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