Taiwan IP Updates  ¡V October 2023

By Lyndon 

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Taiwan Clamps Down on Use of Revoked Patent Numbers

The Taiwan Fair Trade Commission has fined a company for using an invalid patent number on its product.  The Song Yang Technology Company was fined because they displayed a patent number next to their product on the e-commerce platform on line and also marked the number on the physical product as well.  The product, an eco-friendly style indoor slipper, had previously had the patent right rejected by the Taiwan Intellectual property Office, so the company was fined.  According to provisions in Article 88 of the Taiwan Patent Act, the patent certificate number shall be marked on the patented article.  If such marking cannot be fixed on the patented article, the patentee may make such marking on the labels or packaging, or make such marking in a distinct way sufficient to draw people’s attention.  Where no patent marking is made, evidence shall be produced when claiming damages to prove that the infringer knows or has a reason to know that the said article is under patent protection.  Thus, it can be seen that, although patent marking is not compulsory, it can reduce the burden of proof for patentees when claiming damages and could help when claiming damages for willful infringement.  Also, Article 21 (1) of the Taiwan Fair Trade Act stipulates that no enterprise shall make use of false or misleading representations or symbols on the matter that is relevant to goods and is sufficient to affect trading decisions on goods or in advertisements, or in any other way make it known to the public.  Violators can be assessed to pay a fine of no less than NT 50,000 dollars and no more than NT 25,000,000 dollars.

Taiwan Proposes Changes to the Trademark Act

The Taiwan Intellectual Property Office (TIPO) has proposed a draft Amendment to the Trademark Act which is currently being deliberated on by Taiwan’s Congress.  A change to the opposition and invalidation process by consolidating it into a single procedure is currently being considered.  Some of the main points are as follows:

1. The qualification and grounds for filing an invalidation action will be relaxed and therefore any party is entitled to file an invalidation action based on any absolute non-registrable grounds stipulated in the Trademark Act.
2. A Trademark Trial and Appeal Board (TTAB) will be set up within the TIPO to examine invalidation cases on the basis of a complete adversary system and through oral hearings.  When a party appeals the TTAB’s decision, it will be the opposite party rather than the TIPO to be named the defendant, and the appeal will be heard by the IP & Commercial Court (the IPC Court).  This will streamline the current system and be less costly to the relevant parties.
3. The Taiwan IPC Court will be the centralized forum dedicated to solving IP disputes, and will exercise both first instance and appellate jurisdictions in terms of civil IP lawsuits. 
4. The Examiner is not obliged to reply to any third party observation, but the third party still has the right to file an invalidation action against the trademark once it is registered.

Taiwan Issues New Examination Guidelines for Trademark Disclaimers  

The Taiwan Intellectual Property Office (TIPO) published the new Examination Guidelines for Trademark Disclaimers on May 31, 2023.  The new Guidelines became effective on August 1, 2023.  Here are some of the highlights:

1. To determine whether a disclaimer is necessary depends on whether the non-distinctive elements in the trademark is likely to give rise to doubts as to the scope of the right.  If consumers or competitors have doubts about whether an element is distinctive or not and whether that combination of words is descriptive of the goods or services, it will give rise to whether a disclaimer is needed.
2. For a non-distinctive mark that is neither descriptive nor a generic name and is also widely adopted by businesses, if it is deemed non-distinctive, a disclaimer is required in order to prevent the applicant from mistakenly believing they may claim the exclusive right to such a mark.  Those phrases that are well-known in the marketplace do not require a disclaimer as consumers will not have doubts as to whether such phrases have acquired trademark right.
3. A disclaimer is necessary for a set of two or more Arabic numerals, model numbers or notations that are deemed non-distinctive.  However, this does not apply to especially significant numbers that, for example, denote good luck or good fortune.