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Taiwan: Scope of design patent prompts controversy




The Supreme Court published a ruling in 2015 in a design patent infringement lawsuit that aroused some controversy.

The lawsuit was filed with the IP Court by the owner of a design patent for an electric bike against a competitor. At first instance, the IP Court found the two parties' designs highly similar so as to cause consumer confusion, and the defendant was found to infringe the design patent.

Not satisfied with the ruling, the defendant filed an appeal with the IP Court of second instance, arguing that the rear trunk provided on the alleged infringing electric bike renders the two parties' bikes to be readily distinguishable and should not be overlooked.

The IP Court of second instance dismissed the appeal for two reasons: (1) as no rear trunk is included in the drawings of the subject design patent, the scope of the patented design should be construed to include rear trunks of any shape; and (2) even if the rear trunk provided on the alleged infringing electric bike were given weight, this ornamental feature would not be significant enough to preclude the possibility of confusion among consumers.

After the case was brought to the Supreme Court, the Supreme Court rescinded the ruling rendered by the IP Court of second instance in favour of the design patent owner, and remanded the case to the IP Court of second instance for re-consideration. The Supreme Court made the following findings: (1) since the defendant owns a design patent for the alleged infringing electric bike, it is reasonable to assume that this bike is patentably distinguishable from the patented design; and (2) the curved patterns and colours illustrated on the sticker attached to the front panel of the alleged infringing electric bike should not have been removed from consideration since they serve to distinguish the alleged infringing electric bike from the patented design in outer appearance.

The two opposing parties subsequently reached an amicable out-of-court settlement. As such, there is no insight into how the IP Court would have responded to the Supreme Court's ruling.

In our opinion, whether or not the defendant owns a design patent is immaterial to a finding of infringement. As to the rear trunk and the sticker on the alleged infringing electric bike, according to the regulations recited in the Guidelines for Determining Patent Infringement, which are in conformity with international practice, they should not be taken into account in the test of similarity. On this issue, we share the opinion of the IP Court that the scope of a patented design should be construed on the basis of the overall outer appearance of the design illustrated in the drawings. In other words, a design patent is infringed if an ordinary observer would think that the alleged infringed design is highly similar to the patented design when the two designs are compared in the context of the prior art.

Even though the Supreme Court's opinion in this one single case is not binding, it is still worth asking (1) whether the ruling rendered by the Supreme Court will be cited in the future by any parties as a reference point when they encounter similar issues; and (ii) how the IP Court would respond.

Frank FJ Liu

Saint Island International Patent & Law Offices
7th Floor, No. 248, Section 3
Nanking East Road
Taipei 105-45, Taiwan, ROC
Tel: +886 2 2775 1823
Fax: +886 2 2731 6377


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RT @RebCrandall: .@TTABlog says he never wants to hear @theslants again. 😂®️ #INTA2018 https://t.co/Z827Tek4up

May 23 2018 06:22 ·  reply ·  retweet ·  favourite
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RT @RebCrandall: This is great - a #TTAB case review by @TTABlog. He even mentioned my pet peeve of how the @uspto usually thinks #craftbee…

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John Welch outlines three rants he has given up on. But proportionality and the weaponisation of discovery is still… https://t.co/bEn2YiDc6t

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