2017 EU-Taiwan Seminar on Industrial Designs and Trademarks
2017 臺歐設計專利及商標研討會

Taipei, 26 September -
Note: This is an abridged version. To read the full report, please click HERE.

Organisers

Taiwan Intellectual Property Office (TIPO)
European Economic and Trade Office (EETO)
European Business and Regulatory Cooperation (EBRC)

Guests of honour

Mr Thomas Jürgensen, Deputy Head, EEETO
Ms Hong Shu-min (洪淑敏), Director-General, TIPO

Speakers

Mr Hsu Chia-hung (徐嘉鴻), Patent Examiner, TIPO
Mr Yeh Che-wei (葉哲維), Technical Examination Officer, Intellectual Property Court
Ms Liu Chen-chen (劉蓁蓁), Director, Trademark Affairs Division, TIPO
Mr Günther Marten, IP attaché, EU Delegation in Beijing
Ms Lin Hsin-jung (林欣蓉), Judge, Supreme Administrative Court

Opening remarks

In her opening remarks, Ms Hong began by highlighting how Taiwan’s design industry has come of age. Citing statistics of award-winning products she said that Taiwan is increasingly being recognised as having shifted from being known for products “made in Taiwan” to products “designed in Taiwan”. Given their high value, creative products and brands require strong protection of intellectual property. She said that TIPO is working continually on optimising IP regulations and practices to create a better IP protection environment for business. She acknowledged that the EU has always been an important business partner for Taiwan. She pointed out that the organization of EU-Taiwan IPR seminars every year not only provides a good understanding of international markets but is also expected to encourage the development of IP regulations and exchange of best practices.   

In his remarks, Mr Jürgensen pointed out that the EU has harmonised industrial design protection across EU countries and introduced the Community design system that offers unitary protection across the EU through a single procedure. He noted that design-intensive industries play a vital role in the EU economy, generating an estimated 12.2% of EU employment and 12.8% of EU GDP in 2013. In addition, design is increasingly recognised as key to bringing ideas to the market and transforming them into user-friendly and appealing products or services. He pointed out that in Europe, trademarks can be registered at the national level as a national trade mark or at EU level as a European Union trade mark and that the European Commission continually monitors the trademark system in the EU to identify ways to improve its effectiveness and accessibility for businesses.


Session 1: Examination of legal regimes and practices on the invalidity of industrial designs in Taiwan

Topic: An overview of design patent invalidation examination guidelines in Taiwan

Speaker: Mr Hsu Chia-hung (徐嘉鴻), Patent Examiner, TIPO

Mr Hsu gave insights gleaned from work in his position where he is responsible for the examination of design patents.

He began by describing examination and dispute procedures. The process starts with the application, which is examined and either accepted or rejected. For those applications that are rejected, the applicant may re-apply. If the patent is granted, it may be challenged and rejected if grounds for invalidation provided by challenging parties are considered sufficient. The onus is on the challenging party to provide sufficient reasons. For cases where the patent has been rejected on this basis, the applicant may appeal, first to the TIPO, then the IP Court and finally the Supreme Administrative Court. Patent holders may take cases of infringement disputes to district courts or the IP Court.

Looking at figures for design patent applications over past five years shows an average rejection rate of less than 10%, although it was slightly above this level in 2014 and 2015 following a revision to the law in 2013. The rejection rate fell back to below 10% in 2016. The change in law also resulted in a higher number of re-examinations in 2014 and 2015, which fell again in 2016. The average re-examination period in 2016 was 11.03 months. 

Once a patent application has been granted it may be challenged during the public review period or any time before the expiration of the patent. There are six grounds for invalidation:

1. The patentee is not the person entitled to apply for a patent

2. The patent does not meet the definition of design

3. Lack of the requirements for industrial applicability, novelty and creativeness

4. Statutory exclusion from patentability

5. The drawings do not fully and clearly disclose the design

6. The drawings amendment extends beyond the original scope


According to Mr Hsu, 90% of invalidation cases are on the grounds of a lack of novelty or creativeness or they do not meet the definition of design. 

He went on to give some examples of not meeting the definition of design. For example, something without a fixed shape cannot be considered to be a design. This includes things like powder, granules and other articles without a fixed shape, such as fried rice or things that do not have specific form, such as gas, liquid and fireworks. 

It is a procedural requirement to review the patent for industrial applicability to see if design has an industrial use and to see if it applies to a product which is similar or identical. If the design has already been disclosed through prior art, the application is rejected. 

For determining creativeness, the standard used is the perspective of the (hypothetical) person having ordinary skill in the art. This is defined as “A person ordinarily skilled in the art of the design” or “a person possessing general knowledge and ordinary skill in the art of the design”.

Rejection could be on the grounds of imitation of natural forms, imitation of well-known works, direct diversion of use, replacement, combination, changes in position, ratio and number, and using commonly-known designs. For example, adaptation of a common form or copy of a well-known design, such as the Eifel Tower, would be determined to lack creativeness. Also, products using a combination of two prior forms of art or if the only difference is the size, position or number of slots, they would also be deemed to lack creativeness. 

There are also statutory exclusions from patentability for articles whose shapes are purely functional, such as screw threads, abstract art, IC circuits and articles that may be “contrary to public order”, such as drug paraphernalia. 

Other grounds for rejection include not fully or clearly disclosing the design in a manner clear and sufficient for it to be understood and carried out by a person ordinarily skilled in the art of the design. 

Applicants need to clearly distinguish which parts of design they wish to patent. This is done by using dotted lines for parts not included or other means such as translucent or grey-scale colouring, photographs or ink drawings. Descriptions also need to be provided.

Applications could be rejected if designs are not clear. Those rejected on inspection are given the opportunity to make amendments. Guidelines provide examples of what is acceptable. Amendments may not extent beyond the scope of the original patent application.

The speaker went on to explain examination of invalidations. In cases of post-grant amendment, the patentee may request amendment of the specification or drawings in response to the prior art evidence in an invalidation action. If the post-grant amendment is linked to invalidation, examination and adjudication of both have to be carried out jointly. Examinations of invalidations involving substantive requirements must abide by the Design Patent Examination Guidelines. The creativeness examination of a design patent can combine multiple cited documents carrying multiple combinations of the designs. Many requests for invalidity are based on a lack of creativeness. Reviewers will therefore need to compare the applicant’s designs with existing (prior art) designs.

Evidence may include videos and photographs. Although the date of shooting may be indicated on photographs, videotapes, or discs, the invalidation requester shall be notified to provide supporting documents if there is no other evidence proving the publication date of the aforementioned medium. This is to ascertain that the date in question is not produced afterwards. In principle, inspection documents of a product may be used to prove the product’s inspection date. However, if no other evidence is available, the inspection date may not be directly deemed as the publication date of the product. Documents of proof produced by individuals such as certificates, photographs, graphs of a company’s interior design, or videotapes shall be deemed as not possessing evidentiary power if no other relevant evidence is available to prove their publication dates.

When reviewing invalidation evidence, generally, official documents, patent gazettes and periodicals serve as stronger documents of proof whereas private and commercial documents are regarded as relatively weaker.

If documents of proof are in a foreign language, the person filing an invalidation action should provide a Chinese translation or abridged translation of such documents. They may be asked to provide supporting documents if the translation contains errors or is ambiguous. 

Evidence from the internet is problematic because of the difficulty of ascertaining the date of first publication and whether or not it has been updated. However, there are ways to check which designs came first and this has been used as grounds for invalidation of patents for reasons of being too similar and lacking creativity compared to prior designs.

If an invalidation action against a design patent is well grounded and the patent is revoked, such revocation shall become final and binding. The grounds for revocation are published and the granted patent right shall be deemed non-existent ab initio (from the beginning). 

Mr Hsu concluded that invalidation is an important tool for many companies which can make up for the imperfections in patent examinations. It is a frequently used as both an offensive and defensive means in patent litigation. Once the competitor's patent is revoked, others can use it. On the other hand if the invalidation fails, then the patent will become more stable. Therefore, it is one of the evaluation criteria for determining if a patent withstands the challenge of invalidation. 


Topic: Practices of invalidating industrial designs in Taiwan

Speaker: Mr Yeh Che-wei (葉哲維), Technical Examination Officer, Intellectual Property Court

The speaker provided some case studies of applications for industrial design patents that were not granted or invalidated. 

According to Article 124.1 of the Patent Act, if shape of the article is solely dictated by its function it is not patentable. The structure, function or size of an article is usually a purely functional feature and is not considered to be a part of the scope of a design patent when comparing the design patent to prior art.

He gave an example of a filing by Apple Computer for a portable display device. At the time of the filing the iPad was already being sold in the market and TIPO rejected the filing because of the existence of prior art. The board of appeal upheld the decision. However, Apple appealed to the IP Court, which reversed the decision. The initial ruling by TIPO held that a design patent is to protect the creation of an article’s visual appearance. If the feature is solely dictated by function, such a feature should be deemed as “purely functional”. Purely functional features should not be in the scope of a design patent. As such, they rejected the filing on the grounds of the product was still not clearly distinguished from the prior art due to a lack of novelty.

However, Apple responded by presenting three graphs to show that the design was not purely functional. The IP Court accepted this claim. After sending the case back to TIPO for reexamination, TIPO eventually granted a patent to Apple.

This difficulty of the case lay in ascertaining if the design is purely function. According to the IP Court, “purely functional features” are determined by whether it is a “must-fit” shape. The case showed that providing evidence to prove that the feature can have different design choices, or the shape can still be decorative may be a good strategy to counteract the “purely functional characteristics” viewpoint. 

In a case of an application by the maker of an electric scooter for a design patent, the applicant presented a design that was almost identical to a prior design of a scooter with an internal combustion engine. The only difference was the propulsion system. The TIPO examiner held that since the prior art scooter and the electric scooter are both used for transport, they are similar articles. And since the overall appearance of the applicant and the prior art are almost identical, he did not grant the patent on the grounds that the design lacked novelty. 

In the case of a patent application for a popsicle with the appearance of a flower (a plum blossom), it was rejected on the grounds of lacking novelty because it used the shape or appearance of another prior art product.

The Examination Manual states that when a portion of a constituent element is replaced with another design or a design that is formed by simply putting together a plurality of designs, and it cannot invoke a distinctive visual effect when observed as a whole, it will be considered as easily conceived, and the design therefore lacks creativeness. 

In the case of a design application for a soap box with three open spaces on the bottom, TIPO first determined that it was patentable and a petition for invalidation failed. The ruling held that although the design was a combination of three prior art items, the design was different when observed as a whole. However, the patent was finally invalidated by the Ministry of Economic Affairs (MOEA). The MOEA’s ruling held that the overall appearance of the patent is a combination of three prior art items and as such it cannot invoke a distinctive visual effect when observed as a whole. As a result, the patent can be easily conceived by a person ordinarily skilled in the art. Therefore the patent lacked creativeness. 

In the case of plastic table top and legs with a distinctive shape, both of which had prior art examples, it was held that the patent lacked creativeness because it was just a combination of two forms of prior art.

In another case involving a scooter, which was a combination of multiple prior art references, the petitioner claimed that by using elements of prior art together, the design lacked creativity. However, TIPO held that the purpose is not to look at each component or part but at the overall appearance and combining multiple prior art references cannot prove that the patent lacks creativeness.

The speaker went on to explain who has the right to apply for a patent and what happens in cases where several parties are collaborating. In a case cited as an example, a contract signed by the plaintiff (patentee) and the defendant (petitioner) stated that “the patent right is owned by Party B (i.e. the defendant)”. The contract about patent rights signed by two parties did not include designs. It only included product functions. The question is does the so-called “patent right” include a design patent? The plaintiff claimed that the product produced by the defendant infringed the patent. The defendant claimed that, according to the contract, the patent rights derived from the developed achievements by the two parties should be owned by the defendant and that the plaintiff is not an eligible patent applicant, and therefore is unable to claim that the defendant infringes the patent. 

The ruling in the first civil case held that according to the texts of the three contracts, the agreed areas of cooperation include “commercialising R&D results” and the so called “patents” should include invention, utility model and design patents in the commercialisation of R&D results. Therefore the design patent derived from its product design shall be owned by the defendant. 

The decision from TIPO held that the dispute over the right to apply for a patent was solved in the civil judgment. The second instance and appeal were dismissed. The patentee violated provisions of the Patent Act. The patent therefore became invalid. 

In a case of an alcoholic beverage producer which owned a patent for the bottle in which the product was sold, which was designed by the plaintiff, the plaintiff filed a lawsuit claiming that the patent right should be owned by the plaintiff. TIPO held that patent authorities are not allowed to make a decision on disputes over patent right involving private sector parties and that the IP Office cannot determine who is the eligible patent applicant in this petition case. They advised the parties to file a civil action to solve the dispute. The court ruled that even though the defendant paid the plaintiff design fee, it does not mean that there is an agreement about the patent right and that the right to apply for a patent for the bottle shall be owned by the plaintiff. 

The speaker concluded that examination of invalidation by the IP office is based mainly on written reviews. It is difficult for the IP office to investigate relevant facts. The dispute over patent ownership concerns private rights and involves factual evidence. The patent authorities have no jurisdiction. The interested parties are therefore advised to solve their disputes through civil action, which is more practical and efficient.


Session 2: Legal regimes regarding trademarks in Taiwan

Topic: Developments following key amendments to the Trademark Act 

Speaker: Ms Liu Chen-chen (劉蓁蓁), Director, Trademark Affairs Division, TIPO

The speaker gave an overview of the main amendments made to the Trademark Act in 2011, the current status and future prospects. The major amendments focused on 4 main areas: non-traditional trademarks, well-known marks, bad faith filings and geographical marks

Non-traditional trademarks

In 1997, before Taiwan’s accession to the WTO, changes were made to the Trademark Act regarding the combination of colours. After WTO accession, in 2003, further changes were made to include single colours, sounds and shapes. In practice, given Taiwan’s membership of the WTO and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), position marks and repeating pattern marks were also included. Then in 2011, motion holograms and other signs with distinctiveness were added.  

Ms Liu went on to provide statistics on non-traditional trademarks updated as of the end of 2016, showing that the most popular category by far was for 3D marks. Of the 1,775 applications for 3D marks, there were 694 were registrations, 159 were ruled inadmissible, 759 were rejected and 163 are pending. The next largest category is for colour marks, followed by sound. Of the 358 applications for colour marks, 87 were inadmissible, only 40 have been registered and 209 were rejected. Of the 137 applications for sound marks, 60 were registered, 13 were inadmissible and 58 were rejected. Among other categories, there were 12 applications for scent trademarks. One was ruled inadmissible, 10 were rejected and one is pending. 

Well-known marks

Trademarks have been granted for well-known visible signs such as the Coca-Cola bottle, the Tiffany gift box, the Smart Car, Taipei 101, the Cama Coffee mascot, the Shell logo and 7-11’s stripe combination. There has also been a proliferation of other marks such as sound marks for brands including Yahoo!, Intel, Line and BMW.

Scent is very difficult to represent given the requirement that the reproduction of a trademark shall be represented in a manner that is clear, precise, self-contained, objective, durable, easily accessible and intelligible. TIPO has presented draft proposal regarding scents and in July this year conducted a public hearing on the issue. Since then it has invited professors, lawyers and representatives from the IP Court to provide input and solicited feedback from the public in an effort to achieve consensus on non-visible signs, including scents. Applicants should describe the scent and may submit samples of the scent.

Applications may be rejected on the grounds that they are likely to cause confusion or dilution. If the applicant uses a trademark for other products, it will be rejected.

In 2011 there was an important amendment. Since 2003 trademark owners were required to prove harm but since this amendment, this was extended to the risk of harm. Trademark owners can make use of the Fair Trade Act to file for civil penalties. 

The speaker provided statistics on well-known trademark cases, showing that Taiwan had 154 cases between July 2016 and July 2017, compared to 121 in the United States, 63 in France, 44 in Japan and 39 in Switzerland. 

The interests of trademark owners have to be balanced against the right to free speech. For this reason parody or fair use are permitted although they may not be registered as trademarks unless it can be shown that the trademark will not lead to consumer confusion. 

Bad faith filing

Provisions to the Trademark Act on bad faith filings were added in 2011 and became effective on 1 July 2012. Under the new provisions, if a competitor files an application for an identical or similar mark, it will be considered a bad faith filing, which can be opposed during the examination process. If an application is granted and registered, the trademark owner can file an objection if the mark is improperly appropriated. 

Geographical marks

TIPO amended guidelines to accept Geographical Certification Marks (GCM) for a juridical person, organization or government agency to indicate the place from which certified goods or services originate and distinguish them from non-certified counterparts. In addition, Geographic Collective Trademarks (GCT) are accepted for a business association, social association or any other group that exists as a juridical person to indicate the place from which goods or services of collective group members originate and to distinguish them from those of non-members. TIPO has examination and procedural requirements to register GCMs and GCTs and regulations governing their use

According to registration statistics provided by Ms Liu, there are 61 GCM registrations, of which 32 are domestic and 19 foreign. There are 48 GCT registrations, of which 33 are domestic and 15 foreign. Most of the foreign registrations are from Japan. 

Present status and future prospects

TIPO is now examining the application process for trademarks to improve efficiencies. Amendments have been proposed, passed by the Executive Yuan and the second reading in the Legislative Yuan (Taiwan’s parliament) which hold that the infringer must knowingly infringe and to specify the imposing of criminal liability on persons who manufacture, sell, possess, display, export or import labels and packaging with a counterfeit trademark applied which are intended to be used in the course of trade of goods or in relation to services. The penal provisions are similar to those of other countries.

TIPO is also drafting further amendments, scheduled for 2018, that will cover scent marks, tackle problems from online markets, improvements on insufficiency and plain packaging of tobacco products. 

In terms of improving examination quality and efficiency, this is difficult given the increase in applications every year. Among other changes aimed at improving efficiency, TIPO will make use of online dashboards to monitor applications, set suitable personnel workloads and look at the quality of exams by examiners by monitoring their performance on a monthly basis and monitoring overdue cases.

An effective way to improve efficiency is to increase in number of applications filed online. Ms Liu said that more than 61% of applications are now filed online. Progress has also been made in reducing review times. Despite a 3% increase annually in trademark applications, the review time is decreasing. 

Every year TIPO reviews results of cases and holds workshops with examiners. It is also proactive in trying to solve various challenges, such as improving the online examination system. It carries out satisfaction surveys of trademark practices and awareness campaigns and answers questions from surveys.


Morning Q&A session

All three of the speakers from the morning sessions participated as panellists in the Q&A session. On a question on scent marks, Ms Liu said that applicants need to provide samples and that TIPO is now discussing internally and referring to the US and Australia, which register trademarks and safeguard the integrity of scent marks. It is the responsibility of the applicant to provide good samples. 

A question was asked who would be responsible (liable) for copying store decorations, the designer or the store owner? Panellists replied that this needs to be determined on a case by case basis. Sometimes products are sold in which the products and services make fun of a famous trademark. In one case brought by a famous brand, the court agreed with the defendant that it was a parody and therefore not an infringement. Other cases make fun of brands but raise social concerns. This has to be taken into account. To see who is liable, examiners have to look at the design itself. If it will impair the reputation of the mark, the designer might be liable. The rights holders need to assert their rights. If the image misleads public to make it look like the brand supports the store, this could be grounds for action given that it would confuse the public.

A question was asked about a case in which two parties, one European and one Taiwanese, jointly developed a design but did not have an agreement in place. The European partner later applied for a patent for the design. The question was asked if the Taiwanese company could apply for patent for a part of the design (the lower part) even though the entire product has a patent applied for and registered in Europe. The reply was that examiners would have to look at the patent application to see if it refers to the upper or lower part. Also, looking at the ownership of a patent is a complicated issue which would require further investigation to determine who the real developer and owner are. Since there is no agreement in place, this would have to be determined based on the contribution of each party. A member of audience said you can apply for patent if the overall product looks different. 


Afternoon sessions

Session 3: Introduction to the legal regimes regarding trademarks in the EU

Topic: Introduction to EUIPO and industrial design regulations in Europe

Speaker: Mr Günther Marten, IP attaché, EU Delegation in Beijing

The speaker introduced the European Union Intellectual Property Office (EUIPO) and its work in industrial designs. EUIPO was established in 1994 and is based in Alicante, Spain. It manages the registration of EU trade marks and the registered Community design. It also works with the IP offices of EU Member States and international partners to offer a similar registration experience for trademarks and designs across Europe and the world.

The core business is the registration of EU trademarks and registered Community designs, which are valid throughout the European Union (EU). However, work at EU level also extends to the harmonisation of registration practices and the development of common tools, in cooperation with our partners in national and regional IP offices throughout the EU-28, users and other institutional partners. For example, EUIPO has developed software, which offers licence free for use by global professionals. The EUIPO has also taken over (since June 2012) the European Observatory on Infringements of Intellectual Property Rights, which brings public and private stakeholders together in the fight against piracy and counterfeiting. 

The EU’s Community design regulation was been implemented in 2006. It offers two choices: either protect the design with the European Union Intellectual Property Office (EUIPO) before it is commercialised and obtain a registered Community design (RCD) or, alternatively, commercialise the design directly without registration by relying on what is known as the unregistered Community design (UCD) right. ) Applications for filing an RCD can also be done through the International Bureau of the World Intellectual Property Organisation (WIPO), although the application will still be examined by EUIPO.

Both options offer the following protection: 

  • Manufacturing a product incorporating a protected design (or to which the design is applied) without the consent of its proprietor would be considered illegal.
  • Putting a product on the market incorporating the protected design (or to which the design is applied) without the consent of its proprietor would be considered illegal.
  • Offering a product for sale incorporating a protected design without the consent of its proprietor would be considered illegal.
  • Marketing a product incorporating the protected design without the consent of its proprietor would be considered illegal.
  • Importing/exporting a product incorporating the protected design without the consent of its proprietor would be considered illegal.

However, RCDs and UCDs are quite different in terms of scope of protection and duration. In terms of protection, an RCD is initially valid for five years from the date of filing and can be renewed in blocks of five years up to a maximum of 25 years. A UCD is given protection for a period of three years from the date on which the design was first made available to the public within the territory of the European Union. After three years, the protection cannot be extended.

In terms of scope, RCDs are protected against similar designs even when the infringing design has been developed in good faith, i.e. without knowing of the existence of the earlier design. UCDs grant the right to prevent commercial use of a design only if that design is an intentional copy of the protected one, made in bad faith, i.e. knowing of the existence of the earlier design.

The legal protection conferred by a registered design is stronger and more transparent. On the other hand, it is not always easy to prove that you have disclosed a design in the European Union (EU) at a particular time. It can also be difficult to prove that your design has been intentionally copied and that the infringer should have been aware of the existence of your design. However, a registered design provides you with a certificate, which makes it easy to prove ownership.

The design representation in applications should consist of a graphic or photographic reproduction of the design, either in black and white or in colour. In addition, the application may contain a description explaining the representation or the specimen. While each application can only be for one design, applications may contain up to seven views. Given that there is no substantive examination procedure, the process can take as little as 48 hours as long as the application meets the requirements of Community Design Regulation (CDR, EC Regulation No 6/2002 of 12 December 2001) as defined in the regulation, which includes paying a fee of €350. Very few applications are rejected – only those that fail to meet the definition of design set out under Article 3 of the CDR or on “moral grounds”, i.e. if the product is perceived as against the public order (something that happens very rarely).

Once registered, an RCD is protected for exclusive use in the EU (all 28 Member States), which means that protection can be enforced and subsequent copies of the design can be invalidated. The registration process is designed to be very fast and efficient but there is recourse for infringements. Enforcement can be done through invalidity proceedings at EUIPO or infringement proceedings in national courts. 

Absolute invalidation grounds, set out in Article 25 of the CDR, are: that it is not a design according to the stated definitions, it is not novel or it has no individual character. Relative grounds for invalidation include: Lack of entitlement (the registered owner is not the real owner), conflicts with prior design(s), conflicts with distinctive sign(s), conflicts with earlier works of copyright or conflicts with protected badge. 

According to Mr Marten there have been about 2,800 cases of appeals against registered designs, of which about 50 have been invalidated, often based on a lack of novelty or being too similar to an older design. The standard used for determining similarity is based on the impression of the informed user, which is very similar to Taiwan and other countries. In the EU the informed user lies between average consumer who need not have any specific knowledge, and the sectorial expert, who is an expert with detailed technical expertise. The informed user is aware of the various designs that exist in the sector concerned, possesses a certain degree of knowledge with regard to the features that those designs normally include, and, as a result of their interest in the products concerned, shows a relatively high degree of attention when using them. 


Session 3 Q&A session

Mr Marten was accompanied in the Q&A session by Mr Hsu Chia-hung.

On a question about the difference between registered and unregistered patents, Mr Marten reiterated that while both registered and unregistered designs are protected you need to be able to prove that you created the design and are the rightful owner. This is difficult without a registration but very simple if you have registered the design.

On a question as to whether it makes a difference applying for a patent in Europe if you already have a patent in Taiwan, speakers replied that patents are territorial. To get protected in Europe you need either national patent protection (by going through a Member State) or by applying through the EU patent office, which applies to the whole of the EU. If the design is new and meets the CDR requirements it is relatively easy to get approval

On a question as to how to determine distinctiveness in a product, panellists replied that the standard used is that of the informed user. In the case of ordinary products, this would refer to the average consumer. If the informed user thinks a design is too similar to another it could be assessed as infringing. 


Session 4: Introduction to trademark practices in Taiwan and the EU

Topic: The latest developments in Taiwan’s trademark practices

Speaker: Ms Lin Hsin-jung (林欣蓉), Judge, Supreme Administrative Court

The speaker summarized some major court rulings concerning trademarks in Taiwan. 

In a case involving Google and Gorgeous Space Co. Ltd. an interior design company and trademark owner of the “幸福空間” (the Chinese characters for “Gorgeous Space”) trademark, Google sold “幸福空間” to certain advertisers, including Holin Interior Designing Co., Ltd., as keyword advertising. The plaintiff accused Google of committing a trademark infringement and sued for damages. The February 2015 ruling of the IP Court held that Google’s sale of Gorgeous Space Co., Ltd.’s mark “幸福空間” as a keyword advertising  does not constitute the use of a trademark, and the advertisers’ promotional projects have not used the mark “幸福空間” to promote their own services or products. However, advertisers purchasing “幸福空間” and using it for keyword advertising is an attempt to ride on the brand awareness of Gorgeous Space’s mark that the company has obtained through long-term endeavour. Google listed the key words “幸福空間” in its recommendation to the advertisers, and also kept selling it as keyword adverting after receiving Gorgeous Space’s cease and desist letter. Google’s act therefore constituted joint infringement, namely carrying out unfair competition activities, as provided in Article 24 of the Fair Trade Act. The court granted treble damages to Gorgeous Space Co. Ltd. based on joint willful infringement and prohibited Google from using or selling “幸福空間” as keyword advertising.

The speaker went on to describe details of the case of Louis Vuitton Malletier vs 2R International Co., Ltd. Louis Vuitton Malletier is the owner of the trademarked EPI design pattern. 2R International Co., Ltd. owns the fashion brand 2R, primarily known for its handbag products. Certain 2R products sold in its online and physical stores bear LV’s EPI trademark and are highly similar to LV’s Noe and Neverfull bags. The handbags not only had the same design but also the same shape. LV filed a criminal action for trademark infringement against 2R International Co., Ltd. and its chairman. The Prosecutors Office concluded that the ripple design of the 2R products was a product appearance design only, instead of trademark use. Therefore, the Prosecutors Office issued a non-indictment decision.

LV filed another civil action against 2R in the Taiwan Intellectual Property Court. 2R argued that all these alleged infringing patterns used on 2R’s products should only be regarded as product appearance design, instead of trademark use. 2R argued that LV’s EPI trademark should be cancelled because of its lack of distinctiveness. In an August 2016 ruling the IP Court held that the same facts and evidence concerning whether an intellectual property right shall be cancelled may no longer be asserted in an intellectual property civil proceeding if the application for invalidation has been time-barred in an administrative proceeding. Further, the EPI pattern has been a famous trademark due to LV’s longstanding use and consistent promotion. The wave-like pattern of 2R’s bags is extremely similar to LV’s trademarked EPI pattern and its style is also similar to LV’s design of Noe and Neverfull bags. Although 2R places its own trademark on its handbag products, these products may still mislead general customers. 2R’s sale of bags bearing the EPI trademark constitutes a trademark infringement. The court therefore ordered 2R to issue a public apology (through a newspaper advertisement) and pay damages to LV.

There have been a few criminal cases involving the “S-lock”, for which LV has a registered trademark,. Recent decisions tend to say it is difficult to establish a case and have recommended civil action because it is easier. 

In the case of Rimowa GmbH vs KGT International Corp., KGT uses its ”Rowana” mark on its luggage products and sells them online and on TV shopping channels. Rimowa claimed that RIMOWA has been recognized as a famous mark. KGT asserted that the “Rowana” mark has been successfully registered as a trademark through TIPO and the difference between the two marks in appearance will not cause confusion among consumers. The judge in the case asked why TIPO had allowed the Rowona registration. TIPO’s reply was that it was difficult as there are too many considerations to take into account. 

KGT used registration as a defence and argued that the two trademarks had clear differences in appearance. However, in a May 2016 ruling, the IP Court held that the RIMOWA mark is a well-known trademark and that Rowana” along with its outer oval circular frame as a whole is similar to RIMOWA’s registered trademark and such similarity is likely to cause confusion among consumers. The court issued a permanent injunction forbidding KGT from using, selling or distributing goods bearing the same or similar mark. In addition, the court ordered KGT to pay a significant amount in damages, amounting to 150 times the total sales of a series of goods (although the plaintiff can ask for damages up to 1,500 times sales). The case is not final and is appealable.

In a case of bona fide prior use involving two Taiwanese companies (Barf Taiwan Co., Ltd. v. Forpet Co., Ltd.) the trademark, R.A.W. BARF, Reg. No. 01398347, originally registered by a Taiwanese individual, was assigned to another individual and licensed to Barf Taiwan Co., Ltd. in 2013. The defendants imported pet foods bearing identical marks from an Australian company (IG&RJ) and sold these trademarked pet foods in Taiwan. Barf sued the defendant for trademark infringement, seeking compensation. In a February 2015 ruling the IP Court held that the bona fide prior user provision of the Trademark Act prescribes that a bona fide prior user of a trademark is not subject to restrictions of a later registration owned by another party and may continue to use the trademark on the products as originally designated. The court held the enforcement of trademark rights is subject to the principle of territoriality. Therefore, the prior use defined under this provision must be in Taiwan. Accordingly, proof of use of the subject trademark by the Australian company in Australia or Hong Kong could not satisfy the requirements of prior user provision.

The speaker went on to describe a case involving a scent mark, one of very cases in this new area and the only one with a decision. According to the law (under section 19(3) of the Trademark Act), the reproduction of a trademark shall be represented in a manner that is clear, precise, self-contained, objective, durable, easily accessible and intelligible. In the case, White Flower International Co., Ltd., applied for registration of its lavender-scented trademark under the good category “Chinese medicine; medicinal oils” (Class 5). TIPO rejected the application because its description didn’t clearly and precisely explain and represent the mark. In a July 2016 ruling, the IP Court upheld TIPO’s decision, saying that the plaintiff, White Flower International Co., Ltd., did not clearly and completely explain the ingredients and their respective ratios in the scent trademark at issue and therefore failed to enable a third party to clearly understand its content through description. The case is not final and is appealable. The case illustrates the difficulty of demonstrating the uniqueness of scent marks that could be distinguishable to an informed user, even if samples are attached for the examiner’s reference. Listing ingredients of the scent may inadvertently disclose trade secrets. 

In the case of IWATCH vs swatch, Apple Inc. applied for registration of the “IWATCH” trademark under the category “watch” in Class 14 and good category “computer” in Class 9. TIPO rejected the application because “swatch” is a well-known mark and the “IWATCH” mark is similar to the “swatch” mark in relation to the goods in Class 14 and would likely cause confusion among the public. Also, registration of  the “IWATCH” mark in relation to the goods in Class 9 would likely dilute the distinctiveness or reputation of said well-known trademark. Decisions on similar cases in other countries show a divergence of opinions, some ruling that the mark is similar and others ruling that it is not. A decision in the US is still pending. A July 2017 ruling by the IP Court revoked parts of TIPO’s decision and permitted Apple’s application to register “IWATCH” in respect of goods in Class 9. The case is not final and is appealable.


Topic: EU trademark legal reform

Speaker: Mr Günther Marten, IP attaché, EU Delegation in Beijing

The speaker gave an overview of legal reforms of EU trademarks. The European Union trade mark Legislative Reform package comprises two primary legislative instruments: Directive (EU) 2015/2436, which replaces the existing EU trade mark directive, thereby harmonising the trademark laws of EU Member States, and Regulation (EU) 2015/2424 (which amends the existing European Union trade mark regulation (EC) No 207/2009 (setting out the rules applicable to European Union trademarks and to the EU IPO (the office). It is the culmination of nine years of work. The delegated acts were adopted on 18 May 2017 with the EU trade mark regulation (EUTMDR). The EUTMR provides for secondary legislation being passed by the European Commission in the form of two separate acts, a Delegated Regulation (EUTMDR) and an Implementing Regulation (EUTMIR), both of which apply from 1 October 2017.

The objective of the reform package is to foster innovation and economic growth, streamline proceedings, increase legal certainty, clearly define the tasks of the EUIPO (the office), including the framework for cooperation and convergence of practices between the office and the intellectual property offices of Member States. It also entails a revision of the fees payable to the office.

The implementation of the legal reforms was divided into two stages. In Phase 1 fees were restructured. Previously there was one fee for three classes and now there is one fee per class. There was also a moderate reduction in application and cancellation fees and a substantial reduction in renewal fees. In addition there is now an opt-in for search reports and a suppression of disclaimers. In addition, periods for submissions and oppositions are now codified. There was also a dropping of interlocutory revisions and ancillary appeals are expressly recognised.

Phase 2 of reforms covers the tasks related to the changes entering into force on 1 October 2017, changes for which delegated acts from the EC have to be taken beforehand. The first problem in this phase was codification relating to different systems. Different legal instruments will be absorbed into one instrument.

Phase 2 introduces a new type of IP right at the EU level, the EU certification mark. A second major change and a core pillar of the modernisation of the EUTMR system comes into place with the abolition of the requirement for graphical representation. European trademarks can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. A significant number of the provisions that were contained in secondary legislation shift to the basic regulation. The EU trademark implementing regulation (EUTMIR) covers matters such as: the contents of EUTM applications; representation of EUTMs; language and translation issues; priority and seniority; transfers and surrenders; EU collective and certification marks and certain procedures concerning international registrations. 

Broadly speaking, the EUTMDR now covers procedural rules relating to: opposition, revocation and invalidity actions; appeals to the Boards of Appeal; the organisation of the Boards of Appeal; notifications from EUIPO and communications with the office; time limits and suspensions and certain procedures concerning international registrations.  

One core element of the reform is the introduction of a new kind of EU trade mark, certification marks. Such marks exist in some national systems already. A certification mark indicates that the goods or services bearing the mark comply with a given standard set out by the owner of the mark. The owner of an EU certification mark may be a public body or a private entity, and as such, EU certification marks cover both public and private certification schemes. Certification marks have much in common with collective marks but a collective mark indicates that goods or services come from a collective or group whereas a certification mark acts as a sign of supervised quality. The basic fee for a certification mark is €1,800 (filing online costs €1,500). 

The applicant for a certification mark has to describe it as such in its application (according to Article 74a of the EUTMR). The regulations of use constitute the essence of the certification mark. These need to contain, in particular, the characteristics of the goods or services to be certified, the conditions governing the use of the certification mark and the testing and supervision measures to be applied by the certification mark. The only, yet important, limitation is that a certification mark cannot be owned by a person carrying a business involving the supply of the goods and services of the kind certified (Article 74a(2) EUTMR). The owner of a certification mark is precluded from using the mark for the certified goods or services covered. 

Certification marks should be applied for the goods and services that will be certified by the owner of the mark. The list of goods and services of an EU certification mark applied for must also be included in the regulations of use (according to Article 17(d) of the EUTMIR).

An EU certification mark application must be refused if the public is liable to be misled regarding the character or the meaning of the mark, in particular if it is likely to be perceived as something other than a certification mark under Article 74(c) of the EUTMR.

Pursuant to Article 74(a) EUTMR, an EU certification mark shall not be capable of distinguishing goods or services certified in respect of the geographical origin. 

According to Article 17 of the EUTMIR, the regulations of use must contain among other things: a representation of the mark; a list of goods and services covered by the mark; characteristics of goods or services to be certified by the EU certification mark, such as the material, mode of manufacture of goods or performance of services, quality or accuracy; the conditions governing the use of the EU certification mark, including sanctions foreseen in case of non-compliance; the persons authorised to use the EU certification mark; how the certifying body is to test characteristics and to supervise the use of the EU certification mark.

The second major change is the representation requirement. Previously graphic representation was required. Now the trade mark may be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective, i.e. it is represented in a manner that enables the competent authorities to determine with clarity and precision the subject matter of protection. The result is a ‘what you see is what you get’ (WYSIWG) system which aspires to make the trademark entries on the EUTM register clearer, more accessible and easier to search. 

The abolition of the requirement of a graphic representation means that certain types of trademarks that can be represented in electronic format only (e.g. multimedia marks) are now acceptable. It also means that EUTMs that are non-visual or comprise moving images become easier to file by making use of electronic means of reproduction. Publication using conventional means is, however, no longer viable for marks filed in this manner. In order to address this and guarantee the availability of all the information concerning an application, a link to the publicly-available electronic file on the EUIPO’s register is now recognised as a valid form of representation for the purposes of publication and for issuing registration certificates.

Article 3(3) of the EUTMIR lays down specific rules and requirements for the representation of 10 types of trade mark, including some technical requirements, in accordance with the trade mark’s specific nature and attributes. The objective is to increase legal certainty for users and reduce the rate of formal objections. The speaker showed some classic examples of the 10 types of trade marks. The regulation is quite broad and open, and includes the option to apply for other, not specifically regulated types of marks. It leaves sufficient freedom for businesses to apply for the kind of protection they need, and combines the benefits of legal certainty with the necessary flexibility to cater for future market developments and the emergence of new technologies.

As with the current system, word and figurative marks are treated as pure WYSIWYG marks, i.e. applicants are merely asked to reproduce the verbal or device elements graphically. Nevertheless, descriptions cannot be attached to these marks and colour claims cannot be made for figurative marks as from 1 October 2017. So, indications of colour will not be taken into account for figurative EUTMs and have no role to play in the EUTM application process.

Position marks are now introduced as a separate, stand-alone category. Article 3 of the EUTMIR stipulates mandatory and optional representation requirements for position marks. These are an appropriate identification of the position of the mark and its size or proportion with respect to the relevant goods (mandatory); a visual disclaimer of those elements which are not intended to form part of the subject. The EUTMIR gives preference to broken or dotted lines. A description explaining how the sign is affixed on the goods is optional. The representation should by itself clearly define the position of the mark as well as its size or proportion with respect to the goods. Therefore, the description may only serve explanatory purposes. In addition, it cannot serve to substitute visual disclaimers.  

 An objection under Article 7(1)(a) of the EUTMR may be raised in respect of those goods on which the positioning of the mark may be unclear. For example, if a position mark is applied for clothing, footwear and headgear, but the representation identifies the position of the mark on footwear only, an objection should be raised with respect to clothing and headgear.

The implementing regulation requires that the representation of the colours be accompanied by a reference to a generally-recognised colour code for the sake of legal certainty. With regard to colour combinations, the colours “must be systematically arranged in a predetermined and uniform way” and it is a requirement that the approximate ratio and positioning of the colours be shown in the representation itself. Applicants may file a description detailing how the combination is to be applied to the goods, but this is not compulsory anymore, which is another step in the direction of the WYSIWYG philosophy. 

Article 3(3) (g) of the EUTMIR defines sound marks as trademarks consisting exclusively of a sound or combination of sounds. Graphic representation is not necessary but still possible. As from October 2017, an MP3 file containing the sound shall be sufficient. The new rules, however, do not dispense with such graphic means altogether as they still allow the filing of a musical notation as a means of representation. Other means of representation, such as onomatopoeia (a word that phonetically imitates, resembles or suggests the sound that it describes), musical notes on their own and sonograms will not be accepted as representation of sound marks.

The same permissive approach that allows for a choice between various means of representation has also been followed for motion and hologram marks, which may be filed either by means of a video file or by using a series of still sequential images. However, this solution cannot work for marks combining image and sound, which now come under the title of ‘multimedia’ marks, and which may only be represented by submitting an audio-visual file containing the combination of image and sound. In these cases the law does not allow for the filing of a description, apparently on the assumption that in the case of purely visual signs a description in words would create more problems than it would solve. 

Article 3(3)(h) of the EUTMIR defines motion marks as “trade mark(s) consisting of, or extending to, a movement or a change in the position of the elements of the mark”. The proposed definition does not restrict motion marks to those depicting movement. A sign may also qualify as a motion mark if it is capable of showing a change in the position of the elements (for instance a sequence of stills). Motion marks do not include sound. Multi-media marks are defined as ‘trade mark(s) constituting of or extending to, the combination of image and sound’. 

Hologram marks, fall somewhere between figurative and motion marks: They may be represented either by means of a video file, or by graphic or photographic means showing the holographic effect. 

The EUTMIR does not make reference to other categories of non-traditional trademarks such as smells, tastes and textures, although it is possible to apply for ‘other’ types of marks. However, it is difficult to see how this could be used in the case of tastes, smells and the tactile effect of textures, especially since the new rules prohibit the filing of samples or specimens with EUIPO, i.e. of the only means that could be used, in the current state of technology, to represent tastes and smells. This restrictive approach is sensible, as the acceptance of samples would not be in line with the need for the representation to be not only clear and precise, but also generally accessible for inspection on the register by means of commonly available technology, while it leaves a door open for possible future technological developments in these fields. 

The speaker went on to give an overview of procedural changes that will enter into force on 1 October. 

On the issue of substantiation, a big problem in the past was having to provide evidence, which is a heavy burden. Now it is possible to refer to documents stored online. Where the evidence concerning the filing or registration of the earlier rights or the evidence concerning the contents of the relevant national law, is accessible online from a source recognised by the EUIPO, the opposing party may provide such evidence by making reference to that source. In this regard, EUIPO recognises all of the databases of the national and regional EU IP offices. 

Another change is that priority claims must be filed together with the EUTM application (before, such claims could be made subsequent to filing the application). The documentation in support of the claim must be filed within three months of the filing date (previously it was within three months from receipt of the declaration of priority). If the latter documentation is not in a language of the office, it is now optional for the office to request a translation of such documentation. A further change in the practice of the office is that the priority claim is no longer examined in substance. It remains as a ‘mere claim' until it is relied upon and it is necessary to validate it in proceedings. There are no material practice changes regarding seniorities.

The requirements of admissibility and substantiation for relative grounds’ actions have been reordered for clarity and to take into account the separate ground on geographic indications introduced by Article 8(6) of the EUTMR. Provisions applicable to cancellation proceedings are aligned with opposition proceedings except where differences are justified by their different nature. 

The EUTMDR introduces framework rules on belated evidence and codifies office practice to admit only additional evidence. Whilst the surrender of an EUTM becomes effective on the date on which the surrender is registered, a decision revoking an EUTM produces its effects from the date on which the revocation request was filed. Consequently, if a request for surrender were acted upon when a revocation action is pending, the validity of the EUTM could be prolonged beyond the filing date of the revocation request. The practice of the office has recognised that, even where the EUTM is surrendered, a revocation applicant can still have a legitimate interest in continuing the cancellation proceedings in order to obtain a decision on the substance. This has been written in the regulation.

Continuation of proceedings is now expanded to certain time limits where it was previously excluded. In particular, it now applies to the time limits set by the office for the parties to submit observations within the opposition procedure, including the time limit for the opponent to substantiate its opposition.

 The means of communication by and with the office have been changed to take account of developments in information technology. In particular, obsolete forms of communication have been removed, namely, hand delivery and deposits in a post box at the office. In addition electronic means is defined broadly so that it now covers faxes and potentially many other types of media. Already 99% of filing is done online and this is encouraged as the fees for filing electronically are cheaper. 

The boards of appeal are now properly ordered and notices of appeals and statements of grounds have been clarified to include, inter alia, a clear and unambiguous identification of: (a) the decision subject to appeal; (b) grounds of the appeal; (c) the goods and services to which it relates (which must not be broader than those listed in the Notice of Appeal); and (d) the facts, evidence and arguments in support of the grounds invoked. If the appellant fails to comply on time with these requirements despite being informed by the Board of Appeal of the deficiency, the appeal shall be inadmissible (according to Article 23(1)(e) of the EUTMDR). Cross appeals must be filed on a document separate from the response. 

Since the EUTMR is a directive, its provisions will need to be transposed by Member States. This has not yet been done but the deadline is by the end of 2018.  


Topic: Recent trademark law cases

Speaker: Mr Günther Marten, IP attaché, EU Delegation in Beijing

Details of trademark cases, including case law, are available on EUIPO’s website. There are now 45 million trademarks, all of which can be found online. 

Earlier rights are protected including non-registered signs used in the course of trade, national and international marks. The speaker went on to talk about some recent trademark cases. 

In a case from 2017, the registration of the trademark of an Hungarian company named SZATMARI, where “A” was substituted for a windmill, was initially refused by the Examination Division but the trademark was later allowed by the Board of Appeals. Although Szatmari is a well-known former Hungarian region, now situated in Romania (not a GI), it is famous for plum jam or brandy, not the products of the applicant, which include edible oils, grains and seeds. Thus, there is no close relationship between the goods and the trademark (region). Nevertheless, the trademark was deemed eligible. 

In the case of Authentic, a pet food company, the Examination Division was of the opinion that the word ‘authentic’ means original/trustworthy and was a quality statement of the goods while the pictorial elements of the trademark only refer to who the goods are targeting. The board accepted the appeal as the relationship between then word authentic (meaning trustworthy) and pet food is too weak to give the mark a descriptive character. 

In a case from 2005, the applicant applied for a three-dimensional mark as depicted in Classes 4 (fuel gas), 34 (lighters) and 35 (Advertising etc) in which five representations of a lighter were provided, one of which had the word ‘CLIPPER’ written on it. It obtained the registration. In 2011 invalidity action was filed on the ground that the shape was not distinctive with regard to those common to the sector. The EUTM was rejected because the shape did not differ from the norms or customs of the sector and the word element was only in one image and seen as not essential. 

The registration of Skyfire was refused because it was registered at the Community Plant Variety Office as a ‘registered plant variety denomination’ and Skyfire is customary in the course of trade as a designation for a particular variety of the genus ‘Iris’. However, the applicant had expressly restricted its list of goods such that it no longer includes the iris variety ‘Skyfire’. If the list of goods only covers plants in respect of which no variety denomination is registered or known, the ground for refusal of descriptive indication is inapplicable.

In a case involving a prior mark, Wurst-König (a text only mark) and Wurst King, which included both text and an image dominated by a skull bearing a crown, the examiner analysed the similarities and differences in terms of goods provided (identical in part and partially dissimilar) and the appearance (size, visual similarity, sound when read out aloud. The examiner determined that a distinction can be made between three groups of consumers: The German-speaking public would associate the word elements of the signs under comparison - ‘Wurst-König’ and ‘WURSTKING’ - with similar concepts. Secondly, consumers would associate the term ‘KING’ of the trade mark applied for with the depicted skull, which is indeed wearing a crown. The striking ‘skull king’ differs conceptually from the ‘Wurst-König’ (sausage king) of the earlier trade mark in this respect. The second group of consumers consists of the consumers outside German-speaking areas who only understand the word ‘KING’ and not the German terms ‘WURST’ and ‘König’. For this part of the public, the signs are conceptually dissimilar. In addition, the word ‘KING’ would once again be associated with the image of a skull wearing a crown, and this reinforces the conceptual differences even further. The third group of consumers would not understand any of the relevant words. The signs are conceptually dissimilar for this part of the public as well. Weighing all the angles, the examiner decided that both marks could therefore co-exist because visual inspection plays a greater role. The objection was therefore rejected.


Final Q&A session

Mr Marten was accompanied in the final Q&A session by Ms Liu and Ms Lin. A question was raised regarding certification marks. In reply Mr Marten reiterated points already set out in his presentation. 

On a question regarding Google search case, Ms Lin said that at the time of the case, the distinction between advertising and natural search results was not considered.



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