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-0011-2/?utm_source=rss&utm_medium=rss&utm_campaign=newsletter-no-0011-2 Fri, 03 Mar 2023 04:00:48 +0000 https://www.richipteam.com/en/?p=12573 News Topics

I. [CN] 　CNIPA’s Announcement for full implementation of the electronic patent certificate system(No. 515)

II. [CN]　Related Statistics of Chinese Patent and Trademark Cases

I. CNIPA’s Announcement for full implementation of the electronic patent certificate system(No. 515)

According to the Announcement No. 515 of the China National Intellectual Property Administration (CNIPA), the CNIPA will fully implement the electronic patent certificate system from February 7, 2023.

The party who applies for patent in electronic form and receives issuance of the patent may download the electronic patent certificate through the patent business handling system. The party who applies for patent in paper form and receives issuance of the patent may also download the electronic patent certificate according to the method notified in the “Notice of Obtaining the Electronic Patent Certificate” published by the CNIPA.

Lisa Lee

Patent Paralegal of RichIP Group

II. Related Statistics of Chinese Patent and Trademark Cases

Table 1. Statistics of patent issuance (domestic/foreign)

Note:

1. In this table, the number of patent issuances is calculated according to the date on which the patents are published.

2. In this table, domestic and foreign are divided according to the origin of applicants.

Table 2.      Statistics of domestic patent issuance by patentee type

Table 5.      Statistics of receiving number of PCT Patent Applications

Table 6.      Statistics of domestic and foreign trademark registrations and effective registrations

Note:

1. The cumulative statistical dates of the selected year are from December 16 of the preceding year to the 15th of the selected month.  Valid registrations are counted until the 15th of the selected month.

2.This Table quotes the data from the database of the Trademark Office at the end of the selected month.

Lisa Lee

Patent Paralegal of RichIP Group