I. [TW]　IPC Court Rules “Chika Video Game” Mark Does Not Infringe Sony’s “△〇╳□” Button Symbol Rights

II. [TW]   2026 Supreme Administrative Court Judgment: Clarifying the Boundary of “Essential Technical Features” of Patent Claims

III. [TW]  Taiwan IP and Commercial Court: A Mere Change in Groove Opening Direction May Not Support Inventive Step

I. IPC Court Rules “Chika Video Game” Mark Does Not Infringe Sony’s “△〇╳□” Button Symbol Rights

In Judgment No. 114-Xing-Shang-Su-11 (promulgated on July 23, 2026), the Intellectual Property and Commercial Court (IPC Court) affirmed the Taiwan Intellectual Property Office’s (TIPO) decision dismissing Sony’s opposition. The Court ruled that a composite mark containing simple geometric symbols and text has an extremely low degree of similarity to Sony’s classic “△〇╳□” PlayStation controller button design. Furthermore, the evidence presented was insufficient to prove that Sony’s button symbols had achieved the status of a well-known mark, thereby creating no likelihood of confusion or dilution.

In 2022, the intervener applied to register the mark “ ” for retail, wholesale, and online shopping services in Class 39 (Note: reclassified in Class 35 services). Sony subsequently filed an opposition, arguing that since launching the PlayStation console in 1994, it pioneered using “△〇╳□” on controller buttons. Sony asserted that through extensive and long-term use and marketing, this symbol combination acquired high distinctiveness and became a well-known trademark indicating Sony as the source. Sony claimed that the intervener intentionally used identical symbols combined with a controller design in bad faith to free-ride on Sony’s reputation, violating Article 30, Paragraph 1, Subparagraph 10 (likelihood of confusion) and 11 (protection of well-known marks) of the Trademark Act.

The IPC Court rejected Sony’s arguments and clarified the evaluation standards for the distinctiveness and well-known status of basic geometric shapes:

1. Dominant Portion and Overall Observation: “△,” “〇,” “╳,” and “□” are simple, basic geometric shapes or symbols commonly used by the general public, possessing low inherent distinctiveness. In addition to irregularly arranged geometric shapes, the contested mark prominently features speakable Chinese characters “曲卡電玩” (Chika Video Game) and English text “CHIKA,” which constitute the dominant portion that consumers focus on for source identification. The two marks are clearly distinguishable in appearance, concept, and pronunciation, resulting in an extremely low degree of similarity.
2. Functional Nature and Proof of Well-Known Status: Printing “△〇╳□” on game controller buttons is primarily perceived by consumers as operational indicators or decorative product features, making it difficult to establish as trademark use indicating service origin. Additionally, Sony prominently displayed its primary brand mark, “PlayStation,” on its products, while withholding relevant sales data as trade secrets. Consequently, the available evidence failed to prove that the standalone graphic mark had become widely known to the general public in Taiwan as a well-known mark.

Furthermore, the Court pointed out that third parties have also registered trademarks containing similar geometric shapes, meaning Sony cannot monopolize the use of basic geometric symbols. This ruling offers a vital practical takeaway for the consumer electronics and gaming industries: even if a brand has used specific “graphics” for decades, asserting them as an exclusive, well-known trademark requires concrete domestic marketing and sales data demonstrating that the graphics “function independently as a source identifier.” Otherwise, it remains difficult to overcome comparisons against composite marks featuring prominent textual elements.

References

Hyperlink: Judicial Yuan Judgment System

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

II. 2026 Supreme Administrative Court Judgment: Clarifying the Boundary of “Essential Technical Features” of Patent Claims

This case concerns an invalidation action against an invention patent titled “Stapler with Flat-Clinch Means” (the “Subject Patent”).  The invalidation petitioner argued that Independent Claim 1 of the Subject Patent failed to recite the “top plate” structure.  Because the “top plate” was allegedly an “essential technical feature” of the Subject Patent, the petitioner argued that the Subject Patent violated the clarity requirement under Paragraph 3, Article 26 of the then-current Patent Act (effective July 1, 2004).  Dissatisfied, the patentee filed an administrative appeal and administrative lawsuit.  After the lawsuit was dismissed by the Intellectual Property and Commercial Court, the patentee appealed to the Supreme Administrative Court.  In this administrative appeal judgment, the Supreme Administrative Court overturned the lower court’s ruling and revoked both the appeal decision and the original administrative disposition.

The Supreme Administrative Court established the definition of “essential technical features” as technical features that are indispensable for an invention to solve a problem (i.e., a problem existing in the prior art).  Furthermore, when determining whether a claim is clearly written, account must be taken of the disclosure of the patent specification, the common general knowledge at the time of filing, and the understanding of a person ordinarily skilled in the art regarding the scope of the patent claims at the time of filing.  If the technical content defined by a claim can solve the aforementioned technical problems and achieve the objectives of the Subject Patent, the patent claim shall be deemed clear.

In this case, the Subject Patent aims to solve the problems of conventional staplers being “laborious to operate” and having “complex structural components”.  Although the specification of the Subject Patent describes a preferred embodiment that includes a “top plate” (which is not recited in the claims), Claim 1 of the Subject Patent has clearly defined that “the transmission member is coupled to the handle to form an interlocking relationship”.  Through structures such as the transmission member and the handle, this interlocking relationship is capable of solving the aforementioned technical problems (i.e., conventional staplers being “laborious to operate” and “complex in components”), thereby achieving the patent’s objectives.  Therefore, the Supreme administrative Court determined that the “top plate” is not an indispensable technical feature for solving the problems and should not be identified as an “essential technical feature” of the claims.  Consequently, even though Claim 1 of the Subject Patent does not recite the “top plate” structure, it does not violate the clarity requirement.

References

Hyperlink: Judicial Yuan Judgment System

Jason Hung

Patent Attorney of RichIP Group

III. Taiwan IP and Commercial Court: A Mere Change in Groove Opening Direction May Not Support Inventive Step

Taiwan IP and Commercial Court Judgment No. 115-Xing-Zhuan-Su-2 concerns an invalidation action against Utility Model Patent No. M654401, titled “Connecting Member and Eyeglasses Having the Same.” In this case, the Taiwan Intellectual Property Office originally held that the invalidation action was not sustained as to claims 1 and 6. On administrative appeal, however, the Ministry of Economic Affairs found that Evidence 2 was sufficient to prove lack of inventive step and revoked that portion of the original disposition. The patentee then filed an administrative lawsuit, which was dismissed by the Court.

Both the patent at issue and Evidence 2 related to screwless eyeglass connection structures. Each used a hook or latch on a connecting member to connect the frame and the temple. The principal difference lay in the opening direction of the groove or recess: in the patent at issue, the groove opening faced the second extension portion, whereas in Evidence 2, the recess opening faced the outer side of the first connecting member. The patentee argued that this directional difference prevented disengagement when pulling or rotational forces were applied, thereby achieving advantageous effects of a firm connection and improved durability.

The Court did not accept that argument. Although the specification

stated that the invention aimed to facilitate assembly and improve durability, the Court found that the disclosure mainly described a screwless connection achieved by the connecting member. It did not specifically explain how the opening direction of the groove itself further improved connection stability or durability. The alleged anti-disengagement effect raised during litigation was therefore treated as a belated and speculative explanation, rather than an advantageous effect capable of supporting inventive step.

The judgment again confirms that advantageous effects may be considered in assessing inventive step, but only if they are technical effects directly produced by the technical means of the invention. Such effects must be expressly disclosed in the specification, claims, or drawings as filed, or at least be derivable by a person having ordinary skill in the art from the disclosure as filed. If an effect is only articulated during invalidation or litigation, without a clear link to the originally disclosed distinguishing feature, the Court may decline to rely on it in the inventive step analysis.

For drafting and prosecution practice, if a particular direction, relative position, force relationship, or material arrangement may later serve as the distinction over prior art, the application should explain its technical function and effect at the time of filing. Otherwise, even an actual structural difference may be characterized as a simple modification readily achievable by a person skilled in the art, rather than a basis for inventive step

References

Hyperlink: Judicial Yuan Judgment System

]]> https://www.richipteam.com/en/newsletter-no-0021/?utm_source=rss&utm_medium=rss&utm_campaign=newsletter-no-0021 Tue, 14 Jul 2026 03:59:43 +0000 https://www.richipteam.com/en/?p=15443 News Topics

I. [TW]　Taiwan Supreme Administrative Court Rules Multiple Embodiments within a Single Prior Art Reference Can Be Combined to Defeat Inventiveness

II. [TW]　Does TIPO have to accept an amendment submitted after the specified time period but before the rejection decision is served?

III. [TW]　Taiwan Supreme Administrative Court: Claim Construction Should Not Stop at the Literal Wording, Nor Should Specification Content Be Directly Imported

I. Taiwan Supreme Administrative Court Rules Multiple Embodiments within a Single Prior Art Reference Can Be Combined to Defeat Inventiveness

In its Judgment No. 113-Shang-Zi-233 (promulgated on April 29, 2026), the Supreme Administrative Court affirmed the lower court’s judgment, ruling that when evaluating the inventiveness (progressiveness) of an invention patent, technical contents disclosed in different embodiments within a single prior art reference may be combined with each other to establish a lack of inventiveness, provided that such technical contents share a common role and function.

The dispute arose from an invalidation action filed by the intervener (Cublec Corp.) against an invention patent owned by Orange Electronic. Following its review, the Intellectual Property Office (TIPO) found that the patent lacked inventiveness in view of a single prior art reference, and thus issued a disposition sustaining the invalidation and revoking the patent. Dissatisfied, the patentee appealed, centering its core argument on the claim that the lower court erred by forcefully piecing together and combining separate technical features scattered across entirely distinct embodiments (the 1st, 2nd, 4th, and 10th embodiments) of a single reference, without demonstrating any “motivation to combine” among these independent embodiments, which violated the Patent Examination Guidelines and constituted an error in law.

The Supreme Administrative Court rejected the patentee’s arguments and clearly clarified the legal standard for evaluating inventiveness. The Court pointed out that an inventiveness assessment may involve combining not only multiple different prior art references, but also “technical contents from different parts of a single prior art reference.” As long as the technologies disclosed in the various embodiments of that single reference share a common role and function, and there are no incompatible conflicts that would prevent their integration, a person having ordinary skill in the art (PHOSITA) would be motivated to combine them.

References

Hyperlink: Judicial Yuan Judgment System

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

II. Does TIPO have to accept an amendment submitted after the specified time period but before the rejection decision is served?

In Taiwan patent prosecution, if an applicant misses the specified time period for responding to an Office Action but files an amendment before the official administrative decision is served, is the Taiwan Intellectual Property Office (TIPO) obligated to accept it?  The Taiwan Intellectual Property and Commercial Court (the “IPCC”) provided a clear stance on this issue in a 2026 administrative judgment.

During the re-examination stage of an invention patent application, the plaintiff (the applicant) received an Office Action from the defendant (TIPO) specifying a deadline of May 5, 2026, to file a response or amendment.  The plaintiff delayed and did not file the amendment until May 16, 2026.  TIPO refused to accept the late-filed amendment and issued a decision of rejection.  The plaintiff disagreed and subsequently filed an administrative lawsuit after their administrative appeal was dismissed.

The IPCC dismissed the plaintiff’s lawsuit, and its reasoning can be summarized in the following three key aspects:

1. Article 43 is a Lex specialis (special law) to Article 17 and Shall Apply Preferentially

Article 17, Paragraph 1 of the Patent Act states: “Unless otherwise provided in this Act, where an applicant fails to comply within a specified time period, the application shall be dismissed.”  Its proviso further states: “However, if the delay is remedied before the dismissal decision is served…, it shall still be accepted”.

The IPCC pointed out that Article 43 explicitly restricts applicants to filing amendments only within the specified time period in order to prevent them from delaying the examination process through continuous amendments.  Therefore, Article 43 constitutes the “unless otherwise provided” exception in Article 17, taking precedence and rendering the proviso of Article 17 inapplicable in this context.

2. “Before the decision is made,” not “Before the decision is served”

Regarding the stipulation in Article 17, Paragraph 1 that a late amendment shall still be accepted if remedied prior to the administrative decision, the IPCC clarified that this phrase actually refers to the time before the decision is made, not before it is served to the applicant.

In this case, the plaintiff submitted the amendment on the exact same day TIPO issued the rejection.  That is, when the plaintiff filed the amendment, TIPO had already made the decision and had no way of knowing that the applicant would submit an amendment.  Therefore, the proviso of Article 17, Paragraph 1 does not apply.

3. Exceptional acceptance of amendments must not delay the examination process

According to the Patent Examination Guidelines, a late-filed amendment may only be exceptionally accepted if it does not require a re-search (e.g., merely deleting rejected claims while retaining allowable claims) and its acceptance “does not delay the examination process.

Here, the plaintiff’s amended claims introduced a clarity issue, violating Article 26, Paragraph 2 of the Patent Act.  The IPCC held that this was not a minor formal error, if TIPO had accepted it, it would inevitably have had to issue another OA to clarify the issue, thereby causing an unwarranted delay.  Therefore, TIPO’s refusal to accept the amendment was entirely lawful.

In conclusion, it should be noted that this judgment is not yet final.  If the plaintiff files an appeal, these legal opinions will be subject to further review by the Supreme Administrative Court.

References

Hyperlink: Judicial Yuan Judgment System

Jason Hung

Patent Attorney of RichIP Group

III.Taiwan Supreme Administrative Court: Claim Construction Should Not Stop at the Literal Wording, Nor Should Specification Content Be Directly Imported

Supreme Administrative Court Judgment No. 114-Shang-Zi-160 addresses the question of how claims should be construed in invention patent applications. What makes this judgment noteworthy is that, on one hand, the Court reaffirms that the scope of protection of an invention patent right is, in principle, governed by the claims; yet on the other hand, it also cautions that claim construction should not remain mechanically fixed on the literal text, but should instead be undertaken by a person having ordinary skill in the art (PHOSITA), who, by referring to the specification and drawings and taking into account the purpose of the invention, the problem to be solved, the corresponding technical means, and their effects, gives the technical features the broadest reasonable interpretation.

The Court noted that the function of the claims is to set forth the technical features constituting the invention, and thereby define the scope of patent protection. Accordingly, matters not recited in the claims are, in principle, outside the scope of protection. However, the specification’s description of the claims is often merely a necessary elaboration of the claimed scope, and the wording may in some respects lack full clarity. In such circumstances, adhering rigidly to the surface meaning of the claim language may instead fail to correctly capture the true substance of the technical features within the overall context of the invention.

For this reason, the Court’s focus is neither “looking only at the claims” nor “substituting the specification for the claims,” but rather requiring that an appropriate boundary be maintained between the two: when construing the claims, the specification and drawings may be consulted to understand the reasonable meaning and scope of the technical features, but technical features that appear in the specification or drawings yet are not recited in the claims must not, conversely, be imported directly into the claims as limitations. In other words, the Court in this case reaffirmed the “prohibition against reading limitations from the specification into the claims” (the anti-importation principle), which must be observed in claim construction.

From the standpoint of patent prosecution and dispute handling, this judgment offers two quite practical reminders. First, when drafting claims, applicants should still endeavor to clearly set forth the technical features they genuinely intend to protect, rather than over-relying on the expectation that the specification can later supply the critical boundaries. Second, when asserting claim construction arguments during prosecution or litigation, while the specification and drawings may certainly be invoked to explain the technical context, particular care must be taken not to treat details that exist only in the embodiments or descriptive portions as necessary limitations of the claims. Otherwise, this risks improperly narrowing the publicly announced scope of the right, to the detriment of the patentee’s ability to assert that right.

References

Hyperlink: Judicial Yuan Judgment System

Frank Tseng

Patent Counselor of RichIP Group

I. [TW]　Domain Plus Graphics Still Ruled Highly Similar: IPC Court Affirms Trademark Rejection

II. [TW]　Supreme Court Clarifies Admissibility of Evidence for Patent Infringement

III. [TW]　Does a “Mere Full Company Name” Possess Trademark Distinctiveness? —Judgment of the Intellectual Property and Commercial Court

I. Domain Plus Graphics Still Ruled Highly Similar: IPC Court Affirms Trademark Rejection

The Intellectual Property and Commercial Court, in its Judgment No. 114-Xing(行)-Shang(商)-Su(訴)-47, affirmed the original disposition, ruling that if the dominant portion of a trademark is highly confusingly similar to a prior filed trademark, the likelihood of confusion among consumers cannot be ruled out, even with the addition of a domain suffix (“.com”) or ornamental graphics.

The plaintiff in this case (Mainland China’s Yunlianwang Technology Co., Ltd.) applied to register the trademark “ ” for freight forwarding and transportation services in Class 39. After review, the Intellectual Property Office (TIPO) rejected the application on the grounds that the mark was confusingly similar to the cited registered trademark ” ” and that the designated services highly overlapped. TIPO determined that because the two primary factors—”similarity of marks” and “similarity of services”—were highly satisfied, the legal threshold required for other auxiliary factors was directly lowered, thereby necessitating the refusal.  Dissatisfied, the plaintiff filed a lawsuit, arguing that its mark was sufficiently distinguishable from the cited mark because it included the additional word “to” in the middle, featured the domain format “.com,” incorporated Simplified Chinese characters, and utilized an upper-and-lower curved swirl design, making it more than a purely descriptive phrase.

The Intellectual Property and Commercial Court rejected the plaintiff’s arguments. The Court pointed out that under the principle of overall observation, while a trademark must be evaluated as a whole, the consumer’s retained impressions and source identification still rely on the prominent and dominant portion of the mark. In this case, “.com” is a generic top-level domain, the Simplified Chinese characters “运连网” merely describe transportation services, and the upper-and-lower curved swirl lines visually wrap and emphasize “freight.” Therefore, “Gotofreight” constitutes the dominant portion of the entire mark.

Comparing this dominant portion with the cited trademark “GoFreight,” the beginning and ending are identical, with only the minor difference of whether “to” is present in the middle, resulting in a high degree of similarity in appearance, phonetics, and concept. The Court further clarified that “GoFreight” is an ungrammatical English combination that creates a novel impression, thereby possessing considerable distinctiveness rather than being merely descriptive. Since Taiwan’s trademark registration adopts a “first-to-file” principle, trademarks registered earlier are entitled to broader protection. Consequently, the Court found a clear likelihood of confusion and ruled against the plaintiff.

References

Hyperlink: Judicial Yuan Judgment System

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

II. Supreme Court Clarifies Admissibility of Evidence for Patent Infringement

In Supreme Court Civil Judgment No. 1778 of 2024, the Taiwan Supreme Court vacated in part and remanded a patent infringement case involving glass-cutting wheel products. What makes this decision noteworthy is not only the underlying patent dispute, but also the Court’s reminder that evidentiary procedure can have a very real impact on both infringement findings and damages.

Although the lower court had already ruled on certain issues, including inventive step and design patent infringement, the Supreme Court found that the proceedings on Patent 2 infringement and damages still required further procedural scrutiny.

Two points stand out in particular. First, a measurement report commissioned by a party outside the litigation is not automatically excluded merely because it is not a court-appointed expert opinion. Depending on how the report was prepared and argued in the case, it may still be assessed as documentary evidence. Second, where customs records are relevant to calculating damages but also involve trade secret concerns, courts should consider procedural tools such as confidentiality orders to balance confidentiality with the opposing party’s right to be heard, rather than relying on excessive redaction that undermines meaningful argument.

Overall, the decision offers a practical reminder: in patent litigation, procedural issues are not always secondary. How evidence is introduced, reviewed, and protected may significantly influence the final outcome.

References

Hyperlink: Judicial Yuan Judgment System

Frank Tseng

Patent Counselor of RichIP Group

III. Does a “Mere Full Company Name” Possess Trademark Distinctiveness? —Judgment of the Intellectual Property and Commercial Court

This case (i.e., 2025 Administrative Trademark Judgment No. 36 of the Intellectual Property and Commercial Court) involves an administrative litigation triggered by “Taiwan Zhenyuan Business Consulting Co., Ltd. (hereinafter the Plaintiff),” which attempted to register its “full company name” directly as a trademark without any font or graphic design.  However, the Taiwan Intellectual Property Office (hereinafter the Defendant) rejected the application on the grounds of “lacking distinctiveness.  “Dissatisfied with this rejection, the Plaintiff filed an administrative appeal, which was dismissed, prompting the Plaintiff to file the current administrative litigation with the Intellectual Property and Commercial Court (hereinafter the IPCC).

The judgment in this case establishes the practical view that “a full company name devoid of any stylization generally lacks inherent trademark distinctiveness.”

 IPCC’s Opinion:

The IPCC’s opinion aligns closely with that of the Defendant, holding that according to general social perception, the primary function of a mere full company name is to represent a “business entity.”  It cannot lead consumers to directly perceive it as a sign indicating the source of goods or services.  Therefore, the Plaintiff’s lawsuit was dismissed.  The IPCC’s specific reasoning is as follows:

1. Mere full company names lack inherent distinctiveness: The trademark in this case consists of simple horizontally written Chinese text “Taiwan Zhenyuan Business Consulting Co., Ltd.”, where “Co., Ltd.” merely indicates the corporate organizational form.  The overall primary impression given to consumers is a “representation of a business entity’s name,” which prevents people from directly recognizing it as a trademark indicating the source of services. Therefore, according to Article 29, Paragraph 1, Subparagraph 3 of the Trademark Act, it indeed lacks trademark distinctiveness.
2. Compliance with the principles of legal reservation and proportionality: The phrase “other signs devoid of distinctiveness” in the Trademark Act is an indeterminate legal concept, and legislators intentionally left room for interpretation to the administrative agency.  The establishment of Examination Guidelines by the Intellectual Property Office to unify objective examination standards does not violate the principle of legal reservation.  Furthermore, the Guidelines do not completely exclude company names from having inherent distinctiveness.  If a company name undergoes special design in typography or arrangement, it still has the opportunity to be deemed distinctive.  In this case, the Plaintiff used the most typical plain-text full name, which led to the finding of lacking distinctiveness; therefore, it does not violate the principle of proportionality.
3. Compliance with the principle of equality: The examination standards distinguishing “full company names” from “trademarks” have been operating in practice for over 15 years and are familiar to and followed by users of the trademark system.  Based on the principle of administrative self-binding and the principle of equality, the Defendant’s rejection of mere unstylized full company names is consistent with past determinations, constitutes no discriminatory treatment, and accords with general social perception and market trade practices.

Trademarks and company names have different legal functions: The protection purposes of the Trademark Act and the Company Act are different.  In addition to protecting trademark rights, the legislative purpose of the Trademark Act also takes into account consumer interests and fair market competition.  To avoid imposing excessive restrictions on competitors, the current Trademark Act intentionally separates the concepts of “trademarks” and “company names.  “The restrictions on the scope of protection are relaxed only in special exceptions involving “well-known trademarks.”  One cannot simply conclude that an unstylized full company name as a whole is equivalent to a trademark just because the company name contains original text.

References

Hyperlink: Judicial Yuan Judgment System

Jason Hung

Patent Attorney of RichIP Group

I. [TW]　Taiwan Supreme Administrative Court Clarifies “Same Design” Standard for Priority Claims in Design Patents

II. [TW]　When “Integrally Formed” Meets Deemed Loss of Novelty: Lessons from a Safety Syringe Patent Dispute

III. [TW]　Is “Direct Substitution” a Criterion for Determining “Lack of Novelty based on Legal Fiction”? —2025 Judgment of the Taiwan Supreme Administrative Court

I. Taiwan Supreme Administrative Court Clarifies “Same Design” Standard for Priority Claims in Design Patents

In Tsai v. Intellectual Property Office, No. 113-Shang(上)-Zi(字)-167 (Supreme Admin. Ct. March 4, 2026), the Supreme Administrative Court upheld the original decision, holding that differences in the number of drawings do not, per se, invalidate a priority claim.

This case arose from a design patent for a “vehicle headlamp” filed by Mercedes-Benz Group AG. The patentee claimed priority from a German application; however, the German priority application included only a perspective view and four orthogonal views (front, top, and right-side views), whereas the subsequent application filed in Taiwan included a perspective view and a complete set of six orthogonal views in accordance with Taiwan’s requirements at the time.

The petitioner argued that because the Taiwan application revealed more views than the German priority case, they were not the “same design” under the Patent Act, and thus the priority claim should be denied.

The Supreme Administrative Court rejected this formalistic approach. The Court clarified that the “same design” requirement for priority does not demand that the drawings and text be identical in every formal detail. Instead, the analysis must turn on whether a person having ordinary skill in the art (PHOSITA) would conclude that the overall visual impression is the same after comparing the subsequent application’s drawings with the full content of the priority document.

The Court noted that as long as the essential design features are sufficiently disclosed in the priority case, the inclusion of additional views in the later application—especially those required by local regulations (such as six-sided views) that do not alter the overall visual impression—will not defeat a priority claim.

This decision provides important practical flexibility and protection for international applicants who must accommodate differing drawing requirements across jurisdictions.

References

Judicial Yuan Judgment System

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

II. When “Integrally Formed” Meets Deemed Loss of Novelty: Lessons from a Safety Syringe Patent Dispute

In IP Administrative Judgment No. 34 of 2025, the Intellectual Property and Commercial Court of Taiwan addressed an invalidation dispute involving a patent directed to a safety syringe and needle hub. The court first restated the basic concept of secret prior art novelty: if a claimed invention is identical to the content disclosed in an earlier-filed but later-published patent application, the invention is not patentable. The term “identical” does not refer only to literal identity, but also covers differences that are merely in the form of expression or technical features that can be directly substituted based on common general knowledge in the relevant art.

In this case, the claims actually disputed by the parties (the plaintiff/patentee and the defendant, the Taiwan Intellectual Property Office) were Claims 1, 3, 4, and 7. With respect to disputed Claim 1, the patentee argued that the integrally formed / integrally connected design of the hub body and latch portion provided greater safety and stability than the separable structure disclosed in Evidence 1, in which an adapter was fitted onto the needle seat, and also reduced the risk of detachment and liquid leakage during removal. The court was not persuaded. It held that, in assessing secret prior art novelty, there is no need to compare whether the substituted overall technical means produces different effects; as long as the differing feature is one that can be directly substituted based on common general knowledge, the two disclosures may still be regarded as identical in substance. Accordingly, because both the separable structure in Evidence 1 and the integrally formed structure of disputed Claim 1 served the function of positioning the safety sleeve, the court concluded that changing the separable fitted structure of Evidence 1 into an integrally formed / integrally connected structure was merely a direct substitution based on common general knowledge. Disputed Claim 1 therefore lacked secret prior art novelty.

As to the remaining disputed claims, the court likewise rejected the patentee’s arguments. For disputed Claim 3, the court found that the feature of “the first end portion pressing against the latch portion” was not substantively different from the “interlocking engagement between the first annular rib and the elastic wing” in Evidence 1. For disputed Claim 4, the court held that the claimed “blocks” and “thinned sections” corresponded to the large ring portion and elastic wings in Evidence 1, and that the differences were merely formal or linguistic. For disputed Claim 7, the court similarly concluded that the integrally connected structure and thinned-section features either constituted direct substitutions based on common general knowledge or reflected only formal differences, while remaining substantively the same as the disclosure of Evidence 1. On that basis, the court found that Evidence 1 was sufficient to show that disputed Claims 1, 3, 4, and 7 all lacked secret prior art novelty, and none of the plaintiff’s arguments was accepted.

This judgment offers an important practical reminder for patent prosecution and patent disputes. If an applicant wishes to include, and later rely on, a particular feature as a meaningful distinction over the prior art, such as the “integrally formed” feature in this case, it is advisable not only to define that feature properly in the claims, but also to explain clearly in the specification the concrete technical effects brought about by that configuration. Otherwise, if the feature merely changes an existing multi-part structure into an integral one, and there is no objective evidence showing a technical significance beyond a direct substitution based on common general knowledge, that difference may still be insufficient to avoid a finding of lack of secret prior art novelty

References

Judicial Yuan Judgment System

Frank Tseng

Patent Counselor of RichIP Group

III. Is “Direct Substitution” a Criterion for Determining “Lack of Novelty based on Legal Fiction”? —2025 Judgment of the Taiwan Supreme Administrative Court

This case involves an invalidation action against a utility model patent titled “Cover of mushroom cultivation bag” (hereinafter the “disputed patent”).  The invalidation petitioner cited Evidence 2 to argue that the disputed patent violated the provision of “lack of novelty based on legal fiction” under Article 23 as applied mutatis mutandis by Article 120 of the Taiwan Patent Act.  The Taiwan Intellectual Property Office (the appellee) rendered a decision to revoke the patent.

Dissatisfied with the decision, the patentee (the appellant) filed an administrative appeal and a subsequent administrative lawsuit, both of which were dismissed by the Taiwan Intellectual Property and Commercial Court (hereinafter the “IPCC”).  Unsatisfied with the decision, the patentee pursued administrative remedies and, after being dismissed by the Taiwan Intellectual Property and Commercial Court (IPCC), appealed to the Taiwan Supreme Administrative Court.

“Lack of novelty based on legal fiction” stipulates that: “Where a utility model claimed in a patent application for utility model is identical to an invention or utility model disclosed in the description, claim(s) or drawing(s) of an earlier-filed patent application for invention or utility model which is laid open or published after the filing of the later-filed patent application, a utility model patent shall not be granted.”

In this administrative litigation, the primary focus was on whether the “through-hole 211” disclosed in Evidence 2 could be directly substituted with Special Technical Feature A of Claim 1 of the disputed patent (i.e., “the edge of the vent hole is connected to the bottom wall”), and whether the “covering or buckling” disclosed in Evidence 2 could be directly substituted with Special Technical Feature C of Claim 7  (i.e., “the breathable sheet is fixed to the joint surface by gluing”).

The Taiwan Supreme Administrative Court cited the Patent Examination Guidelines regarding the “Criteria for Determination of Lack of Novelty based on Legal Fiction” (refer to Part 2, Chapter 3, Section 2.6.4 of the Patent Examination Guidelines).  That is, “identical content” of lack of novelty based on legal fiction means: (1) totally identical, (2) the difference only lies in the literal descriptions or in the technical features which can be directly or unambiguously deduced, (3) the difference resides in the generic and specific concepts of the corresponding technical features, and (4) the difference lies only in the technical features which can be directly substituted based on common general knowledge.

The Taiwan Supreme Administrative Court pointed out that Taiwan adopts the “enlarged novelty” approach for determining “lack of novelty based on legal fiction”, which differs from the concept of “inventive step”.  Specifically, the determination criteria for lack of novelty based on legal fiction encompass the four situations (1) to (4) mentioned above, and “direct substitution” evaluates whether the “technical feature itself” has the same function before and after substitution, rather than considering whether the “overall technical means” produces the same function.

Furthermore, the Taiwan Supreme Administrative Court provided an explanation regarding the “person having ordinary skill in the art” (hereinafter “PHOSITA”).  PHOSITA is a hypothetical person, and their technical capability must be substantiated through external evidence.  In patent litigation practice, the technical classification of the patent and the level of technology at the time of patent filing can both serve as reference materials for determining the capability of this hypothetical person.

In conclusion, the Taiwan Supreme Administrative Court determined that a PHOSITA, based on the common general knowledge at the time of filing, could directly substitute the “through-hole 211” and “covering or buckling” of Evidence 2 with the Special Technical Feature A and C of the disputed patent, and that the IPCC’s determination of the technical level of a PHOSITA was without violation of the law, thereby rendering a judgment of “appeal dismissed.  Therefore, in this judgment, the Taiwan Supreme Administrative Court established that “direct substitution” is a criterion for determining “lack of novelty based on legal fiction” and clarified the rules for determining a PHOSITA and their technical level.

References

Judicial Yuan Judgment System

Jason Hung

Patent Attorney of RichIP Group

I. [TW]　Simpler Application for Patent Annual Fee Reduction from 2026

II. [CN]　Guidelines for Registration of Collective and Certification Trademarks in China

III. [CN]　Amendments to China’s Patent Examination Guidelines (Part I)

I. Simpler Application for Patent Annual Fee Reduction from 2026

Starting January 1, 2026, the Taiwan Intellectual Property Office (TIPO) will introduce simplified procedures for patent annual fee reduction applications to enhance administrative efficiency and user convenience. Eligible patent owners will benefit from a “one-time application, multi-year validity” system, greatly simplifying the process of maintaining patents.

Key Information of the New System

I. Eligible Applicants

• Small and Medium-sized Enterprises (SMEs): Includes certified SMEs from both Taiwan and other countries.
• Foreign Schools: Schools recognized by Taiwan’s Ministry of Education.

(Note: Natural persons and domestic schools that already receive fee reductions are not included in this simplified procedure.)

II. System Effects and Application Methods

• Streamlined Procedures: Eligible applicants only need to apply once for the reduction to take effect in subsequent years, removing the requirement for yearly re-applications as under the old system.
• Two Application Channels:

• 1. At Patent Grant: Select the reduction option directly on the “Patent Certificate Application Form” when paying the certificate and first-year fees.
  2. After Patent Grant: Patent owners may also submit an application at any time during the patent term.

Important Reminders

• Change in Eligibility: If a company no longer qualifies as an SME (e.g., due to expansion), it must proactively notify TIPO and pay the full fee amount.
• Risk of Insufficient Payment: If a reduced fee is paid even though you are not eligible, the payment will be considered insufficient. This could result in the automatic expiration of the patent rights, and TIPO will refund the insufficient payment.

References

TIPO Announces Simplified Procedures for Patent Annual Fee Reduction

TIPO Announces Updates to Related Patent Application Forms

Zhijun Lo

Trademark Administrator of RichIP Group

II. Guidelines for Registration of Collective and Certification Trademarks in China

To reduce costs for applicants, the China National Intellectual Property Administration (CNIPA) has issued these guidelines that provide typical examples of “registrable” and “non-registrable” marks to mitigate the risk of repeated rejections and reapplications.

When applying for a Collective Trademark, the applicant must provide the names and addresses of all collective members, along with Usage and Management Rules. These rules must specify the quality standards of the goods, as well as the liabilities members face if they violate the rules.

I. Examples of Registrable Marks

1. Elemental Innovation

• Use of original text, unique graphics, or a combination thereof that possesses distinctiveness.

2. Marks containing names of administrative divisions at or above the county level.  The following conditions must be met simultaneously:

• Authorization: Obtain authorization from the Government of the place name included (or a higher-level government).
• Acquired Distinctiveness: The mark has gained distinctiveness through long-term use and possesses high visibility/reputation.
• Policy Alignment: The designated goods or services belong to an industry explicitly supported by national policies

3. Marks containing “County-level Place Name + Generic Name of Product + Distinctive Graphic + Full Name of Applicant”In addition to the three conditions mentioned above, the following must also be met:

• Relevancy: The designated goods or services must be identical or closely related to the generic name included in the trademark.
• Non-GI Distinction: Ensure the mark is not perceived as a Geographical Indication (GI), particularly when the product quality does not stem from local natural or human factors.

II. Examples of Non-Registrable Marks

1. Lack of Distinctiveness

• The mark consists solely of a county-level place name and the generic name of the product or service. Without long-term use to acquire distinctiveness, these are considered “non-distinctive” as a whole.

2. Likelihood of Public Misunderstanding

• Origin Misrepresentation: The mark contains a place name, but the applicant’s address or place of operation is outside that area, misleading the public regarding the source of the goods.
• Quality Misrepresentation: The mark contains text or graphics (e.g., “Reliable Food”) that easily mislead the public regarding the quality, raw materials, functions, or uses of the product.
• Confusion with Geographical Indications (GI): If the product’s quality is primarily determined by local natural or human factors (e.g., Han River rice), it should be registered as a Geographical Indication, not a Collective Trademark.

References

CNIPA

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

III. Amendments to China’s Patent Examination Guidelines (Part I)

The China National Intellectual Property Administration (CNIPA) released the Decision of the CNIPA on the Amendments to the Patent Examination Guidelines on November 10, 2025.  The Amendments are intended to fully implement the newly amended Implementing Regulations of the Patent Law and represents an important set of supporting measures in recent years.  The amendments will take effect on January 1, 2026.

The key revisions to the Patent Examination Guidelines may be summarized into three core directions, as outlined below.

 I. Improving protection rules for emerging fields

1. Artificial Intelligence (AI): Improving the examination rules applicable to patent applications in the field of AI technologies, and adding examination examples, in response to the development of AI technologies.
2. Bitstream: Bitstream: The streaming media industry is a key driver for upgrading the cultural industry, and approximately 80% of Internet traffic consists of bitstreams generated after compression by encoding technologies. In response, the Amendments adds special examination rules and drafting requirements for patent applications relating to bitstreams, aligning with the rapid development of the streaming media industry.
3. Plant varieties: Clarifying the definition of plant varieties, expanding the scope of patent-eligible subject matter.

II. Optimizing examination standards and rules to address issues highlighted in practice

1. Same-day dual filings: The Guidelines refine the handling approach for such same-day dual filings (i.e., the same applicant files both an invention patent application and a utility model application for the same creation on the same filing date).

2. inventiveness (often referred to as “inventive step”): Refining details of the inventiveness assessment, and clarifying that technical features that do not contribute to solving the technical problem generally do not render the technical solution inventive.

3. Inventor/applicant identity information: Clarifying requirements for completing inventor identity information, and providing that patent agencies (i.e., patent firms) bear obligations to verify the applicant’s identity information and contact details.

4. Additional filing fees: Adjusting the calculation rules for additional filing fees to reduce the burden on applicants.

5. Refund rules: Adjusting the relevant rules on refunds.

6. Invalidation: Clarifying that an invalidation request will not be accepted where filing the request is not the requester’s true intent, to prevent abuse of the invalidation mechanism.

7. No re-litigation (i.e., “ne bis in idem”): Clarifying that where the grounds and evidence for an invalidation request are substantially identical, the request will not be accepted and will not be examined.

8. Reexamination and invalidation procedures: improving the relevant rules governing reexamination and invalidation procedures.

9. Patent term compensation: Refining rules on patent term compensation. Where a rejection is overturned in reexamination due to new grounds or new evidence presented by the requester, the time consumed by the reexamination procedure is regarded as a reasonable delay in the grant process.

III. Institutionalizing mature practices to better serve innovative entities

1. Rapid examination: Adding provisions relating to rapid examination.

2. Priority claim: Clarifying examination rules applicable where a divisional application is filed without a declaration to claim priority.

3. “Filing date” information on patent certificates for PCT national phase and divisional applications: Clarifying that, for an international application entering the Chinese national phase (PCT) and for a divisional application, the applicant/inventor and other related information recorded on the patent certificate as of the “filing date” shall be determined based on the date of national phase entry or the date of filing of the divisional application, respectively.

4. Submission of amended texts and determination of the examined text in invalidation proceedings: Clarifying rules on (i) the form for submitting amended texts and (ii) the determination of the text to be examined in invalidation proceedings.

In summary, the amendments to the Patent Examination Guidelines are broad in scope.  In addition to responding to examination needs arising from emerging areas such as AI, they also adjust multiple examination standards and procedural rules.  This issue provides a summary of the amendments.  In this newsletter series, we will address each key topic in separate issues; the next issue will focus on the amendments relating to AI / big data and other emerging fields and new forms of business.

References

Decision of the CNIPA on the Amendments to the Patent Examination Guidelines (CNIPA Order No. 84)（Chinese original）

Interpretation of the 2025 Amendments to the Patent Examination Guidelines（Chinese original）

Jason Hung

Patent Attorney of RichIP Group

I. [TW]　Highlights of Taiwan’s IP Filings in Q3 2025: Trademark Applications Reach a Record High; Semiconductor Patent Filings Remain Strong

II. [TW]　Taiwan and Israel Sign MOU for Patent Prosecution Highway (PPH)

III. [CN]　To Enhance Patent Application Quality, CNIPA Issues the Guidelines for Patent Applications of Product Design Involving Graphical User Interfaces (GUI)

I. Highlights of Taiwan’s IP Filings in Q3 2025: Trademark Applications Reach a Record High; Semiconductor Patent Filings Remain Strong

According to the “Q3 2025 Intellectual Property Trends Report” released by the Taiwan Intellectual Property Office (TIPO), trademark applications in Taiwan increased significantly this quarter, reaching the highest single-quarter level in nearly 27 years. While overall patent filings declined slightly, domestic and foreign applicants continued to strengthen their patent portfolios in key technology sectors, particularly semiconductors.

Key observations for this quarter are summarized below:

1. Trademark Applications Surge, Driven by Service and Food & Beverage Sectors

Trademark registration filings reached 27,038 cases in Q3 2025, representing a 16% year-on-year increase and the highest quarterly figure since Q4 1998.

• Applications filed by domestic applicants exceeded 20,000 cases for the first time, with filings concentrated mainly in Class 35 (Advertising and Business Management), Class 43 (Restaurant and Accommodation Services), and Class 41 (Education and Entertainment). This trend reflects continued growth in domestic service-oriented and food and beverage industries.
• Among domestic corporate applicants, Fubon Life Insurance ranked first with 360 filings, followed by Uni-President Enterprises with 137 filings. Among foreign applicants, Luckin Coffee from China ranked first with 71 filings, indicating sustained interest by cross-border brands in strengthening trademark protection in Taiwan.

2. Invention Patent Competition Continues; Semiconductor Sector Remains Resilient

Total filings across the three types of patents reached 17,991 cases, representing a slight year-on-year decrease of 2%. Nevertheless, invention patents remain a key focus for high-technology industries.

• TSMC filed 283 invention patent applications, maintaining its position as the top domestic applicant. TSMC has ranked first continuously since Q3 2016, marking ten consecutive years at the top.
• Foreign invention patent filings were led by Japan (3,150 cases) and the United States (1,825 cases). Notably, U.S. filings have recorded positive growth for two consecutive years. Applied Materials, a major semiconductor equipment supplier, ranked first among foreign applicants with 302 filings, while Shin-Etsu Chemical of Japan also reached a record high for a single quarter. These figures underscore Taiwan’s critical role in the global semiconductor supply chain.

3. Design Patents: Notable Growth from European Luxury Brands

Overall design patent filings remained stable; however, European fashion and luxury brands demonstrated strong growth momentum.

Design patent filings from Switzerland and France increased by more than 50% year-on-year. French luxury brand Louis Vuitton entered the top five applicants for the first time, reaching a record high, while Swiss jewelry brand Harry Winston also ranked among the leading applicants. This trend reflects a growing emphasis by international luxury brands on protecting product design rights in the Taiwanese market.

References

TIPO’s Q3 2025 IPR Statistics Report

Frank Tseng

Patent Specialist of RichIP Group

II. Taiwan and Israel Sign MOU for Patent Prosecution Highway (PPH)

Taiwan and Israel have signed MOU for Patent Prosecution Highway (PPH MOTTAINAI) and intellectual property cooperation during the 15th Taiwan–Israel Economic and Technical Cooperation Conference. This marks the establishment and strengthening of the cooperation framework between the two countries in the field of intellectual property. The Taiwan–Israel PPH was scheduled to take effect on January 2, 2026.

Israel is the eighth partner in Taiwan’s PPH system, following the United States, Japan, Spain, South Korea, Poland, Canada, and France. By sharing search and examination results for patent applications belong to the same invention, both offices can reduce duplicate examination work and improve examination efficiency. In addition, such cooperation helps build a clearer cross-border collaboration framework for patent filing and contributes to international patent management for applicants.

References

TIPO

Zhijun Lo

Trademark Administrator of RichIP Group

III. To Enhance Patent Application Quality, CNIPA Issues the Guidelines for Patent Applications of Product Design Involving Graphical User Interfaces (GUI)

Our firm has summarized below the key points that applicants should note:

Which GUI designs may qualify as protectable subject matter under design patents?

• A GUI must be applied to a specific product (such as mobile phones, tablets, home appliances, or in-vehicle devices). Icons or images existing independently, without a product carrier, are not eligible subject matter.
• The design must be related to human–computer interaction, such as clicking, swiping, or operational feedback.
• Game interfaces and display content unrelated to human–computer interaction (e.g., wallpapers or boot-up screens) are not eligible subject matter.
• When a partial design is claimed, the GUI portion must constitute a relatively independent section and a complete design unit.

Other compliance reminders:

• When a GUI includes maps, logos, portraits, trademarks, or copyrighted content, special attention should be given to prior rights and adherence to the laws and regulations of the People’s Republic of China..
• The “content images” (such as photographs, videos, or real-time imagery) are, in principle, not be involved in the scope of protection, and require special handling in drawings.

Conclusion

Although these Guidelines are a reference document, they may reflect CNIPA’s practical approach to examining GUI-related design patents.
If you have questions about whether a specific product or GUI design is suitable for filing a Chinese design patent application, please feel free to contact us for further discussion.

References

CNIPA

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

I. [CN]　CNIPA Has Promulgated the “Guidelines for Combining Designs into a Single Design Patent Application”

II. [WIPO]　WIPO Global Innovation Index 2025: New “Venture Capital” Indicator Reshapes Ranking of Top 100 Innovation Clusters

I. CNIPA Has Promulgated the “Guidelines for Combining Designs into a Single Design Patent Application”

To help applicants better understand the procedures related to design patent applications and to promote high-quality design patent development, the China National Intellectual Property Administration (CNIPA) promulgated the Guidelines for Combining Designs into a Single Design Patent Application in October 2025.

The Guidelines systematically outline the applicable circumstances and key considerations for combing designs into a single design patent application, clarifying which types of designs may be filed as one design patent application, along with criteria and illustrative examples for different types of combined filings.

In brief, the four types of designs shown on the right side of the diagram below may be filed as a combined application:

1. First Type: A common single product with a single design;
2. Second Type: Multiple components that are structurally connected and form one product when assembled;
3. Third Type: A single product with multiple similar designs; and
4. Fourth Type: A set of items of a product belonging to the same category, customarily sold or used together.

Among these, the Guidelines mainly focus on the key considerations and examples related to Types 3 and 4.

Key points to note:

• Each application may include no more than 10 similar designs;
• The number of items within a set of products is not theoretically limited, but each must represent an overall design (partial designs are not allowed);
• A set design application should not include similar designs of individual items; and
• Multiple component products may include similar designs under the same application.

For more details, please refer to the attached document on the website.

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

II. WIPO Global Innovation Index 2025: New “Venture Capital” Indicator Reshapes Ranking of Top 100 Innovation Clusters

The World Intellectual Property Organization (WIPO) has released its influential 2025 Global Innovation Index (GII) Cluster Report, which now incorporates Venture Capital (VC) transactions alongside traditional metrics like PCT patent filings and scientific publications. This update highlights the critical role of commercialization and investment flow in driving innovation.

Key Highlights for China, Hong Kong and Taiwan

• Shenzhen–Hong Kong–Guangzhou rises to No. 1 globally, supported by strong VC activity and high contributions to PCT patent filings and scientific output (nearly 9% of global PCT filings.)
• Beijing remains a major innovation hub, ranking No. 4, driven by the world’s highest volume of scientific publications (4% of global total.)
• Shanghai–Suzhou places No. 6, reflecting its balanced strength across patents, research, and VC activity.
• Taipei–Hsinchu ranks No. 41, with notable contributions from PCT filings and semiconductor-related R&D. According to WIPO, MediaTek is now the top PCT applicant in the Taipei–Hsinchu cluster, surpassing Hewlett-Packard.

Brief Conclusion

As innovation becomes increasingly concentrated within leading regional clusters, strong and forward-looking intellectual property protection is essential, both to safeguard innovative output and to ensure competitiveness in global technology ecosystems.

References

Hyperlink: TIPO

Hyperlink: WIPO

Frank Tseng

Patent Specialist of RichIP Group

I. [WIPO]　Notice of Adjustment to PCT International Phase Fees in 2025

II. [TW]　Early and Comprehensive Trademark Layout Is Strongly Advised

III. [TW]　TIPO Revised “Examination Guidelines for Non-Traditional Trademarks” — Effective Date: August 1, 2025

IV. [HK]　Hong Kong and WIPO Sign MOU on WIPO Lex-Judgments Database

V. [TW]　TIPO Launches “Image-Based Search System for Domestic Design Patents (Beta)”

I. Notice of Adjustment to PCT International Phase Fees in 2025

According to the announcement published by the World Intellectual Property Organization (WIPO), effective from July 1, 2025, the international filing fee and the handling fee for the PCT Demand (request for international preliminary examination) submitted to the China National Intellectual Property Administration (CNIPA) will be charged based on the revised official fee schedule as outlined below.

In addition to the above-mentioned fees, other official fees independently charged by the CNIPA, such as the search fee, will remain unchanged.

Jason Hung

Patent Attorney of RichIP Group

II. Early and Comprehensive Trademark Layout Is Strongly Advised

Content:
Trademark systems vary from country to country. Roughly 80% of nations adopt the first-to-file principle, including China, Japan, Korea, the EU, and Taiwan. A few countries, such as the United States follow the “first-to-use” principle which gives significant weight to actual use of trademark or market recognition (well-known) in determining trademark rights. Consequently, filing trademarks as soon as possible is the most effective way to minimize the risk of disputes in most countries.

A well-known example is Ryohin Keikaku Co., Ltd. (hereinafter “Japan MUJI”) and its trademark dispute in China for the mark of “” belonging to Class 24.  Although Japan MUJI has began trademark application for the mark of “” in China from1999, covering Classes 3 (cosmetics), 9 (calculator), 16 (stationery), 20 (furniture), 21 (household utensils), 25 (clothing), 26 (accessories), 35 (retail services), and 41 (publishing and educational services). However, the trademark application did not include Class 24 (textiles, towels, bed sheets, and quilts).

In 2001, Hainan Nanhua Industrial & Trade Co. applied for and obtained trademark registration for the mark of “” in Class 24, which was later assigned (in 2004) to Beijing Cottonfield Textile Co., Ltd (hereinafter “Beijing Cottonfield”).  After publication of the trademark, Japan MUJI filed an opposition, but during a series of legal battles and proceedings the Supreme People’s Court of China finally held that Japan MUJI’s reputation in China at the time was limited, and affirmed the validity of Beijing Cottonfield’s trademark registration based on the first-to-file rule.

After that, Beijing Cottonfield discovered that Japan MUJI had been using the mark of “無印良品” on products such as blankets, bed covers, and towels, and filed an infringement lawsuit. After the first and second instances, the Beijing High People’s Court upheld the original judgment that Japan MUJI indeed infringed the registered trademark. As a result, although Japan MUJI could continue using “MUJI” in English in goods belong to Class 24, it was prohibited from using the Chinese name “無印良品” in that class.

Afterward, Japan MUJI continued to file new trademark applications for the mark of “無印良品” in Class 24 and attempted to invalidate Beijing Cottonfield’s trademark registration by claiming bad-faith registration. However, Japan MUJI losing the first and second-instance administrative litigation, and its petition for retrial was dismissed by the Supreme People’s Court in June 2025.

This case points out the importance of a comprehensive trademark layout, especially for those running business internationally. In the countries under first-to-file principle, companies cannot rely solely on their global reputation to extend the trademark rights to cover undesignated classes, especially when the evidence may not be sufficient to prove that the mark was already well known “at that time” and “in that jurisdiction.” Once a key class has been missed for trademark registration, extra efforts in litigation, acquisition, or cross-licensing are often necessary to extend commercial use of the same mark to the missed class.

From a practical standpoint, we suggest conducting a preliminary search to evaluate the likelihood of rejection, followed by trademark applications covering current core goods and services based on the Nice Classification. Classes with a high potential of future expansion can be reserved for subsequent filings.  As the business grows, a “variant-symbol” approach may be adopted—registering variants such as abbreviations, nicknames, phonetic transliterations, or localized names (for instance, “麥當當(a Chinese nickname for McDonald’s),” “珍煮母 (an abbreviated Chinese rendering of TRUEDAN),” or “史塔巴克斯 (a localized transliteration of STARBUCKS)” as defensive marks)—to strategically strengthen protection and avoid unnecessary costs arising from future trademark disputes.

References

Hyperlink: TIPO

Hyperlink: TIPO

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

III. TIPO Revised “Examination Guidelines for Non-Traditional Trademarks” — Effective Date: August 1, 2025

Content:
Before the previous amendment to Trademark Act, Paragraph 4 of Article 30 provided that registration shall not be permitted unless a disclaimer of non-exclusive use for functional portions of a trademark design is made. To avoid that functional portions of a trademark design affects the overall assessment of likelihood of confusion, it is now stipulated that registration shall not be permitted unless functional portions of a trademark design are depicted in dashed lines. For trademarks containing functional portions that cannot be represented in dashed lines (such as non-visual marks including sound or scent marks), the applicant must expressly declare that such portions are not part of the trademark instead.

To be in line with the amendment, the “Examination Guidelines for Non-Traditional Trademarks” have been revised accordingly. The key points of the revision are summarized as follows:

1. Specifying the principles for handling functional portions within a trademark design;
2. Specifying that when dashed lines are used in the trademark representation, such use shall be explained in the trademark description;
3. Specifying that the main distinctive features protected under non-traditional trademarks (e.g., color, three-dimensional shape, motion, hologram, and sound) are different from the two-dimensional features of traditional trademarks (e.g., words, figures, and symbols);
4. Specifying that the applicant shall provide a trademark description explaining the three-dimensional shape to ensure clarity in the three-dimensional form of a trademark; and
5. Providing recent cases and revising the examples for trademark descriptions as references to meet practical examination needs.

Example:
Trademark Description:

“This mark is a three-dimensional trademark exhibiting the exterior shape of a product packaging container, as shown in the trademark design. It is composed of a three-dimensional bottle, a three-dimensional cap and a word . The cap and neck are covered with a black seal.  The top of the cap bears the word of ‘HENNESSY’ and a logo of ‘a hand holding an axe’.  The neck seal is printed with the word of ‘HENNESSY’ in slanted and evenly spaced lettering.  The front of the bottle features an embossed logo of ‘a hand holding an axe’ and a label bearing the word of ‘HENNESSY’ with gold floral patterns. The lower portion of the bottle is slightly concave inward and then connect to an outwardly protruding base. The portions shown by dashed lines—the cap and bottle shape—are not part of the trademark.”

References

Hyperlink: TIPO

Chun-Wei Lo

Patent and Trademark Counselor of RichIP Group

IV. Hong Kong and WIPO Sign MOU on WIPO Lex-Judgments Database

Hong Kong and WIPO signed a Memorandum of Understanding (MoU) concerning the “WIPO Lex Judgments” database on September 1, 2025, with the aim of enhancing information sharing, with a view to jointly building a more connected and informative global intellectual property community.

The WIPO Lex Judgments database provides free, open access to leading judicial decisions relating to IP from around the world, which currently includes more than 2,200 judgments from over 40 jurisdictions.  Under this MoU, Hong Kong will contribute landmark IP judgments to the WIPO Lex Judgments database, thereby allowing judges, IP practitioners, policymakers and researchers around the world to better understand and engage with Hong Kong’s IP-related judicial judgments, while at the same time showcasing the quality of Hong Kong’s jurisprudence.

At the signing ceremony, the Financial Secretary of Hong Kong, Mr. Paul Chan, remarked that Hong Kong’s participation in the database carries special significance.  He further emphasized that Hong Kong, the only jurisdiction in China that practices the common law system and operates in both Chinese and English, has earned broad international recognition for its protection of intellectual property rights.  The city has become a trusted venue for resolving IP disputes involving both Chinese and international parties, and its judicial decisions serve as valuable references for the global legal community.

This signing marks a significant step in strengthening Hong Kong’s collaboration with the WIPO.  It is expected to enhance the transparency of Hong Kong’s IP regime on a global scale and reinforce the city’s role in the international exchange of judicial precedents.  Moreover, it may further boost the confidence of international enterprises and IP owners in investing and conducting innovation activities in Hong Kong.

References：https://www.info.gov.hk/gia/general/202509/01/P2025090100454.htm?fontSize=1

Jason Hung

Patent Attorney of RichIP Group

V. TIPO Launches “Image-Based Search System for Domestic Design Patents (Beta)”

Taiwan Intellectual Property Office (TIPO) has launched an “Image-Based Search system for Domestic Design Patents (Beta)” from 2025 to enhance the efficiency and convenience of searching design patents. The system includes design patent cases which have published since 2013, and enable users to quickly identify and search out similar designs by intelligent image recognition approach. This new approach breaks through the limitation of traditional text-based searches and provides a more intuitive and precise search mode, which is useful for research, creation and management of rights.

Key features of the new search system are shown as follows:

Image Upload and Comparison: when users upload an image, the system automatically detects and highlights the design area with a red frame.

Partial Image Search: users can crop specific portions of an image and search for the cropped portions.

Integration with LOC Classification: the system supports image searches combined with International Classification for Industrial Designs (LOC) to search for specific fields quickly.

Multiple Filtering Options: users can further filter the search results by inventor, applicant, publication year, and LOC classification, etc.

The system can save time on searching prior design patents and enhance the precision of searching as compared with traditional text searching, and therefore TIPO encourage people to utilize it more.

References

Hyperlink:TIPO

Zhijun Luo

Paralegal of RichIP Group

Rich IP & Co. (under RichIP Group) was again surveyed by ASIA IP as one of the dominant IP firms in Taiwan in 2025.

Overview of Rich IP & Co.:

Overview of IP Expert Russell Horng:

Overview of IP Expert Jason Hung:

Overview of IP Expert Cross Liu:

Rankings of Rich IP & Co. in 2025 are listed below:

We are pleased to inform you that on February 21, 2025 (Friday), RichIP will move to a new location. Starting on February 21, 2025 (Friday), our new address will be: 5F., No. 218, Sec. 2, Jinshan S. Rd., Da’an Dist., Taipei City 106, Taiwan.

Please update your records accordingly. Our e-mail address, telephone number and facsimile number will remain unchanged.

Our office will be closed temporarily from February 20, 2025 (Thursday), 9:00 AM to February 21, 2025 (Friday), 15:00 PM for the Office Relocation. If you have any urgent requirement from us, please let us know well before the end of February 19, 2025 (Wednesday).

Please let us know if you have any questions. Thank you.

Best regards,