Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark (hereinafter referred to as the “Regulations”), enacted pursuant to Paragraph 2 of Article 78 of the Trademark Act, provide concrete guidelines for Customs to follow in implementing border protection measures with respect to trademark rights.
Subparagraph 1 of Paragraph 2 of Article 7 of the Regulations stipulates that “[T]he owner of a registered trademark shall identify the items in question on-site for determining infringement within twenty-four (24) hours for import/export by sea freight and import by air freight . . . .” In practice, the obligation to arrive on-site within twenty-four hours has often proved burdensome for trademark owners. For instance, many trademark owners reside overseas, and as their agents often have to contact them for authorization and instructions on whether to identify and verify the items in question on-site that involve the appraisal of authenticity, differences in time zones and vacations in various countries often mean twenty-four hours are insufficient. Even if the trademark owner happens to reside in Taiwan, the time when counterfeits are seized is sporadic. Sometimes trademark owners receive notice when Customs is about to close for the day. But the twenty-four hour countdown begins pursuant to the foregoing provision, severely limiting the time in which the trademark agent can contact the domestic trademark owner for instructions and the decision-making time of the latter.
To address the issue, the amendment to the Regulations made on 30 December 2016 added Paragraph 5 of Article 7: “After receiving [Customs] notification . . ., the owner of a registered trademark may make a request to Customs for providing the photo files of suspected infringing goods so as to determine whether to identify the goods on-site or not.” This is to assist the trademark owner in determining whether to arrive on-site within twenty-four hours. But this amendment does not really alleviate the pressure on the trademark owner, having to arrive on-site within the limited time frame.
In light of the above, Customs Administration of Ministry of Finance recently proposed draft amendment to Subparagraph 1 of Paragraph 2 of Article 7 of the Regulations. In addition to the existing provision (“[T]he owner of a registered trademark shall identify the items in question on-site within twenty-four (24) hours for import/export by sea freight and import by air freight . . . .”), the clause “[O]r apply to have Customs provide photo files of suspected infringing goods within the prescribed time frame before notifying Customs whether to determine infringement” has been added.
There are two reasons for the draft amendment: (1) “[D]ue to advance in modern technology, it should be technically feasible to capture and transmit clear image files through photo-taking. In practice, one can observe photo files of import/export such as a trademark owner’s goods yet to be produced or sold to determine infringement.” (2) [C]ustoms practices in the US, Japan, Germany, South Korea, India, and China provide owner(s) of a registered trademark with photos of suspected infringing goods and do not make it compulsory for the said owner to determine infringement on-site.”
The most recent draft amendment to the Regulations offer an alternative to on-site determination of infringement: today’s accurate and reliable photo-taking technology. This effectively eases the burden on the trademark owner for having to be on-site to determine infringement. The conception of the draft amendment is thus commendable.
However, compared with the current Paragraph 5 of Article 7 of the Regulations (“After receiving the notification of Paragraph 1, the owner of a registered trademark may make a request to Customs for providing 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. Photos that Customs provided shall not be the basis of infringement or non-infringement evidence.”), the draft amendment have modified the wording to “[Such photo files are] as reference for determining infringement, but not the basis of infringement or non-infringement evidence.” The revision seems to suggest that, while a trademark owner may use the photos of suspected infringing goods provided by Customs as reference in determining whether the goods are infringing, he may not regard the said photos as the basis of determining that the said goods are infringing. As the reasons for amendment have affirmed that today’s photo-taking technology can create photos that faithfully represent the appearance of suspected infringing goods, which effectively take the place of a visit to Customs, it seems contradictory to stipulate that photos provided by Customs may not serve as the basis of determining infringement.
Actually, in judicial practice, the admissibility of evidence and the weight thereof shall be examined in the determination of infringement. Thus, even if the draft amendment by Customs Administration has the intent to alleviate pressure on the trademark owner with respect to the twenty-four hour time frame by amending Subparagraph 1 of Paragraph 2 of Article 7 of the Regulations, Paragraph 5 of Article 7 of the Regulations (“[M]ake a request to Customs for providing the photo files of suspected infringing goods . . . . [Such photo files] may not serve as the basis of infringement or non-infringement evidence.”) seeks to have the trademark owner undertake a meticulous and comprehensive process of appraisal through the appraisal of photographs.
Currently, Customs Administration is in the process of collecting opinions from various relevant governmental agencies and non-governmental organizations regarding the draft amendment, and will consider these opinions before reaching a decision on whether to revise the current draft amendment. Further progress will be promulgated pursuant to procedures for giving advance notice.