A design patent is to offer exclusive protection for the appearance of an object with novel and unique design features, such as shape, patterns and the layout of the patterns of an object. Although the Patent Act stipulates that the scope of a design patent mainly involves the drawings, the question is whether logos or indication symbols on the drawings should be deemed a part of the design features. Since the implementation of the new R.O.C. Design Patent Act in 2013, there have been significant changes in practice with respect to the treatment of trademarks and signs on the drawings.

 

In the past, if not only the shape, decorative patterns and colors of an article but also the words, trademarks and signs on the article were disclosed in the drawings of a design, for example, the manufacturer's logo or a word such as ON/OFF indicating the product's function, then such logo, signs or trademarks were usually not considered features of the design patent and thus did not serve as the basis for interpreting the scope of a design patent, unless the design application document had expressly stated that they are part of the design features. If the applicant had expressly stated such trademark-like patterns, signs or indicative words as part of the design features, then these signs and words would be construed as "patterns which create visual effect"; however, the meaning implied by such words and signs which ordinary persons can be easily aware of would not be considered as part of the design features.

 

The aforementioned practice is reflected from the Design Examination Guidelines issued by the Taiwan Intellectual Property Office (TIPO) in 2005:

 

"Any words, trademark or signs on an article disclosed by the drawings of a design application shall generally not be considered part of the patterns unless any of the following items are stated in the description of creation:

 

(1)  The words, trademarks or signs themselves exhibit visual effect.

 

(2)  Although the words, trademarks or signs themselves do not exhibit visual effect, they present an overall visual effect as a result of the design layout."

 

Before 2013, the courts also adopted the abovementioned standards in interpretation of design patent scope with regard to trademarks or words in the drawings of a design patent.

 

Recently, the TIPO's practice has shifted. When the TIPO notes that there are trademarks or symbols with particular meaning in the drawings of a design application, the TIPO will issue a notification to the design patent applicant. In the notification, the TIPO states the following: "If the words or patterns in the drawings which look like trademarks or special symbols are indeed trademarks and are not part of the claimed design features, please provide a clear explanation in the ‘Design of Creation’." If the applicant fails to do so, the TIPO will treat such words or symbols as patterns when the examination is conducted; the meaning ordinarily associated with such words, trademarks or signs will not be taken into consideration during the examination. This change in practice is reflected from the Design Examination Guidelines issued in 2013: "If the words, trademark, symbols (such as barcode, indication of chemical composition, and numerical symbols on mobile phones, clocks or watches) disclosed in the drawings are not part of the patterns that the applicant intends to claim for protection in the design application, the applicant must state in the 'Description of Creation' that these words, trademarks, symbols, etc. form no part of the claimed design."

 

In summary, according to the new practice, if the drawings of a design application contain trademarks and/or logos, and if the applicant does not clearly state that they form no part of the claimed subject matter, the design features will include these "trademark-like/logo-like patterns with visual effect" but not involve the meaning ordinarily associated with such words, trademark or signs. Under such circumstances, when interpretation of the design patent scope is conducted, such trademarks and logos in the drawings are in principle part of the limitations for the scope of the design patent.