Taiwan IP Updates

 By Lyndon 

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IPR Statistics 2020

For the September to December period of 2020, the Taiwan Intellectual Property Office received a total of 19,389 applications for invention, utility model and design patents which was a 4% decrease compared to the same period in 2019.  Applications for trademark registrations, however, increased by 9% to 24,591 cases.  TSMC filed the most invention patents amongst domestic applicants.  In fact, domestic SME applications have been increasing for almost 3 years now, and in this period accounted for 72% of all domestic applications filed, indicating a strong drive to innovate and protect IP by local companies.  Another bright spot was the number of invention patent applications filed by domestic colleges which increased by 15%.  As for non-resident applications, Japan remained at the top with 2,989 invention patent applications, but the U.S. took the top spot in the non-resident category for trademark applications with 1,162 filed applications.

Policy on Domain Name Disputes

The registration of another’s trademark in a domain name has been an ongoing issue.  Litigants can use the Trademark Act to act against the unauthorized use of a trademarked name.  For those holders of rights to a top-level domain of .tw operating under contract with the Taiwan Network Information Center (TWNIC), another option is to file a TWNIC Domain Name Dispute Resolution proceeding.  The TWNIC has designated the Taipei Bar Association and the Science and Technology Law Institute at the Institute for Information Industry as the domain name dispute resolution service providers for any trial of domain name disputes.  A successful case will need to show the following: the domain name is identical or confusingly similar to the original, the alleged imposter has no rights or legitimate interests in respect of the domain name and that they have registered the name in bad faith.  A recent case in December 2020 against two registrants who tried to hijack the WeWork trademarks shows that the law works as it has been intended.

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Amendments to Guidelines for Design Patent Examination

An adjustment has been made to the regulation concerning design divisional applications.  Previously, if the drawings in the design application only disclosed one design applying to one object, a design divisional application could not be filed because the drawings did not explicitly and substantially disclose two or more designs.  With the new guideline, if the drawings as initially filed can cover two or more designs, the applicant may file a design divisional application for one or more designs clearly disclosed in the specification initially filed.  This removes an unnecessary rule that caused problems for applicants seeking a design divisional application.  Also, for design patent applications filed with computer drawings, it can now be stipulated that: “The subject design is represented by black and white photos (computer drawings) and the subject design does not claim the colors as shown in the drawings.”  A clarification has been made about disclosing design specifications and drawings.  Now, if a non-essential view is omitted in a design application, it will be regarded as forming no part of the claimed design.  Finally, real estate IP can now be patented such as a construction or an interior design or a bridge and is categorized as a design application.

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Mutual Recognition of Biological Materials Agreed between TIPO and KIPO

In Taiwan, the Ministry of Economic Affairs recently promulgated the Operational Directions Governing Mutual Cooperation between TIPO and KIPO in the Field of Deposit of Biological Materials for Purposes of Patent Procedure.  Now, repeated deposits in the country where the patent application is filed will no longer be necessary.  At present, the TIPO-designated depository is the Food Industry Research and Development Institute, while the KIPO-designated depositories are the Korean Collection for Type Cultures, the Korean Culture Center of Micro-organisms, the Korean Cell Line Research Foundation and the Korean Agricultural Culture Collection.  Similar arrangements between Taiwan and Japan in 2015, and Taiwan and the U.K. in 2017 mean that domestic manufacturers or research institutes with multi-country patent applications can choose one country for deposit based on the convenience of importing biomaterials and deposit procedures in the abovementioned countries.

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Non-Profit Use of Trademarks

The Supreme Administrative Court (SAC) recently clarified that use of a trademark is not based exclusively on paid or for profit activities. In Article 5 of the Trademark Law, the use of a trademark for marketing purposes is defined as:

1. Applying a trademark on goods or the packaging thereof.

2. Possessing, displaying, selling, exporting or importing the goods mentioned above.

3. Applying a trademark on articles relating to services provided.

4. Applying a trademark on commercial documents or advertisements relating to goods or services provided.

Now, the concept ‘in the course of trade’ as defined in Article 16.1 can be considered as having the same meaning and implications as ‘marketing purposes’ in Article 5. This ruling will be especially significant to nonprofit organizations who need trademark protection in Taiwan. Such nonprofit organizations now no longer need to worry about their trademark registrations being cancelled due to non-use.

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Amendments to the Program for Hearing Patent Invalidation Cases

Point 4 of the Program for Hearing Patent Invalidation Cases has been changed to prevent continuous submission of litigant documents that change the reason for the allegation and cause disputes during the hearing process.  Concerning forwarding relevant documents or evidence, Point 4 states: 'Before announcement of the hearing, TIPO shall forward the relevant documents or evidence submitted legitimately by either party to the other party; from the announcement of the hearing to the 10^th day of the hearing date, either party can only submit written statements or statements on the import of the argument according to the matters listed in the notice of the hearing and must send them to the other party simultaneously.  The written statements or debates for the hearing submitted by the invalidation party that change the provisions or specific facts or the relationship between the respective facts and the evidence asserted originally by the invalidation action shall not be considered in accordance with the Patent Act.¡¦  This amended rule is intended to enhance the decision-making process and more closely follow the spirit of Articles 73 and 74 of the Patent Act.

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