本 期 提 要 HEADLINES
Amendments to Articles 77-1 & 79 of Trademark Law
The Executive Yuan had previously
on March 20, 2002 submitted draft amendments to Articles 77-1 and 79 of the
Trademark Law for deliberation by the Legislative Yuan, in order to be
consistent with the Administrative Procedures Law, which had come into force
on January 1, 2001. These
amendments are now promulgated by order of the President on May 29, 2002.
The revised articles are as follows:
Article 77-1: The following principles shall guide application of new or old provisions of this Law, in relation to objections to, determination of, and revocation of trademarks:
1. In relation to objection to trademark matters, the law applicable as at time of determination of objection shall apply.
2. In relation to determination of trademark matters, the law applicable as at time of registration shall apply, provided that its application or submission for determination procedures shall be those procedures applicable as at time of determination of trademark.
In relation to revocation of trademark matters, the law applicable as
at time of determination of revocation shall apply.
Article 79: This Law shall enter into force as from date of promulgation,
except for Articles 4, 5, 23, 25, 34, 37 and 61 amended on May 7, 1997,
whose date of entry into force shall be separately determined by the
The Executive Yuan had already determined that the aforementioned Articles 4, 5, 23, 25, 34, 37 and 61 would enter into force on November 1, 1998.
IPO Proposes to Amend Articles 23 and 42 of "Copyright Intermediary Organization Regulations"
In order to enable users to
ascertain scope of copyright managed by copyright intermediary
organizations, the fee charged, as well as to provide efficient online
search services, the IPO proposes to require, in Article 23 of these
Regulations, that the copyright index and fees schedule prepared by
copyright intermediary organizations should be made available in writing as
well as via the Internet. This
will enable users to discuss license agreements with these intermediary
organizations and to agree upon license fees.
In order to effectively monitor
business carried out by copyright intermediary organizations, such
organizations will also be responsible for ensuring the copyright index made
available to the public is correct. The
IPO also proposes to stipulate in Article 42 of the Regulations that where
an intermediary organization violates Article 23, the competent copyright
authorities will issue an order for rectification as well as possibly impose
an administrative fine. The
fine may be imposed consecutively until the violation is rectified.
The IPO had held a public hearing on May 28 to solicit public comments concerning the proposed amendments.
IPO Explains "揚州炒飯(Yangzhou Fried Rice)" Trademark Issue
The Economic Administrative &
Management Bureau of Mainland China had recently approved registration of
the trademark "揚州炒飯(Yangzhou Fried Rice)", attracting
media attention and industry concerns.
Taiwan's IPO had recently indicated that "Yangzhou Fried
Rice" is customarily known as the popular name for a dish in Taiwan,
and its use in respect of food and beverage services or fried rice products
is a common name in respect of these goods or services.
Under Paragraph 10 of Article 37 of Taiwan's Trademark Law, it will
not be registrable. If a
Mainland Chinese business intends to apply for registration of "Yangzhou
Fried Rice" as a trademark in Taiwan, according to the aforementioned
Article the application will not be approved.
IPO's search of the trademark database also shows that no one has
previously registered "Yangzhou Fried Rice" as a trademark in
As for the question of whether owner of the "Yangzhou Fried Rice" trademark in Mainland China will be able to prevent Taiwanese businesses from using the name, the IPO indicated that as each country has the right to determine whether it will allow any particular trademark registration, trademark owners only have the right to prevent use of the trademark by other people in the country of registration. In other words, the owner of "Yangzhou Fried Rice" trademark registered in Mainland China will only be able to prevent others from using the trademark in China, and will not be able to preclude Taiwanese businesses from using the name. Therefore the industry need not be unduly alarmed.
"Optical Media Joint Investigation Taskforce" Raids Illegal Manufacturers
The Optical Media Management Law
had entered into force on November 16, 2001.
Pursuant to Articles 23, 26 and 27 of this Law, optical media
manufacturers that were in business before that date must file declarations
with the competent authorities within 6 months of that date (i.e. before May
15) in respect their manufacturing equipment and source identification code.
They must also apply for manufacturing permits.
For the purposes of truly
enforcing the Law and in accordance with the "Enforcement Guidelines
for Optical Media Management Matters & Investigation Procedures", a
joint investigation taskforce was formed, comprising of the Industrial
Development Bureau, the Board of Foreign Trade, the Bureau of Standards,
Metrology and Inspection (BSMI), the Intellectual Property Office and the
Anti-Counterfeiting Taskforce, in order to carry out inspections of optical
media manufacturers. Since
commencement of the inspections on January 15, 2002, to date the Taskforce
had inspected 62 manufacturers, generally for the purposes of promoting
compliance with the Law and inspecting the work practices.
On 5 occasions the police and prosecutorial departments had
cooperated in raiding illegal manufacturers, and one manufacturer had been
issued with an administrative order pursuant to Article 17 of the Law.
The manufacturer had been ordered to cease production, to pay a fine
of NT$2 million, and its products and semi-finished products were
The MOEA had confirmed that starting from May 16, 2002, in principle it will conduct regular inspections of registered manufacturers at half-yearly intervals. In cooperation with police and prosecutorial departments, the Taskforce will conduct random inspections and re-inspections of those unregistered manufacturers that have been investigated or were subject to complaints, until they are ultimately closed down.
Fair Trade Commission Forms "Software Market Monopoly Investigation Taskforce"
The general public has recently
expressed serious concerns about the misuse of monopoly status by software
vendors. In this regard, the
Fair Trade Commission of the Executive Yuan has established a "Software
Market Monopoly Investigation Taskforce", and the Commission's Deputy
Commissioner CHENG will serve as its convener.
The FTC has indicated that respect for intellectual property rights
is a national policy, and the Commission also values proper exercise of
intellectual property rights. However,
acts that exceed that proper exercise may constitute violations of the Fair
As this is a multi-faceted issue,
the FTC has recently invited relevant departments to hold a public hearing,
so as to clarify issues related to IPR, software market monopoly, and misuse
of monopoly. The FTC has also
reviewed U.S., Japan and E.U. practices in this regard, as well as assigned
personnel to visit software associations and the III for professional
opinions. It has also actively
sought clarification concerning the dispute between Internet cafe operators
and Microsoft regarding software licensing.
According to the May 21 report by
CNA, the FTC had summoned Microsoft Taiwan on May 20 to hear Microsoft's
explanations concerning its pricing strategies, relationships with
distributors, and pricing by its distributors.
The FTC has indicated that it will investigate whether Microsoft
Taiwan has imposed unreasonable pricing policies by improper use of its
monopoly position in the market, whether it has been using packaged sales to
require consumers to purchase products they did not wish to purchase, and
whether it has refused to provide after-sale services to customers who
refuse to upgrade. In the
future the FTC will continue to conduct independent and impartial
investigations in relation to these issues.
The FTC has also pointed out that presently only the U.S. and E.U. have commenced investigations concerning Microsoft's abuse of monopoly position. The U.S. investigations have been ongoing for 4 years, but still without final conclusions. The entire international community will now be watching Taiwan's investigations, and therefore the FTC must be even more cautious and detailed in its gathering of evidence. Therefore it would be impossible to conclude the investigations within a short time.
Taiwan Comes Third in Approved Applications for U.S. Patents
Based on statistics released by
the U.S. Patent and Trademark Office in respect of approved patent
applications during the year 2001, Taiwan is third in receiving the greatest
number of approvals for U.S. patents with 6544 applications, ranking behind
Japan's 34891 applications and Germany's 11894 applications.
For years 1999 and 2000 the top 3 countries were also Japan, Germany
and Taiwan. In 1999 Taiwan had
received approvals for 3693 applications, behind Japan's 32513 applications
and Germany's 9896 applications; in 2000 Taiwan had received approvals for
4667 applications, behind Japan's 32922 applications and Germany's 10822
applications. U.S. patents
received by Taiwan are primarily related to the semiconductor manufacturing,
electronics, sports equipment, manual tools and information industries.
Amongst the U.S. patents received
by Taiwan during the year 2001, 5371 were invention patents, far exceeding
the number of new design patents (1168).
Out of these, 1879 invention patents are held by individuals (35%),
showing that patents obtained by Taiwan in U.S. are primarily invention
patents, which are mostly held by businesses.
In addition, the top 10 Taiwanese
companies for obtaining U.S. patents are respectively: UMC (576 patents),
TSMC (527), Honhai (309), ITRI (219), Winbond (113), VIS (102), NSC (78),
Mosel (57), Macronix (37) and Shihta Circuits (37).
According to statistics released by the IPO, amongst the patent applications approved and gazetted by Taiwan during the year 2001, 19289 were owned by foreign applicants. The top 5 businesses were: IBM (472 patents), Panasonic (458), NEC (437), Hitachi (378) and Samsung (345). The top 5 domestic companies with the greatest number of approved applications were: TSMC, Honhai, UMC, ITRI and Macronix.
Patent & Trademark Applications for 1st Quarter of 2002
Based on statistics released by
the IPO in respect of 1st quarter of 2002, a total of 12,003 new patent
applications were filed this quarter, representing a decrease of 21.34%
compared to the same period last year.
The numbers of invention, new utility model and new design
applications have all decreased, respectively by 17.68%, 22.13% and 32.73%.
Applications by foreign applicants fell by 18.93% compared to the
same period last year, while applications by Taiwanese applicants fell by
23.28%. The IPO indicated that
this may be because the patent fees were increased as of January 1, 2002,
resulting in a number of applications being filed before the end of 2001, so
that the numbers this quarter show a falling trend.
The number of gazetted patents was 10,299, representing a slight
decrease of 11.29% from last year. The number of invention patents fell the
least, being 2.43%, while new utility model and new design patents both fell
by approximately 20%.
The number of new trademark applications this quarter was 13,593, representing a slight increase of 3.34% compared to the same period last year. The number of gazetted trademarks was 14,808, representing a slight increase of 5.31% compared to the same period last year. The number of dismissals, extensions and certificate issues for trademarks have all fallen, while other types of cases show increases.