Mechanism of provisional execution
Provisional execution in trademark infringement cases
Comment
Mechanism of provisional execution
The term "provisional execution" refers to execution in advance. Specifically, in an action concerning proprietary rights, for the purpose of protecting creditor's interests, provisional execution is given the same enforcement power as a final judgment before such judgment is finally rendered with binding effect. That is, the creditor may petition for a compulsory execution of a final judgment in favour thereof before such judgment is rendered with binding effect, so as to prevent the losing debtor from delaying the execution by filing an appeal.
Article 390 of the Taiwan Code of Civil Procedure provides as follows:
In an action concerning proprietary rights, where the plaintiff makes a preliminary showing that they will suffer damage difficult to compensate for or calculate without execution of the final judgment before it becomes final with binding effect, the court shall, on the plaintiff's motion, declare provisional execution. Where the plaintiff makes a motion for provisional execution by stating a willingness to provide security before the execution is performed, the court shall, despite the absence of the preliminary showing provided in the preceding paragraph, designate a reasonable amount of security and then declare the judgment to be provisionally executed upon provision of such security.
Provisional execution enables a creditor to petition for compulsory execution of a final judgment in favour thereof before such judgment becomes final with binding effect, such that the creditor can realise their rights beforehand. Moreover, as long as the creditor states a willingness to provide security and petitions for provisional execution, they bear no burden of further explanation and proof, and yet the court will make a provisional execution declaration. The mechanism of provisional execution is thus widely adopted by creditors in practice.
Provisional execution in trademark infringement cases
In trademark infringement cases – for example, where a trade name infringes upon a trademark – the plaintiff's statement of claims usually covers the following (details may vary based on the factual matters of individual cases):
- The defendant shall not use in the licensed part of its trade name characters/words identical or similar to the plaintiff's trademark, and shall apply for a trade name change and register a new trade name free from characters/words identical or similar to the plaintiff's trademark.
- The defendant shall not use marketing items containing characters/words identical or similar to the plaintiff's trademark, and shall remove and destroy such marketing items.
- The defendant shall publish the court judgment, including the case number, parties involved, cause of action and main text.
- The defendant shall pay any and all damages awarded to the plaintiff.
Among the noted claims, the plaintiff's petition that the defendant publish relevant texts of the court judgment in a newspaper to restore any damage incurred to the plaintiff's reputation is an action concerning non-proprietary rights. Regarding the petition against the use of words/characters identical or similar to plaintiff's trademark in the licensed parts of defendant's trade name and in the defendant's marketing items, it is acknowledged in practice that, since such petition is filed to enjoin and prevent alleged infringer(s) from infringement on the trademark at issue, it is obviously an action concerning proprietary rights as the petition focuses on economic interests and has a proprietary value. Therefore, the plaintiff may legally petition for provisional execution to prevent the use of words/characters identical or similar to the plaintiff's trademark in the licensed parts of the defendant's trade name and in the defendant's marketing items.
According to the judgments of the Intellectual Property and Commercial Court (IPCC), it was once believed that in actions concerning proprietary rights, the court would declare provisional execution in the main text of a judgment as long as the plaintiff expressed willingness to provide security and petitioned for provisional execution. In recent years, however, the IPCC has rendered multiple judgments in connection with trademark infringement in which plaintiffs' petitions for enjoining and preventing trademark infringement were approved and yet petitions for provisional execution with respect thereto were rejected.
For example, in a civil judgment issued by IPCC in early 2022,(1) the plaintiff's claims included no use of words/characters identical or similar to the plaintiff's trademark in the licensed part of the defendant's trade name, no use of words/characters identical or similar to the plaintiff's trademark in the defendant's marketing items, and a petition for a damage award. The three requests were approved in the main text of the judgment. As for the plaintiff's petition for provisional execution, the IPCC only approved the provisional execution of the requested damage award, while rejecting the provisional execution of the petition for enjoining and preventing infringements of the trademark at issue on the grounds of "inappropriateness in nature for a declaration of provisional execution".
The mechanism of provisional execution enables creditors to petition before a court for a compulsory execution of a final judgment in favour thereof before such judgment is rendered with binding effect, so as to prevent losing debtors from delaying the execution by filing an appeal. In accordance with article 390-2 of the Taiwan Code of Civil Procedure, where the plaintiff makes a motion for provisional execution by stating willingness to provide security before the execution is performed, the court shall designate a reasonable amount of security and then declare the judgment to be provisionally executed upon provision of such security. No other restrictive conditions are imposed in article 390.
In trademark infringement cases, however, the IPCC has changed practice in recent years and rarely executes petitions for enjoining and preventing infringement until a final judgment is rendered with binding effect. That is, after a first- or second-instance judgment rules in favour thereof, the plaintiff is unable to turn to the mechanism of provisional execution and have the court, after security is provided, force the defendant to change their trade name, remove and destroy infringing marketing items, or stop their infringing acts before a final judgment is rendered with binding effect.
For further information on this topic please contact Audrey Liao or Eleanor Chuang 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.
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