Taiwan IPC Court Invalidates Design Patent for Umeshu Label Over Obviousness

On September 11, 2025, Taiwan’s Intellectual Property and Commercial Court (“IPC Court”) sided with the Petitions and Appeals Committee of the MOEA (“Committee”), finding the Committee did not err in determining the challenged design patent, D221755 (‘755 patent) was obvious over the disclosure of prior arts. 

The challenged ‘755 patent, entitled “Label” (see below), was filed on March 10, 2022, and published on October 21, 2022. According to the ‘755 patent, it featured a label for attaching to a bottle, and all of its patented features were included in its front view. QR Code, explanation of ingredients, etc., were not within the claimed scope.

A third party filed invalidation action against the ‘755 patent, contending that the ‘755 patent should be invalid for lacking novelty or being obvious over the alleged prior arts, including Exhibit 2 (see: https://shingroupcorp.com/products/shin-whisky-umeshu-plum-wine/) and Exhibit 3 (see https://kellyrosie.com/post-557012485/). Taiwan’s IP Office (“TIPO”) rejected the invalidation action, finding the combination of disclosure of Exhibit 2 and Exhibit 3 insufficient to render the ‘755 patent obvious. TIPO’s determination was challenged before the Committee. 

The Committee vacated TIPO’s determination, finding that the ‘755 patent should be obvious because it was based on easy combination and modification of commonly seen pictorial elements in the distilling industry(e.g., the petals and the distiller), and the published prior documents (i.e., Exhibit 2 and Exhibit 3). The patentee then appealed to the IPC Court.

The IPC Court upheld the Committee’s determination, reasoning that:

1.    Article 122 of Patent Law provides that: “A design which is industrially applicable may be granted a design patent upon application in accordance with this Act, provided any of the following does not exist: 1. an identical or similar design was disclosed in a printed publication prior to the filing of the patent application; 2. an identical or similar design was publicly exploited prior to the filing of the patent application; or 3. the design was known to the public prior to the filing of the patent application. A design that is without the conditions prescribed in the preceding paragraph but can be easily conceived by a person ordinarily skilled in the art based on prior art shall not be patented.”

2.    According to the IPC Court, the Exhibit 2 and Exhibit 3 were both qualified prior arts which were disclosed prior to the filing of the contested D’755 patent. While the IPC Court agreed that neither Exhibit 2 nor Exhibit 3 disclose all the patented elements, the combination of Exhibit 2 and Exhibit 3 render the D’ 755 patent obvious. 

3.    According to the IPC Court, the patented elements of the D’755 patent are: 

Element A: Characters 「梅酒」、「ういすきー」in choreographic style, and  「WHISKY UMESHU」; 

Element B: image of plum; 

Element C:「花の雨」in larger font size and「国產青梅一OO%で造つたウイスキーベースの梅酒」in smaller font size; 

Element D: petals in pink; and 

Element E: image of distiller.

4.     The IPC Court held that both Exhibit 2 and Exhibit 3 did not disclose Element D and Element E, and there were variations in terms of font size and text, so that the alleged prior arts were insufficient to prove D’755 lacked novelty. 

5.     However, from the viewpoint of an ordinary designer, the combination of Exhibit 2 and Exhibit 3 already demonstrated a visual impression that is very similar to that of the D’755 patent. The overall layout of the textual and pictorial elements in Exhibit 2 and Exhibit 3 is nearly the same as how Element A, B, and C were arranged in the D’755 patent, with minor font size difference. 

6.     As for Element D (the pink petals) and Element E (the distiller), the IPC Court noted that based on the evidence submitted, these images were publicly accessible in common image libraries on the Internet (i.e., http://www.daimg.com; https://www.shutterstock.com; and https://www.sohu.com). It would be obvious for an ordinary designer in the art to make reference to these images and conceive the overall visual impression of the D’755 patent by combining and modifying the disclosures of Exhibit 2 and Exhibit 3.

 

Based on the reasons above, the IPC Court upheld the Committee’s finding of obviousness, and dismissed the patentee’ s suit. 

 

Source: 智慧財產及商業法院 114 年度行專訴字第 9 號判決（https://judgment.judicial.gov.tw/FILES/IPCA/114%2c行專訴%2c9%2c20251002%2c3.pdf）

Taiwan’s Petitions and Appeals Committee Upholding TIPO’s Decision in Denying Sony’s Opposition Against a Trademark Featuring Geometric Figures on Play Station’s Joysticks

On September 10, 2025, the Appeals and Petitions Committee of the Ministry of Economic Affairs (“Committee”) denied the appeal of Sony Interactive Entertainment Inc. (“Sony”), holding that Taiwan’s IP Office (“TIPO”) did not err in finding the contested trademark would not create confusion with Sony’s trademarks (Reg. No. 00971797, Reg. No. 01125754, Reg. No. 02204821, Reg. No. 01447909, and Reg. No. 01552630, see below).

The contested trademark, Reg. No. 02308293 (see below), was filed on December 9, 2022, and granted on July 16, 2023, designated for use in services in Class 35, including retail and wholesale of toys, retail and wholesale of educational and recreational products, agency, targeted advertising, internet marketing, department store, convenience store, online shopping, TV shopping, etc. Sony filed opposition on October 16, 2023, alleging that registration of the contested trademark violated Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

On February 27, 2025, TIPO rejected Sony’s opposition, finding that although the designated services of the contested trademark overlapped with those designated by Sony’s cited trademarks, the degree of similarity between the trademarks was low, and no likelihood of confusion would arise. Sony appealed.

On Appeal, Sony particularly emphasized that ordinary consumers would view the four geometric shapes displayed in the contested trademark as the most dominant elements, that Sony’s cited trademarks had become well-known through continuous use, and that the registration of the contested trademark was based on bad faith because it would create confusion or dilution. 

The Committee upheld TIPO’s findings, reasoning that:

1.        Although both the contested trademark and Sony’s cited trademarks contained four geometric shapes, there were other graphical and textual elements, such as “曲卡電玩” and “CHIKA”, that would make consumers distinguish between the two. Taken as a whole, consumers would find the contested trademark visually, conceptually, and verbally different from Sony’s cited trademarks.

2.        Sony submitted substantial amount of evidence, including the photos of joysticks, webpages, YouTube channel, news reports, and photos of exhibitions, to show the actual use of its cited trademarks, but the evidence was insufficient. For example, although the four geometric figures were displayed on the joysticks, consumers would view them as part of the product design rather than as a source identifier of Sony’s service. As for the news reports and webpages, some were in foreign languages, while others failed to show the complete image of Sony’s cited trademarks. Although the cited trademarks indeed appeared in the photos of Sony’s exhibitions and YouTube Channel, the volume of these materials was limited and insufficient to establish that Sony’s cited trademarks were well-known in Taiwan.

3.        Regarding Sony’s allegations that the contested trademark was filed with bad faith or diluted the distinctiveness of its cited trademark, the Committee found no concrete evidence to support these claims. Even though the contested trademark contained the same geometric figures in the same sequence, this alone was insufficient to prove intent to imitate.

4.        In view of the above, considering the low degree of similarity, the distinctiveness of the contested trademark, the lack of evidence of bad faith and insufficient proof of the well-known status, the Committee concluded that registration of the contested trademark will not create confusion. Therefore, TIPO was not erroneous in rejecting Sony’s opposition.

 

Source: the Committee’s decision

https://eportal2.moea.gov.tw/EE120/api/download/20251005_decisionDownload-A211404004_113547_408_TNxfb1D8uA/

The TIPO’s decision:

https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOjAs8SovtyNnbs2AzSB1jhxzOrjbF0

Taiwan’s IP Office narrowed the registered scope of “康朋cambon” trademark in view of confusion with Chanel’s “CAMBON” brand

On August 29, 2025, Taiwan’s IP Office (“TIPO”) ruled partially in favor of Chanel, cancelling part of the designated services under the contested trademark “康朋cambon” after finding that the trademark may create confusion with Chanel’s brand “CAMBON” (Reg. No. 01790566, see below).

The contested trademark, “康朋cambon” (Reg. No. 02325831, see below), was filed on September 26, 2022, and granted on October 1, 2023, covering services in Class 35, including online shopping, television shopping, import and export agency services, retail and wholesale of beauty products, retail and wholesale of nutritional supplements, business management consulting, advertising, department stores, online advertising, marketing, vending machine rentals, etc. Chanel filed opposition on December 28, 2023, contending that the registration of “康朋cambon” violated Articles 30.1.10 and 30.1.11 of the Trademark Act. 

In its determination on August 29, 2025, TIPO only granted part of Chanel’s request, considering not the entire service categories designated by “康朋cambon” were similar to those by Chanel’s “CAMBON”:

1.  TIPO first addressed Chanel’s request based on Article 30.1.10 of the Trademark Act, which provides that a mark shall be cancelled if such a mark is similar or identical to another’s earlier registered trademark, designated for use in identical or similar goods or services, and hence may create confusion among the relevant consumers. 

2.  On similarity, both trademarks contain the same English letters, i.e.,  “CAMBON” and “cambon”, with minor variations in terms of the letter case and font size. Ordinary consumers may find them visually, verbally, and conceptually similar.

3.  On similarity of the designated services, TIPO noted that Chanel’s “CAMBON” covered products such as soup, perfume, essential oil, and cosmetics, and agreed with Chanel that these product categories were related to services designated by the contested trademark, such as retail and wholesale of cosmetics, online shopping, department stores, and television shopping. However, TIPO found that other services covered by the contested trademark, such as public relations, marketing, targeted marketing, vending machine rentals, etc., were dissimilar and unrelated to Chanel’s product categories. 

4.  As such, considering that Chanel’s “CAMBON” is highly distinctive, that there is similarity between the two trademarks, and that part of the designated services of the contested trademark were related to Chanel’s product category, TIPO concluded that those service categories shall be cancelled to avoid confusion with Chanel’s “CAMBON” brand. As to those service categories that were considered dissimilar or unrelated to Chanel’s products, TIPO found that the contested trademark would not create confusion among the relevant consumers. Chanel’s request to cancel the contested trademark based on Article 30.1.10 was therefore partially granted.

5.  Although Chanel contended that “CAMBON” has become well-known and shall enjoy broader exclusivity, TIPO found evidence submitted by Chanel insufficient to support the alleged well-known status. The supporting materials, according to TIPO, were either not properly dated, did not show “CAMBON”, or reflected trademark use in other territories, which could not prove that the brand had established strong recognition in the local market. Hence, Chanel’s request to cancel “康朋cambon” based on Article 30.1.11 was denied. 

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOkAscWo%2FsAL%2BUSD2StorNuGoAsRLo4

Cummins Inc. prevailed in trademark opposition against Centrotherm International AG

On August 28, 2025, Taiwan’s IP Office (“TIPO”) cancelled a contested trademark featuring the letter “C“, finding it confusingly similar to the iconic brand of Cummins Inc. (“Cummins”) (Reg. No. 00180008, see below)

The contested trademark, Reg. No. 02332870 (see below), was filed by Centrotherm International AG (“Centrotherm”) on February 13, 2023, and granted on November 1, 2023, designated for use in services in Class 37, including the maintenance, installation, and repair of solar battery, semiconductor, and related machines tool and parts. Cummins filed an opposition on January 22, 2024, alleging violations of Articles 30.1.10, 30.1.11, and 30.1.12 of the Trademark Act.

On August 28, 2025, TIPO sided with Cummins, cancelling Centrotherm’s trademark based on Article 30.1.10:

1.     According to Article 30.1.10 of Trademark Act, a mark shall not be registered if such a mark is identical or similar to another’s registered mark, designated for use in identical or similar goods or services, and is therefore likely to cause confusion among the relevant consumers.

2.     Here, both Cummins’ and Centrotherm’s trademarks prominently featured the letter “C”, creating visual and conceptual similarity. While Centrotherm’s trademark used a red-and-white scheme and Cummins’ “C” included the embedded word “Cummins”, these differences were minor and did not reduce the degree of similarity between the two trademarks.

3.     On the designated services, TIPO noted that Cummins’ cited trademark covered maintenance and repair services for engines, generators, and the relevant parts. Since both Cummins’ and Centrotherm’s trademarks were used for the maintenance, installation, and repair services of machines in the related industries, TIPO considered consumers would view these services highly similar to each other.

4.     Further, TIPO recognized Cummins’ trademark as distinctive, and has established consistent and strong recognition in the market through continuous use since 1976. Although Cummins sometimes used the letter “C” in red and other times in black, TIPO considered the letter “C” to be the most dominant and recognizable element. 

5.     Centrotherm submitted evidence to prove its trademark has established strong recognition, and could co-exist with Cummins’ trademark without raising confusion. However, TIPO found these materials unpersuasive, as much of them were undated or failed to show the actual use of Centrotherm’s trademark.

6.     In light of the above, given the similarity between the trademarks, the relatedness of the designated services, and the strong brand recognition of Cummins’ trademark, TIPO concluded that registration of Centrotherm’s trademark may create confusion. The the contested trademark was cancelled accordingly.

 

Source: 

https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNRI%2BOkAssUpPtLmwgXonwL4rDx00SWt397

Taiwan Court Found Mass-Produced Work Not Eligible for Copyright Protection

On August 20, 2025, in a copyright infringement case involving reproduction of a decorative temple roof design, Taiwan’s Intellectual Property and Commercial Court (the “IPC Court”) dismissed the lawsuit, ruling that the asserted work was mass-produced industrial product, which lacks the required originality.  

The Plaintiff alleged that he was the author of a relief sculpture (the “Work”, see below), a decorative design for the roof of temple or altar.  According to Plaintiff’s complaint, the Defendants infringed the Plaintiff’s copyright by, without prior permission, mass-producing the Work and selling the unauthorized replicas.

The Defendants argued that the Work represented a common decorative motif used in Taiwanese temples and altars, featuring a dancing carp among waves. These designs should be in the public domain and not eligible for copyright protection.

The IPC Court dismissed the Plaintiff’s infringement claim, holding that:

1.        To be eligible for copyright protection, the Work must possess minimum degree of originality. While the threshold is lower than that for patent novelty, the work must reflect a degree of human intellect and personal expression. If the work is merely an industrial product manufactured via mass production without meaningful human intellectual input, such work should not be eligible for copyright protection.

2.        According to the Plaintiff’s own testimony, he only created a two-dimensional sketch of the decorative temple roof design. It was another wood sculptor who created a wooden model based on that sketch. Subsequently, the Work was manufactured via mass production based on the wooden sculpture. 

3.        In view of the above, the Work, in the Court’s view, was only an industrial product lacking originality, because it did not reflect sufficient human intellectual creation. By contrast, the wooden sculpture created based on Plaintiff’s sketch should be the one that possessed minimum degree of originality that would be eligible for copyright protection.

4.        Given the absence of originality, the Court found the Work asserted by the Plaintiff not copyrightable, and dismissed Plaintiff’s claim accordingly.

Source:

113-Ming-Chu-Su-Zi No. 53 (IPC Court, August 20, 2025)

https://judgment.judicial.gov.tw/FILES/IPCV/113%2c%e6%b0%91%e8%91%97%e8%a8%b4%2c53%2c20250820%2c1.pdf

IPC Court Orders Destruction of Public Artwork for Copyright Infringement

On August 29, 2025, in a copyright dispute involving a public art tender for Kaohsiung Branch of Enforcement Agency of Ministry of Justice, the Intellectual Property and Commercial Court (“IPC Court”) found that the supplier’s artwork infringed the copyright of the Japanese artist Mr. Kino Satoshi. The Court ordered the destruction of the infringing artwork, and awarded the artist NT$ 2 million in damages.

The disputed artwork was commissioned as public art for the new building of Kaohsiung Branch of Enforcement Agency of Ministry of Justice (see below). The tender was awarded in 2017 to the Defendant, GeFeiYaChi Visual Image Design Ltd., and the disputed artwork was installed in 2018. 

(113-Ming-Chu-Su No. 92 (the IPC Court), see: https://reurl.cc/pYXzkl)

The Plaintiff, Mr. Kino Satoshi, is a renowned ceramic artist whose works have received international recognitions, including awards and exhibitions featured in prominent ceramics magazines. According to the Plaintiff, the Defendant’s public artwork infringed his 2015 ceramic piece “颪(眼)” (hereafter “Plaintiff’s work”, See below). 

                    (113-Ming-Chu-Su No. 92 (the IPC Court), see: https://reurl.cc/pYXzkl)

Based on the records, Plaintiff’s work had previously won the Recommendation Prize at Taiwan’s Ceramics Biennale in 2016, and was exhibited at the Yingge Ceramics Museum of New Taipei City that same year. The Plaintiff discovered the Defendant’s public artwork in 2022, deemed it a illegal copy, and filed copyright infringement lawsuit afterwards.

 

The IPC Court found substantial similarity between the disputed artwork and Plaintiff’s work, e.g., the interconnected two semicircles at the center, the flipped ribbon-like extensions on both sides, and the overall unique asymmetrical style. These shared elements, the IPC Court concluded, created a similar “overall concept and feel”.

 

The Defendant argued that the disputed artwork was independently created and that it had no access to the Plaintiff’s work. The IPC Court found these arguments unpersuasive:

 

First, the Defendant failed to provide clear and credible documentation of the creative process.

 

Second, the evidence submitted by the Defendant related mainly to photography, which is unrelated to ceramic art, undermining the Defendant’s claim of independent authorship. 

 

Third, given the high degree of similarity between the disputed artwork and the Plaintiff’s work, and the fact that Plaintiff’s work was exhibited in Taiwan in 2016, there is reasonable likelihood that the Defendant had access to Plaintiff’s work before submitting its bid in 2017. 

 

In light of the substantial similarity, the reasonable likelihood of access, and the absence of proof of independent creation, the IPC Court held the Defendant unlawfully copied Plaintiff’s work. The IPC Court ordered the destruction of the infringing artwork and awarded damages accordingly.

 

Source: 113-Ming-Chu-Su No. 92 (the IPC Court)

https://judgment.judicial.gov.tw/FILES/IPCV/113%2c民著訴%2c92%2c20250829%2c1.pdf