In Taiwan, when deciding design patent infringement cases, the Intellectual Property Court (IP Court) will refer to the Directions for Determining Patent Infringement issued by the Taiwan Intellectual Property Office (TIPO). These Directions were recently amended to expressly incorporate the holding of the Egyptian Goddess, Inc. v. Swissa, Inc. decision handed down by the United States Court of Appeals for the Federal Circuit.
The amended Directions include the following significant changes to factors to be considered in determining design patent infringement:
- Design patent infringement should now be assessed taking into consideration only the perspective of the “ordinary observer.” Prior to the amendment, the “point of novelty” was also considered in determining infringement;
- The ordinary observer is defined as someone who is reasonably familiar with the patented product as well as with the prior art; and
- The analysis of the similarity between the patented design and the accused product now adds the “three way comparison test” (i.e. comparison based on visual analysis of the prior art, the patented design and the accused product).
In the past, it was challenging for design patent holders to succeed in their infringement lawsuits (from 2008 to the present, only 30% of design patent infringement cases resulted in a determination of infringement) because minor differences between the patented design and the accused product would often be deemed to constitute a point of novelty. The existence of a point of novelty in the accused product led to a determination of no infringement. This was sometimes the case even if, from the ordinary observer’s perspective, the patented design and the accused product looked extremely similar or nearly identical.
The point of novelty issue was extensively discussed and ultimately abolished by the US Court of Appeals for the Federal Circuit in the Egyptian Goddess case. The same standard has now been adopted in Taiwan, which shows that the TIPO continues to monitor international developments and trends in intellectual property to see where modifications may be needed.
We are confident that the incorporation of Egyptian Goddess into the determination of design patent infringement in Taiwan will result in more consistent decisions handed down by the IP Court and a more predictable scope of protection for design patent holders.
These resources are drafted in a question and answer format that allows practitioners to easily compare Taiwanese data protection and privacy laws to the corresponding laws in other jurisdictions. The data protection overview covers the 2015 amendments to Taiwan’ Personal Information Privacy Act (the “PIPA”) that came into force earlier this year.
These articles are part of Practical Law’s global guide to data protection. A full list of contents can be viewed here.
Chen Hui-ling has written extensively on Taiwan’s data protection legislation, most recently for Privacy Laws and Business’ International Report on the latest amendments to the PIPA. Hui-ling is also a member of the Asian Privacy Scholars Network.
For more information on data protection or privacy matters in Taiwan, please contact Chen Hui-ling at firstname.lastname@example.org or +886 223112345 ext. 555.
When an employer needs to dismiss a certain amount of its Taiwan workforce over a defined period of time, the employer must comply with the provisions of the Act for Worker Protection of Mass Redundancy (the “MRA”). Any employer who does not follow the procedures under the MRA may be subject to administrative fines of up to NT$500,000. Mass layoffs are quickly becoming a prominent issue in Taiwan, with a total of 4,357 employees reported to the Ministry of Labor having been laid off during the period of January to April 2016 alone.
As Taiwan is not an at-will termination jurisdiction, any termination must comply with the Labor Standards Act (the “LSA”). Any employee termination in Taiwan must be made pursuant to one or more of the specific causes set forth under Article 11 and 12 of the LSA, and the employer must provide advance notice (or an amount in lieu thereof), severance pay, and any outstanding payments or benefits where an employee is terminated for any of the causes stipulated under Article 11. The most commonly used causes for termination under the LSA are where the employer’s business suffers operating losses or business contractions, where the employer’s business is transferred, or where there is a change in the nature of the business which necessitates a reduction of workforce.
The Ministry of Labor has the power to restrict the representatives or responsible persons of an employer from leaving Taiwan if the employer does not meet its obligations under the MRA. While the LSA sets statutory entitlements for all employees in Taiwan, the MRA must be followed where an employer intends to terminate a significant portion of its workforce over a defined period of time.
Whether the MRA applies to the employer’s intended layoff plan hinges on the number of employees the employer intends to lay off at each separate office location or work site (each, a “Site”). The employer will be subject to the provisions of the MRA when the number of employees to be laid off at any particular Site exceeds any one or more of the thresholds set out in the table below. These thresholds are based on (i) the number of employees at each Site and (ii) how many of these employees the employer intends to lay off either (a) in a single day, or (b) over the course of sixty days.
|No. of Employees at Site||Time Period||No. of Employees to be Laid Off|
|< 30||60 days||> 10 employees|
|30 – 200||1 day||> 20 employees|
|60 days||> 1/3 of workforce|
|200 – 500||1 day||> 50 employees|
|60 days||> 1/4 of workforce|
|> 500||1 day||> 80 employees|
|60 days||> 1/5 of workforce|
|Any Number||1 day||> 100 employees|
|60 days||> 200 employees|
If the number of employees that an employer intends to lay off for any given Site exceeds the applicable single day or sixty day threshold set forth above, then the MRA will apply. Pursuant to the MRA, the employer must create a mass layoff plan (a “Plan”) for each Site where the thresholds are exceeded. Each Plan must include:
- the cause of the mass layoff;
- the department(s) of the business entity affected by the mass layoff;
- the scheduled effective date of the mass layoff;
- the number of employees to be laid off;
- the criteria for selecting the employees to be laid off;
- the method for calculating severance pay; and
- whether the employer will provide any job transition assistance to affected employees.
The Plan must provide the affected employees with at least their minimum statutory entitlements upon termination as set out under the LSA.
An employer seeking to implement a Plan must notify the relevant authorities/agencies or personnel in the following order: (i) local labor authority; (ii) labor union/ labor representatives; (iii) the employees to be laid off. Actual notification requirements for each of these three groups are set forth below:
- Local labor authority. The employer must firstly submit the Plan to the relevant local labor authority. The relevant local labor authority is typically the Department of Labor of the local government nearest the Site.
- Labor union/ labor representatives. If a labor union exists within the business entity at the Site, then the employer must first notify the relevant labor union of the Plan. Absent a labor union, the employer must notify the labor representatives of the labor management committee or conference (the “LMC”).
- Employees. If the Site has no applicable union or LMC, the employer must deliver the Plan to the employees in the department(s) of the Site affected by the Plan. Delivery to these employees must be made publicly, and can be done via email or by posting a visible notice and copy of the Plan at each Site.
The above groups must be notified of any Plan at least 60 days prior to the proposed first termination date. Once notification has occurred, the affected employees and employer must enter into negotiations within 10 days from the start of this 60-day period. An employer cannot dismiss or transfer any of the employees involved in the mass layoff during this negotiation period.
If an agreement between the employer and employees is not reached within 10 days from the commencement of negotiations, the relevant local labor authority will invite the employer and employees to form a negotiating committee to finalize the terms of the Plan. This committee is chaired by a representative of the relevant local labor authority and typically meets every two weeks until an agreement is reached. Where a negotiating committee is formed, the local labor authority will dispatch consulting, employment services and vocational training personnel to the Site to assist affected employees. Employers must set times for such personnel to provide assistance.
At the expiry of the 60-day period, the employer can implement the Plan, provided the laid-off employees are provided all their statutory entitlements under the LSA.
While employers can offer more generous severance packages than that mandated under the LSA, it is not necessary to do so. If an employer seeking to implement a Plan believes that their legal basis for the layoff under the LSA is not strong enough or there is insufficient evidence to support the cause for termination, a more generous package that the statutory minimums offered under the LSA can be provided to the affected employees in order to facilitate a more efficient mass layoff process and reduce the risk of future disputes arising. Generally speaking, Taiwan employees are acutely aware of their minimum entitlements and are likely to try to negotiate for better terms of their termination.
For more information on Taiwan employment matters, please email Christine Chen at email@example.com or call +886 (0) 223112345 ext. 307.
 For the purposes of the MRA, “employees” does not include foreign employees working under work permits or employees on fixed-term contracts.
Winkler Partners has been recognized for our diversity efforts in Asian Legal Business’ 2016 Diversity List. Only ten law firms with an Asia presence were included in the list. According to Asian Legal Business (ALB), the list aims to “highlight firms in Asia that have developed a solid strategy when it comes to fostering diversity and inclusion, currently have programs in place to back up this strategy, and have made measurable progress in this regards”.
We were noted for our high ratio of both female and LGBT colleagues (over 50% and 9% respectively) as well as our commitment to providing continuing legal education opportunities to all staff. We were also praised for our “flat organizational structure that encourages coordination in place of management and discussions in which each member’s voice is valued”. According to ALB, we have “innovative programs aimed at championing women in the workplace”.
You can read about the ten firms on the 2016 Diversity List here.
In cases involving trademark squatters, the main remedies available to brand owners are filing an invalidation or opposition action against the squatter with the Taiwan Intellectual Property Office (“TIPO”) in an attempt to cancel or revoke the registration.
However, the statute of limitations bars a brand owner from filing an invalidation or opposition if five years have elapsed since registration of the mark. It is often the case that a brand owner does not discover the squatted mark soon enough and it is left without an administrative remedy.
A relatively recent judgment (2014) issued by the Taiwan Intellectual Property Court (the “IP Court”) held that Taiwan’s Civil Code and Fair Trade Act provide causes of action sounding in tort against a person who registers a trademark in bad faith. Min Gong Su Zi No, 5 (102). While the judgment does not create a precedent and was not appealed, it is significant because the statute of limitations in a tort action is two years from discovery of the harm or ten years from the time of the injury.
In other words, the door is open to seek alternative relief under the Civil Code and Fair Trade Act even after the statute of limitations for an invalidation or cancellation has run.
In the instant case, a mark was registered in Taiwan and 16 other jurisdictions despite having been registered for decades in leading European and North American jurisdictions. This conduct was held to be a intentional tort offending against good morals (Civil Code §184(1)) because it violated the Fair Trade Act’s catch-all prohibition against deceptive or obviously unfair conduct that interferes with the proper functioning of the market (Fair Trade Act §25).
The IP Court held that “the filing of these applications (by the Defendant) seems an attempt to free ride on the hard-won reputation of the Plaintiff’s mark for economic benefit and thus has adversely affected the trading order. This conduct violates business competition ethics and constitute violations of Article 24 of the Fair Trade Act.” The IP Court further held that the Defendant’s prior knowledge of the brand, and the effort and resources spent by the Plaintiff in attempting to cancel the registrations in multiple jurisdictions constituted dishonest commercial practice that caused the Plaintiff to suffer economic injury.
As a result, the IP Court awarded the plaintiff brand owner compensatory damages and issued an order directing the defendant to abandon its rights to the mark in Taiwan.
For more information on trademark enforcement matters in Taiwan, please contact Gary Kuo at firstname.lastname@example.org or +886 223112345 ext. 534.
 After February 2015 amendments to the FTA, Article 24 became Article 25.
From 21-25 May, 2016, Winkler Partners intellectual property team members will attend the 138th Annual Meeting of the International Trademark Association (INTA) in Orlando, Florida. According to the event website, this year’s meeting will include more than 300 educational events, workshops, talks by regional trademark offices, courses on international trademark law and advanced mediation training. Over 9,000 attendees are expected to attend.
Winkler Partners’ Peter Dernbach will be co-chairing this year’s annual meeting, with Turner Broadcasting System’s Rick McMurty. Peter was elected to the Board of Directors at INTA in 2015, and will serve through 2017.
Peter heads our IP practice and has substantial experience assisting clients in obtaining, enforcing and licensing their intellectual property rights. Other than his involvement with INTA, Peter is a member of the Marques China Team, has served as a panelist under ICANN’s UDRP system in more than 60 domain name disputes and co-chairs the IP & Licensing Committee at the American Chamber of Commerce Taipei.
Partners Christine Chen and Gary Kuo will also be attending along with members of our IP practice, Jason Yan, Mark Brown and Mark McVicar.
Christine Chen is an IP litigator and oversees our employment practice. Christine is noted for winning the largest payout in a trademark infringement case in Taiwanese legal history and regularly advises clients on employment and immigration matters pertaining to Taiwan.
Gary Kuo is an IP litigator focusing on anti-counterfeiting and competition law. He has also worked with the Taiwan Intellectual Property Office to revise Taiwan’s IP laws to better protect rights holders.
Jason Yan specializes in trademark clearance, prosecution and registry dispute issues. He manages trademark portfolios for some of the world’s leading brands, advising clients in a broad range of industries including beverage and food services, Internet providers, health and beauty products, and pharmaceuticals.
Mark Brown supports our intellectual property team with a particular focus on alcohol beverage trademarks. He has worked on several cases for some of the world’s largest alcohol and beverage companies on brand protection, geographical indications, enforcement, lobbying and regulatory matters, administrative and fair trade actions, and compliance in advertising and promotions.
Mark McVicar manages the trademark portfolios of multinational clients in a variety of industries including chemical, personal care, information technology, gaming, fashion and pharmaceuticals. Mark will also be running a session at this year’s INTA annual meeting on Cultural Intelligence.
If you are attending INTA this year, please don’t forget to introduce yourself. Full event details can be found here.
Partner Chen Hui-ling has contributed an article on Taiwan’s Personal Information Protection Act (PIPA) to Privacy Laws & Business‘ International Report. Privacy Laws & Business provides an independent privacy laws information service to many of the world’s largest companies, specialist lawyers and has over 2000 clients in 53 countries since its founding in 1987.
In her article, Hui-ling explains that the amendments that came into force on 15 March 2016 are a weakening of what some have called ‘the strictest privacy law in the world’, and go some way to striking a balance between data privacy and reasonable use. The amendments included the addition of several new types of sensitive information such as medical records that are not allowed to be collected, processed or used and outline ways in which consent may be granted by the data subject. She concludes by stating that while Taiwan’s recent amendments show that Taiwan is committed to meeting international standards, it is doing so cautiously and not taking the opportunity to innovate.
You can read the full article here.
For more information on data protection or privacy matters in Taiwan, please contact Chen Hui-ling at email@example.com or +886 223112345 ext. 555.
Head of our intellectual property practice Peter Dernbach has been included in World Intellectual Property Review’s WIPR Leaders 2016. The WIPR Leaders list features “1408 individuals worldwide recognized by their peers as the best and the brightest in IP private practice”.
In order to complete the list, over 15,000 in-house counsel and private practice attorneys were surveyed with further research carried out examining notable cases and practice history, speaking engagements and involvement in the global IP community.
Peter has been with Winkler Partners since 2003 and currently serves on the Board of Directors for the International Trademark Association (INTA). Peter will also be co-chairing INTA’s Annual Meeting between 21-25 May 2016. In addition to his involvement in INTA, Peter serves as a domain dispute panelist under ICANN’s UDRP system, is a member of the Marques China team and co-chairs the Intellectual Property & Licensing Committee at the American Chamber of Commerce Taipei.
Winkler Partners has been named by Asian Legal Business Magazine as an Employer of Choice for 2016, the second year in a row. Only three law firms in Taiwan were given the award this year.
The report was conducted by surveying employees at law firms across Asia for their opinion on salaries, firm reputation, work life balance, career advancement opportunities and a variety of other criteria. Asian Legal Business notes that a Winkler Partners’ colleague stated, ‘I enjoy coming to work. My colleagues care about each other and our clients. Bottom line: I can have it all: high-quality clients and colleagues, and quality of life’.
We were previously recognized as the sole Employer of Choice in 2015 and before in 2010. You can view the entire article here.
Head of our IP Practice Peter Dernbach was recently interviewed on IP Fridays, a weekly podcast covering intellectual property topics hosted by Ken Suzan, of counsel at Barnes & Thornburg LLP in Minneapolis, USA, and Dr. Rolf Claessen, partner at Patent Attorneys Freischem in Cologne, Germany.
In the twenty minute interview, Peter discussed the upcoming International Trademark Association (INTA) Annual Meeting being held in Orlando 21-25 May, which Peter will be co-chairing together with Rick McMurtry of Turner Broadcasting. Peter said he is most excited about the substantive programming, as he knows how much work went into planning it and is confident that a range of diverse topics will be on offer to interest the nearly 10,000 trademark professionals expected to attend. Peter was also asked about the issues facing trademark lawyers and brands in recent years, and said that while progress has been made on several fronts, intellectual property rights in the digital world remains a significant challenge.
You can listen to the full podcast here.