TIPS^®  Taiwan Intellectual Property Special

Newly Passed Patent Law Amendments

The bill of patent law amendments passed the legislature and has become effective on October 26, 2001. The highlights of the major amendments are as follows:

1. Laid-open after eighteen months from the effective filing date (EFD) was adopted for the invention patent applications, but this is not applicable to utility model and new design patent applications.

2. Introducing a domestic priority claiming system for both invention and utility model applications; after fifteen months from the EFD, the supplement or amendment can only be made in the limited periods.

3. Instituting a complaint against the patent infringers, the patentee shall submit an infringement verification report or a claim chart of comparison-analysis report. The written notice given by the patentee to the potential infringer is no longer required.

4. Nothing changed in criminal sanctions for infringement of utility model and new design patents. However, criminal liabilities of an invention patent infringement were totally abolished. Replacing this is the increase of punitive damages amount from twice to three times of the actual damages.

5. Once an opposition action or a invalidation action is not sustained after TIPO’s examination, doctrine of res judicata will be applied, i.e. no person shall be allowed to institute a new invalidation action based on the same facts and the same evidence.

6. Releasing unnecessary co-signed documents for joint-ownership of a patent right, nevertheless, any one of the following circumstances still need to be executed by all joint owners:

a. Withdrawing or abandoning patent applications;

b. Divisional applications during patent prosecution;

c. Division or conversion of a granted patent right; and

d. Assignment, licensing, pledge or trust of a patent right.

7. Both oath and assignment become supplemental documents to get an EFD. They are no longer the must documents for acquiring the EFD at the initial filing. When claiming multiple priority dates, the applicant will also be able to claim the last one in 12 months without putting the serial number at the initial filing.

Mars Won the First Domain Name Depute Resolution Decision

The Taiwan Network Information Center (TWNIC) announced the first dispute resolution decision in Taiwan on August 7, 2001. The dispute is between the complainant, Mars, Incorporated, the trademark owner of “m&m’s,” and the respondent, Champion Technology, for transferring the domain name at issue i.e. “www.m-ms.com.tw.”

It was held that “m-ms” and the mark “m&m’s are similar in pronunciation and appearance, and that the respondent did not affirmatively prove that it has the right or legitimate interest in using this domain name. Therefore, the dispute resolution panel ruled that the respondent, Champion Technology, knowingly registered a domain name similar to another’s famous mark, and that the respondent violated the notice obligation to the TWNIC and generated free riding benefits from the goodwill of the complainant’s famous mark. Furthermore, the panel also found the fact that the respondent has never provided content under “www.m-ms.com.tw.” Since the registration would mislead the consumers to believe that Mars could not provide complete online services, the goodwill of the complainant may be damaged.

Accordingly, the panel ordered that “www.m-ms.com.tw” be transferred to the complainant. Under this circumstance, the respondent is entitled to submit documents, showing that an action was commenced in a court, to stay the transfer order in 12 days after the decision was made.