TIPS^®  Taiwan Intellectual Property Special

The Administrative Appeal Law of 1998 and the Code of Administrative Procedure of 1998 Will Take Effect on July 1

The Administrative Appeal Law of 1998 and the Code of Administrative Procedure of 1998 will take effect on July 1. The revised articles of the Code of Administrative Procedure of 1998 will greatly influence the administrative dispute cases with respect to the dismissal of patent application and the revocation of patent granted ex officio by the IPO.

Pursuant to the old laws, the applicant, who dissatisfied with the administrative order issued by the IPO, may file an Administrative Appeal, Administrative Re-Appeal, and Administrative Litigation. The Administrative Appeal Law of 1998 repealed the Re-Appeal regime. From now on, the applicant should file Administrative Litigation with the High Administrative Court if he dissatisfied with the decision from a Board of Administrative Appeal, which judgement can be appealed to the Supreme Administrative Court. The Administrative Appeal Law of 1998 also provides that the applicant may request the Board to examine/investigate relevant evidence and shall have the right to review the documentation of the case at issue. The Board may, at its discretion and/or upon application, hold a hearing to hear the parties’ oral argument. Moreover, the Administrative Appeal Law of 1998 prescribes that the administrative authority (e.g. Taiwan IPO) may revoke its previous administrative order and report such revocation to its higher competent authority with due jurisdiction (e.g. MOEA), while it deems the administrative appeal correct and reasonable.

Another new provision of the Administrative Appeal Law of 1998 is to allow a third party who shares the same interest with the appellants to participate in the administrative appeal. The third party will then be bound by administrative appeal award. Moreover, the competent authority shall inform the third party to participate in the administrative appeal proceeding if the authority revokes any administrative order, which decision will influence the right and interest of said third party.

In addition to the litigation to revoke an administrative order, the Code of Administrative Procedure of 1998 adds new litigation types, including the litigation to ensure the administrative right, the litigation to request the grant of a correct administrative order, and the petition to a provisional seizure/attachment. The most influential revision of the new law is to examine a case by hearing the parties’ oral argument rather than reviewing the parties’ written complaints. Since patent cases all relate to technical issues, oral argument can certainly ensure the patentee’s rights and assist the judgement in understanding the truth of disputing issues.

Most of all, the above two laws provide that the competent authority and the Administrative Court shall examine/investigate all relevant evidence ex officio. To be specific, from now on the competent authority and the Administrative Court shall review all advantageous and disadvantageous matters of each case and shall not be limited by the evidence raised by the parties. In the old law, any person who opposes to the published invention shall produce written opposition application together with evidential documentation. The authority will dismiss, without further examine/investigate all evidences ex officio, the above opposition application if the applicant cannot produce sound evidence to prove the opposed matter or prove that the published invention is in violation of the Patent Law. We believe that the effectiveness of the new laws will definitely influence the decision of the competent authority.

The Claim of Priority Corresponding to an Australian Trademark Application Shall also Apply to the Trademark Registration Application from a Non-Australian Citizen
According to the Memorandum executed by Taiwan government with the United States, France, and Australia, the Claim of Priority under the reciprocity principle only applies to the citizen of the above nations. Therefore, it is arguable whether the Claim of Priority shall apply to a trademark registration application by a North European with Australia authority. The Taiwan Intellectual Property Office (“IPO”) discussed this case on January 7 and the conclusion is affirmative.

The applicant claimed his Priority Right under the above Memorandum because the Australia authority also admits the same right in an application with Taiwan authority, in which the applicant is not a ROC citizen. Article 4 of the Trademark Law (revised on November 1, 1998) provides that “priority may be claimed in connection with an application for trademark registration filed in Taiwan if the application is filed within six months from the day following the date of the first application for registration of the same trademark in a country that has a treaty or agreement with Taiwan for reciprocal protection of trademark.” The Taiwan IPO concluded that, under the principle of reciprocity, Article 4 of the Trademark Law applies to the nation that has a treaty or agreement with Taiwan, but not limited to the citizen of such nation. Accordingly, the trademark registration application in Australia by a North European can claim his Priority Right in Taiwan under the principle of reciprocity.

Compensation in Microsoft v. Chung-Ti Technology Reaches Historical High among the Court Decisions of Trademark and Copyright Infringement The Defendant, Chung-Ti Technology Co., Ltd., was entrusted by an English, Arthur Lee, in July 1985 to illegally copied and manufactured Microsoft Office English version 4.3 and Windows 95 as CD-ROM products. The pirated CD-ROM products were consequently delivered to Arthur Lee to be exported into England.

The Bureau of Investigation detected the crime and seized 58,300 sets of pirated CD-ROM products with Microsoft trademark on each cover. The Defendant was indicted for unlawful reproduction of copyrighted work with the intent to sell and trademark infringement. During the trial, Microsoft used to offer to settle this case concerning civil claim in the amount of US$400,000. However, the Defendant turned down Microsoft’s offer by counter-offering of US$200,000.

The High Court recently found the statutory representative of Chung-Ti Technology guilty with two-year imprisonment sentence. In the civil complaint, the High Court also ruled that Chung-Ti Technology should compensate Microsoft with NT$242,324,320 (approximately US$8,077,477) for the infringement upon Microsoft’s copyright and trademark. The compensation awarded in this case has reached historical high among court decisions of trademark and/or copyright infringement cases.

The Defendant has appealed the criminal judgement of this case to the Supreme Court. Although the Defendant can also appeal the civil judgement of this case to the Supreme Court, by doing so, the Defendant has to advance the court cost, which is equal to 1.5% of the claim. It is obvious that the court cost itself would be a great burden on the Defendant. Moreover, the Defendant would never imagine that the award of the judgement is 20 times of what Microsoft has offered to settle during the trial.