complete but can be recognized, or the applicant’s name has been indicated in the relevant documents of proof submitted with the application form when filing.
Q2. May I file a patent application in a foreign language? What kind of a foreign language will be accepted by the TIPO?
Yes, you can file a patent application with the required documents in English. While the description, claim(s), abstract and the drawing(s) are filed in a foreign language, the Chinese translation thereof must be provided within the time period specified by the TIPO. And, only the following foreign languages will be accepted, Arabic, English, French, German, Japanese, Korean, Portuguese, Russian, or Spanish.
Q3. Is this acceptable to file a patent application in Simplified Chinese?
Yes. The description, claim(s), abstract, and the necessary drawing(s) can be filed in Simplified Chinese. As long as the Traditional Chinese thereof is provided within the time period specified by the TIPO, the filing date shall be the date on which the Simplified Chinese version is originally filed. If the Traditional Chinese translation is not provided within the aforesaid time period, the patent application shall be dismissed under the practice in Taiwan. However, if the Traditional Chinese translation is provided before the dismissal decision is served, the date on which the Traditional Chinese translation is provided shall be regarded as the filing date.
Trademark filing
Q1. Can a trademark application be filed in the name of a branch office of a foreign company in Taiwan?
No, because a branch office does not have an independent legal personality, it should not be an entity capable of exercising obligations and rights. Hence, a trademark application should be filed in the name of the headquarters.
Q2. Can an establishing company apply for a trademark application for registration in the name of the company's preparatory office?
Yes, an establishing company is considered to be the predecessor of the founded company in practice, and both of the companies refer to the same entity. However, the company registry must be supplemented after the company is registered, and the change of the applicant's name should be made.
Q3. What’s the difference between a trademark registered in greyscale and in colours?
In principle, the mark should be filed based on the actual use of the mark or the mark to be used. If the color of actual use of the mark will be changed according to different circumstances and the trademark is registered in grayscale or single color but the registrant uses the mark with colors, the registered trademark can be considered to be in use as long as the main features used to identify the registered trademark is not substantially changed. If a trademark registered is a combination of two or more colors (i.e., colored mark), and the colors are the main features of the trademark, but the registrant uses the mark in grayscale or other colors, it is most likely that the impression of the consumers identifying the source has been changed according to the general social concepts and consumers’ perceptions. Then, the mark cannot be considered to be in use.

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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