TIPS^®  Taiwan Intellectual Property Special

Border Control Mechanism for Trademark Protection in Taiwan

The newly amended Taiwan Trade Mark Law took effect on November 28, 2003. The Amendment specifically prescribes regulations and procedures a trade mark owner may apply to the Custom to suspend the release of goods that are suspected of infringing upon his/her trade mark rights. Along with the Trade Mark Monitoring System, the Customs are armed with more complete power to stop infringing goods to cross the border line.

I. Trade Mark Monitoring System for Exports

The Trade Mark Monitoring System was established by the Board of Foreign Trade of the Ministry of Economic Affairs and the Directorate General of Custom of the Ministry of Finance years ago. A trade mark owner may apply to register information about its trade mark, such as the trade mark device, licensed manufacturers, term of exclusive use. After reviewing, the Board of Foreign Trade enters the information in a database, which is transmitted to various local custom offices for reference as to check whether a trade mark used on exports infringes on any trade mark registered under the System. The Customs will, ex officio, inspect cargoes at random. Should an identical or similar trade mark be found on export goods in the same commodity category as those registered in the System, the Customs will not allow goods to be exported and will inform the trade mark owner. The System covers only exportation.

II. Border Control for Imports and Exports

To implement the newly amended Trade Mark Law and Copyright Law, the Directorate General of Customs, the Ministry of Finance, announced on June 10, 2003 the “Operation Guidelines for the Enforcement of Border Control Mechanism for Trade Mark and Copyright Protection” (the “Guidelines), for Customs to stop pirated goods at the border.

In order to facilitate ordinary international trade and to avoid an unnecessary barrier at Customs, the Guidelines provide that a report or tip-off from a trade mark owner (or their attorney) triggers the border control mechanism. Any trade mark owners, or their attorney, who believes that the imported or exported goods may infringe their trade mark right, may report to the Directorate General of Customs or any local custom office in accordance with the Guidelines with required documents and concrete information. Then the Custom will assist the right owner to locate the suspect goods according to the information provided. The information required for a report or tipping-off includes information about the rightful owner, facts of infringement, photos or pictures, as well as descriptions that can help identification of the infringing goods (e.g., photos showing the genuine goods and the counterfeiting goods and the difference), channel of selling the goods, and contact information. A report shall also includes documents proving that the information is correct and concrete, such as the importer or exporter that is alleged to have made the infringement, the alleged infringing goods, the importing or exporting port, date, flight or ship number, cargo number, and the storage site of the goods. If the alleged infringing goods are found, the reporting party (i.e. the trade mark owner or the attorney) is required to provide a bond to Customs in order to seize the goods, or to request a provisional remedy from the court for Customs to seize the goods.

In combination, the two pieces of regulations afford stronger enforcement mechanism to trademark owners and are expected to facilitate IPR protection in Taiwan.