Introduction
"Intentional" and "negligent" acts
Acts committed "knowingly"
The Taiwanese government has reviewed and revised various laws and regulations to ensure that they meet the standards set out in the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP).(1)
Under the CPTPP, offences of preparatory acts (eg, producing counterfeiting packaging and labels including others' trademarks) are subject to criminal liability. However, under the Trademark Act, producing counterfeiting packaging and labels are subject to civil and criminal liability only if such acts were carried out "knowingly".
On 15 April 2022, the Legislative Yuan passed various amendments to the Trademark Act, which were promulgated by the president on 4 May 2022. The implementation date will be determined by the Executive Yuan, in line with Taiwan's accession to the CPTPP. This article outlines the main changes introduced by the amendments.
"Intentional" and "negligent" acts
According to the current Taiwan Trademark Act, the subjective condition for parties to be held civilly liable for producing counterfeit labels is that the acts were carried out "knowingly". This condition has been deleted and will refer instead to "intentional" and "negligent" acts – that is, the subjective conditions will apply for general civil damages, while rulings on violations of the Act in criminal cases will be based on whether there is intent. Criminal provisions for counterfeiting labels containing others' trademarks or collective trademarks have been added, and criminal liabilities now apply to some preparatory and contributory acts of infringement, including importing counterfeit labels and packaging including others' trademarks.
Article 68
Article 68 now reads as follows:
Any of the following acts, without obtaining consent of the proprietor of a registered trademark, constitutes infringement of the right of such trademark:
(1) using a trademark which is identical with the registered trademark in relation to goods or services which are identical with those for which it is registered;
(2) using a trademark which is identical with the registered trademark and used in relation to goods or services similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers; or
(3) using a trademark which is similar to the registered trademark and used in relation to goods or services identical with or similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers.
Any person who for himself or for others to use on identical with or similar goods/services as a registered trademark is designated, without obtaining the consent of the trademark owner, manufacturing, selling, holding, displaying, exporting or importing, for the purpose of marketing, labels, hang tags, packaging or items related to services with a mark identical with or similar to such registered trademark thereon also should be deemed constituting infringement of the right of such trademark.
Article 95
Article 95 now reads as follows:
Any person who commits any of the following acts, without obtaining the consent of the proprietor of a registered trademark or collective trademark, shall be liable to imprisonment for a period not exceeding three years and/or a fine not exceeding NT$200,000:
(1) using a trademark which is identical with the registered trademark or collective trademark in relation to goods or services which are identical with those for which it is registered;
(2) using a trademark which is identical with the registered trademark or collective trademark and used in relation to goods or services similar to those for which the registered trademark or collective trademark is designated, and hence there exists a likelihood of confusion on relevant consumers; or
(3) using a trademark which is similar to the registered trademark or collective trademark and used in relation to goods or services identical with or similar to those for which the registered trademark or collective trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.
Any person who for him self or for others to use on identical goods/services as a registered trademark or collective trademark is designated, without obtaining the consent of the trademark owner, manufacturing, selling, holding, displaying, exporting or importing, for the purpose of marketing, labels, hang tags, packaging or items related to services with a mark identical with or similar to the registered trademark or collective trademark thereon shall be liable to imprisonment for a period not exceeding one year and/or a fine not exceeding NT$50,000.
The same penalties described in the preceding paragraph shall also apply to the offenses which are carried out through electronic media or on the Internet.
Article 96
Article 96 now reads as follows:
Any person who, without the consent of the proprietor of a registered certification mark, uses a mark which is identical with or similar to the registered certification mark and used in relation to goods or services identical with or similar to those for which the registered certification mark is designated, and hence is likely to mislead relevant consumers shall be liable to imprisonment for a period not exceeding three years and/or a fine not exceeding NT$200,000.
Any person who for himself or for others to use on identical goods/services as a registered certification mark is designated, without obtaining the consent of the certification mark owner, manufacturing, selling, holding, displaying, exporting or importing, for the purpose of marketing, labels, hang tags, packagings or items related to services with a mark identical with or similar to the registered certification mark thereon shall be liable to imprisonment for a period not exceeding three year and/or a fine not exceeding NT$200,000.
The same penalties described in the preceding paragraph shall also apply to the offenses which are carried out through electronic media or on the Internet.
Article 97
Article 97 now reads as follows:
Any person who sells or, due to an intent to sell, possesses, displays, exports, or imports another person's goods referred to the first paragraph of preceding two articles shall be liable to imprisonment for a period not exceeding one years and/or a fine not exceeding NT$50,000;
The same penalties described in the preceding paragraph shall also apply to the offenses which are carried out through electronic media or on the Internet.
In line with the deletion of the subjective condition "knowingly", article 70(3), which prescribes the corresponding provisions, has also been deleted.
Article 70
Article 70 now reads as follows:
Any of the following acts, without consent of the proprietor of a registered trademark, shall be deemed infringement of the right of such trademark:
(1) knowingly using a trademark which is identical with or similar to another person's well-known registered trademark, and hence there exists a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark;
(2) knowingly using words contained in another person's well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark.
For further information on this topic please contact Cathy Ting or Sophia Chen at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email ([email protected] or [email protected]). The Lee and Li website can be accessed at www.leeandli.com.
Endnotes
(1) This article is the second in a two-part series on recent amendments to IP laws in Taiwan. For the first article, see "Taiwan's Copyright Act has been amended: what you need to know".