Taiwan: Scope of design patent prompts controversy
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

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After the case was brought to the Supreme Court, the Supreme Court rescinded the ruling rendered by the IP Court of second instance in favour of the design patent owner, and remanded the case to the IP Court of second instance for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 Offices7th Floor, No. 248, Section 3Nanking East RoadTaipei 105-45, Taiwan, ROCTel: +886 2 2775 1823Fax: +886 2 2731 6377siiplo@mail.saint-island.com.twwww.saint-island.com.tw

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article