As Chinese (Mandarin) is Taiwan's national language, many foreign companies use Chinese translations or transliterations of their foreign brands (trademarks) in order to expand into the Taiwanese market. However, as Chinese characters can have different pronunciations and meanings, there are often multiple ways of translating or transliterating foreign trademarks into Chinese. The Intellectual Property Court recently addressed this issue in an administrative case relating to a trademark opposition.
US President Donald Trump's recent executive order which blacklists Huawei has generated a significant response from Huawei smartphone users, mobile operators and distributors in Taiwan which are handling returned purchases. One of the principal complaints from consumers is that once a Huawei smartphone is deprived of its Android operating system and Google services, it is no longer as 'smart' as it should be.
Despite the fact that Taiwan's broadband market is flooded with over-the-top (OTT) media services, the National Communications Commission has yet to regulate OTT service providers. However, the government recently issued a presidential order to amend the Copyright Act and outlaw malicious online infringement. Since the order's enactment, local cable and satellite channel operators (among others) have identified at least 42 OTT boxes and apps which may be considered illegal under the revised act.
The Supreme Administrative Court recently considered whether a patent lacked an inventive step due to teaching away. The disputed patent had been challenged before the Intellectual Property Office, which had rejected the appellee's invalidation action. Under Taiwan's patent examination guidelines, when determining whether a patent has an inventive step, all of the content disclosed in the prior art must be considered, including any prior art that teaches away from the applied-for invention.
The National Communications Commission (NCC) recently authorised Chunghwa Telecom, the largest telecoms operator in Taiwan, to use aggregate channels for its media-on-demand service. Unsurprisingly, local cable TV operators have protested the NCC's one-sided decision and demanded the same liberalised regulations. While the future of cable TV in Taiwan remains uncertain, over-the-top media services such as Netflix may be the only way to resurrect pay TV businesses.
Chinese telecoms manufacturer Huawei is under additional scrutiny following concerns that its close ties with the Chinese government present national security threats to Taiwan, the United States, Europe and allied countries. Further to the ban on Huawei's investment in Taiwan and the procurement of Huawei products for use in telecoms infrastructure, the Taiwan government is considering similar restrictions on 5G.
The Taipei District Court recently upheld the established case law on companies' use of competitors' trademarks in keyword advertising. In general, the courts deem the use of a trademark non-actionable if it does not appear in the actual ad (ie, someone using the search terms would not assume that the ad belongs to the trademark owner). However, even if a competitor's trademark is not used in a company's ad, its use in keyword advertising might be considered a violation of the Fair Trade Act.
The Taiwan Food and Drug Administration recently published a draft version of the new regulations on patent linkage for public comment. An analysis of the regulations, which set out how patent linkage will be implemented in Taiwan, reveals several aspects that will have a significant impact on patent linkage operations in the region.
By the end of December 2018, the National Communications Commission (NCC) will expand the 5G regulatory sandbox in order to inspire experimental 5G applications and prepare Taiwan for the upcoming release of 5G spectrum for commercial use in 2020. The NCC confirmed that the 3.4GHz to 3.6GHz and 28GHz bands are available for release via spectrum auctions, while further public comments are required regarding the 1,700MHz to 1,900MHz, 2,010MHz to 2,025MHz and 2,355MHz to 2,390MHz bands.
In a recent administrative litigation case regarding a trademark opposition, the Supreme Administrative Court expressed an important view on the adoption of the anti-squatting clause. Compared with previous decisions, the court took a stricter approach to the interpretation of earlier trademark use. Claimants asserting unregistered rights under this clause must demonstrate that the unregistered earlier mark was used in the ordinary course of trade and in accordance with common transaction practices.
Departing from the opinion of the Intellectual Property Office, the Supreme Court recently held that the end date of foreign clinical trial periods in patent term extension applications should be the report date, not the study completion date. The court reasoned that the results of a clinical trial cannot be obtained immediately after the study is completed. Meaningful results can be obtained only after professional analysis and data processing.
Under Article 97 of the Trademark Act, maliciously selling and importing counterfeits is subject to criminal liability. However, defendants are liable only if they act with malicious intent to sell and import counterfeits – where no malicious intent is proved or where it is shown that the defendant simply acted recklessly, they will not be held liable. A recent IP Court decision has clarified the evidentiary requirements for determining criminal liability where the counterfeiting involves non-traditional trademarks.
The National Communications Commission (NCC) recently responded to comments from mobile network operators and equipment suppliers in a public consultation on 5G spectrum planning and auction preparation. The NCC confirmed that, in addition to the 3.4GHz to 3.6GHz bands, the 28GHz, 1,700MHz to 1,900MHz and 700MHz to 800MHz bands are expected to be released for 5G use and will likely be made available through spectrum auctions.
The Intellectual Property Court recently addressed the knowledge and technical level of a person having ordinary skill in the art (PHOSITA). In a decision which diverged from a Supreme Administrative Court judgment, the Intellectual Property Court declared that the examination of a PHOSITA's knowledge and technical level is considered substantial only when the parties raise a claim thereon and if such a determination would affect the judgment.
In patent disputes, claim construction and a person having ordinary skill in the art determination often become the focus of the parties' arguments. Based on the principle of good faith and the doctrine of estoppel, it is common for one party to quote statements made by the other party outside the litigation proceedings as a basis for interpreting the claims or identifying ordinary skill. The Supreme Administrative Court recently assessed whether such statements may be used as evidence.
Under the Patent Act, utility model patents are examined using a formality examination system; the Taiwan Intellectual Property Office is not required to perform a substantive examination of patentability. However, as patent rights are granted without substantive examination, to prevent patentees from IP rights abuse, the Patent Act stipulates that when exercising a utility model patent, the patentee must not issue a warning without presenting a technical evaluation report.
The National Communications Commission (NCC) has initiated a public consultation on 5G spectrum planning and auction preparation. Industry stakeholders and interested parties are invited to give comments in written form by 29 June 2018. NCC Chair Nicole Chan stated that the commission will be submitting its final analysis of the public consultation to the Executive Yuan in July 2018. The premier will then issue a further decision on 5G spectrum.
Consumers will not usually perceive a slogan as an identifier of goods or services until they encounter consistent advertising or other practices by the brand user. Generally, therefore, slogans are not inherently distinctive in existing trademark examining practice in Taiwan. In a recent administrative case, an applicant claimed that because its house mark was extremely well-known worldwide, the Taiwan Intellectual Property Office should treat the trademark to be filed as a regular slogan.
To avoid repeated administrative litigation procedures, Article 33(1) of the Intellectual Property Case Adjudication Act stipulates that the IP Court must consider any new evidence submitted on the same invalidation reasons before the end of the oral debate proceedings. Since the act came into effect in 2008, this article has remained unquestioned. However, the IP Court loosely construed it in a recent judgment.
The National Communications Commission (NCC) released its 2017 Taiwan Communications Market Report in April 2018. The report disclosed the progress being made in preparation for the 5G spectrum auction, during which the NCC will identify that the 28 gigahertz (GHz) band, as well as the 3.4GHz and 3.6GHz bands, should be available for auction in 2020, aiming for large-scale 5G application.