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）
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