Trademark

Updated Remedies And New Types of Trademark Infringement -- Draft Amendment to Trademark Act (3)

The Draft Amendment amends some remedies for the infringement of trademark rights, and adds new types of trademark infringement:

1. Limit the trademark right infringement to infringing use that is “for marketing purposes.” Infringing conduct that is subject to trademark law regulation does not include behaviors by the end consumers of the marketing chain. (Article 68)
2. Restrict destruction of raw materials or equipment utilized for infringement to those raw materials or equipment that are mainly used to engage in infringing activities. Should the main purpose of the raw materials or equipment be for use other than infringing activities, they may avoid destruction. Furthermore, the court should evaluate whether destruction will violate the principle of proportionality in terms of the damages resulted in by the infringement. (Article 69)    
3. Require willfulness or negligence for damage claims, while it is a no-fault liability in terms of preventing or excluding trademark infringement
   . In addition, the amendment adds a statute of limitation for the right of damage claim being 2 years from knowing the liable person or 10 years from the commencement of the infringing activity. This is to harmonize the split opinions at courts in current judicial practice by following the existing stipulation in the Civil Code that, for a holder to assert his right in a damage claim, it is essential to prove that the offender had a hostile intent. As for the right of excluding or preventing trademark right infringement, it is sufficient to have mere objective facts of infringement or the likelihood of infringement. (Article 69)
4. Deem contributory infringement a type of trademark infringement.  The newly added provision in the draft amendment specifies that any person who knowingly aids and prepares trademark infringement by manufacturing, possessing, displaying, selling, or importing/exporting trademark labels, packaging or related articles that have not yet been combined with the goods or services, will be held liable. (Article 70)

Extend criminal liability to knowingly possessing infringing articles for sale. This is to criminalize buyers who initially buy infringing goods for personal use or receive the said goods as a gift, subsequently intending to sell them for profit. To block the current loophole in the Trademark Act, penalized conduct includes on-line displaying or selling through electronic means. (Article 96)