Introduction
Differences between recent draft amendments and current regulations
No violation of principle of explicit delegation
Photos of suspected infringing goods as reference for determining infringement
Submission of evidence to online platform
Comment
The Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademarks were enacted pursuant to article 78(2) of the Trademark Act. The competent authority – the customs administration of the Ministry of Finance – has been actively drafting new amendments to the regulations.
The third and latest draft of the regulations, proposed on 9 June 2021 (the "June 2021 draft amendment"), was publicly announced in the Executive Yuan Gazette on 11 June 2021 under article 151(2) of the Administrative Procedure Act (article 154(1) of the Administrative Procedure Act shall be applied mutatis mutandis).
Differences between recent draft amendments and current regulations
The following table shows the differences between the current regulations and the three amendment drafts:
- the June 2021 draft amendment;
- the draft amendment proposed on 22 February 2021 (the "February 2021 draft amendment"); and
- the draft amendment proposed on 3 December 2020 (the "2020 draft amendment").
The June 2021 draft amendment was promulgated on 15 September 2021.
Current regulations | June 2021 draft amendment | February 2021 draft amendment | 2020 draft amendment |
Article 7(2)(1) | |||
"[T]he owner of a registered trademark shall identify the goods in question on-site for determining infringement within twenty-four (24) hours for import/export by sea freight and import by air freight, and then submit evidence of infringement or non-infringement within three (3) business days. Anyone failing to provide such evidence in time should apply in writing with a legitimate reason for an extension of additional three (3) business days prior to the deadline. Application for extension is acceptable only once." | "[T]he owner of a registered trademark shall identify the goods in question on-site at Customs' office or on the Customs' authorized platform for confirming whether to determine infringement within twenty-four (24) hours for import/export by sea freight and import by air freight, and then submit evidence of infringement or non-infringement within three (3) business days, by submitting either hardcopy or electronic copy to the Customs' authorized platform. Anyone failing to provide such evidence in time should apply in writing, by submitting either hardcopy or electronic copy to the Customs' authorized platform, with a legitimate reason for an extension of additional three (3) business days prior to the deadline. Application for extension is acceptable only once." (Emphasis added.) | "[T]he owner of a registered trademark shall identify the goods in question on-site for determining infringement within twenty-four (24) hours for import/export by sea freight and import by air freight, or apply to have Customs provide photo files of suspected infringing goods before notifying Customs whether to determine infringement within the prescribed time frame, and then submit evidence of infringement or non-infringement within three (3) business days. Anyone failing to provide such evidence in time should apply in writing with a legitimate reason for an extension of additional three (3) business days prior to the deadline. Application for extension is acceptable only once." (Emphasis added.) | "[T]he owner of a registered trademark shall identify the goods in question on-site for determining infringement within twenty-four (24) hours for import/export by sea freight and import by air freight, or apply to have Customs provide photo files of suspected infringing goods before notifying Customs whether to determine infringement within the prescribed time frame, and then submit evidence of infringement or non-infringement within three (3) business days. Anyone failing to provide such evidence in time should apply in writing with a legitimate reason for an extension of additional three (3) business days prior to the deadline. Application for extension is acceptable only once." (Emphasis added.) |
Article 7(2)(2) | |||
"The importer/exporter should submit documents of non-infringement within three (3) business days. Anyone failing to provide such evidence in time should apply in writing with a legitimate reason for additional three (3) business days prior to the deadline. Application for extension is acceptable only once." | "The importer/exporter should submit documents of non-infringement within three (3) business days by submitting either hardcopy or electronic copy to the Customs' authorized platform. Anyone failing to provide such evidence in time should apply in writing, by submitting either hardcopy or electronic copy to the Customs' authorized platform, with a legitimate reason for additional three (3) business days prior to the deadline. Application for extension is acceptable only once." (Emphasis added.) | No amendment. | No amendment. |
Article 7(5) | |||
"After receiving the notification of Paragraph 1, the owner of a registered trademark may request Customs to provide the photo files of suspected infringing goods as reference for determining whether to arrive on-site to identify the goods in question to determine infringement. But the photos files that Customs provided shall not be the basis of infringement or non-infringement evidence." (Emphasis added.) | "After receiving the notification of Paragraph 1, the owner of a registered trademark may access the photo files of suspected infringing goods on the Customs' authorized platform taken by Customs when seizing the goods as reference for determining whether to arrive on-site to identify the goods in question to determine infringement. But the photos files that Customs provided shall not be the only basis of infringement or non-infringement evidence." (Emphasis added.) | "After receiving the notification of Paragraph 1, the owner of a registered trademark requests Customs to provide the photo files of suspected infringing goods. The photos files, which being limited to those taken by the customs during the seizure, are references for the owner of a registered trademark on determining (1) whether an onsite inspection at the customs is needed or (2) to notify Customs whether to conduct an assessment. | "After receiving the notification of Paragraph 1, the owner of the registered trademark requests Customs to provide the photo files of suspected infringing goods. The photo files that Customs provided are reference for determining infringement, and shall not be the basis of infringement or non-infringement evidence." (Emphasis added.) |
Article 9(2) | |||
"The owner of a registered trademark does not arrive on-site to determine infringement prior to the deadline in accordance with Subparagraph 1 of Paragraph 2 of Article 7 hereof." (Emphasis added.) | "The owner of a registered trademark does not arrive on-site at Customs' office or enter on the Customs' authorized platform for confirming whether to determine infringement prior to the deadline in accordance with Subparagraph 1 of Paragraph 2 of Article 7 hereof." (Emphasis added.) | "The owner of a registered trademark does not determine infringement prior to the deadline in accordance with Subparagraph 1 of Paragraph 2 of Article 7 hereof." (Emphasis added.) | "The owner of a registered trademark does not determine infringement prior to the deadline in accordance with Subparagraph 1 of Paragraph 2 of Article 7 hereof." (Emphasis added.) |
No violation of principle of explicit delegation
To alleviate the burden on the owner of a registered trademark to arrive on site, both the February 2021 draft amendment and the 2020 draft amendment relaxed this requirement under article 7(2)(1). Further, article 9(2) of the February 2021 and 2020 draft amendments deleted the words "arrive on-site".
However, the regulations were enacted pursuant to article 75(2) of the Trademark Act, which reads:
In giving the notice referred to in the preceding paragraph, Customs shall specify a period for the owner of the trademark to arrive on-site to identify the infringement and furnish proof of infringement, and Customs shall also specify a period for the importer/exporter to furnish proof of non-infringement". (Emphasis added.)
The fact that the Trademark Act specifies that trademark owners must arrive on site – and yet the February 2021 and 2020 draft amendments to the regulations relaxed this requirement – raised concerns that the February 2021 and 2020 draft amendments might violate the principle of explicit delegation.
The June 2021 draft amendment amended "arrive on-site" to "[arrive] on-site at Customs' office or [enter] on the Customs' authorized platform". As the Chinese word "至" in the term "至海關" ("arrive on site") has two meanings – "arrive on site" and "enter on" – the concern about violating the principle of explicit delegation is thus reduced.
The June 2021 draft amendment explains that technological advancements make it possible for customs to provide trademark owners with photos of suspected infringing goods on its authorised online platform. If a trademark owner does not manufacture or sell the seized goods, it can still determine the authenticity of suspected infringing goods merely by looking at photos thereof. Further, unlike the previous draft amendments, the June 2021 draft amendment enables trademark owners to directly access photos of the suspected infringing goods without having to apply to see them.
Having to arrive on site within 24 hours can present difficulties for trademark owners. Trademark agents may not receive instructions from foreign trademark owners in time, which leaves trademark owners unable to protect their trademark rights. The June 2021 draft amendment, in providing that a trademark owner can confirm whether to determine authenticity online, will alleviate this requirement, which will result in a reduction of travel expenses, time spent and human resources required.
Photos of suspected infringing goods as reference for determining infringement
In article 7(5) of the June 2021 amendment, the Customs Administration left out the words "[T]he photo files that Customs provided shall not be the basis of infringement or non-infringement evidence", and instead specified that "[T]he photo files that Customs provided shall not be the only basis of infringement or non-infringement evidence" (emphasis added).
This amendment relates to the February 2021 draft amendment, which reads as follows (for further details, please see "Customs Administration proposes to relax regulations regarding trademark owner requests for photos"):
if the owner has included those photos into their infringement assessment report as evidence, one needs to be responsible for such own decision. The infringement determination should be made after considering all related evidence and it is not recommended to use the photos provided by Customs as the only evidence. (Emphasis added.)
Submission of evidence to online platform
Article 7(2)(1) of the June 2021 amendment states as follows:
[T]he owner of a registered trademark shall …submit evidence of infringement or non-infringement within three (3) business days, by submitting either hardcopy or electronic copy to the Customs' authorized platform. (Emphasis added.)
Article 7(2)(2) of the June 2021 amendment states as follows:
[t]he importer/exporter should submit documents of non-infringement within three (3) business days by submitting either hardcopy or electronic copy to the Customs' authorized platform. (Emphasis added.)
Trademark owners, importers and exporters can choose either to submit hard-copy evidence or to send electronic copies of evidence via the newly established online platform.
Due to the potential lockdown measures in place as a result of the covid-19 pandemic and technological advancements, the June 2021 draft amendment provides that trademark owners can review suspected infringing goods and submit documents online. This significantly alleviates the burden on trademark owners and improves Taiwan's ability to protect trademarks. The draft also shows the government's determination to protect IP rights.
For further information on this topic please contact Audrey Liao or Wei-Ting Liao at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300) or email ([email protected] or [email protected]). The Lee and Li website can be accessed at www.leeandli.com.