The implementation of Customs border measures in protecting trademarks is a protection mechanism and plays a key part of the strategies for protecting trademarks. In brief, the mechanism allows a proprietor of a trademark registered in Taiwan to file an application with Customs to have such trademark recorded into Customs’ database and Customs can seize counterfeits when it inspects imported or exported goods ex officio. The legal basis of such mechanism is rooted in the Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark (hereinafter referred to as the “Regulations”), which is enacted pursuant to Paragraph 2 of Article 78 of the Trademark Act.

To strengthen protection of the proprietor of a registered trademark, implement an e-government and simplify administrative procedures, the Regulations were amended on December 30th, 2016 and took effect as of January 1st, 2017. There are many major amendments to the Regulations; therefore, we would like to introduce the key points of this Amendment and the relevant practices as follows:

1.Protection period of one year extends to the expiry of the registration period of the trademark

Prior to this Amendment, the protection period approved by Customs merely lasted for one year and, consequently, the proprietor of a registered trademark had to file a renewal application with Customs on a yearly basis, which increases the application cost of the proprietor and the work burden of Customs. Therefore, this Amendment extended the protection period to the expiry of the registration period of the trademark. For instance, Customs will approve a five-year protection period in the event that the registration period of the trademark is going to expire within five years. As a result, the proprietor of a registered trademark no longer needs to submit the relevant documents to file a renewal application with Customs every year.

However, it shall be noted that the proprietor of a registered trademark still needs to file an application to Customs for extension of the protection period before it expires if the approval letter issued by Customs prior to this Amendment specified that the protection period would expire by XXX (date) 2017. Namely, Customs will not voluntarily apply this Amendment to extend the protection period to the expiry day of the registration period of the trademark. However, if the proprietor of a registered trademark completes the application for extension of the protection period and obtains approval from Customs prior to the expiry of the protection period on XXX (date) 2017, Customs will apply this Amendment and specify in the synopsis of the approval letter that the protection period will extend to the expiry of the registration period of the trademark.

In addition, while an application for protection is filed, the proprietor of a registered trademark shall submit sufficient electronic image files to help Customs identify the defining characteristics of genuine goods and counterfeit goods (for example, photos or catalogs of genuine goods, counterfeit goods or a comparison between both) and, according to Paragraph 1.2 of Article 3 of this Amendment, the images should be the designated goods of the registered trademark. Therefore, Customs will reject electronic image files of “non-designated goods of the registered trademark” uploaded by the applicant while dealing with protection applications.

2.The proprietor of a registered trademark may file an application to Customs for extension of the protection period by submitting supporting documents that prove the renewal of the registration period of the trademark approved by the TIPO

As the protection period approved by Customs has extended to the expiry of the registration period of the trademark, if the aforesaid registration period has been renewed by the Taiwan Intellectual Property Office (TIPO), the proprietor of a registered trademark may file an application to Customs for extension of the protection period till the expiry of the renewal registration period of the trademark by submitting supporting documents of renewal. There is no need for the proprietor to file another application for protection, which helps to lighten procedural burdens.

3.While notifying the proprietor of a registered trademark of likely infringements, Customs may convey such by means of oral notice, text, telephone, email or facsimile

Before this Amendment, Customs shall notify the proprietor of a registered trademark by means of telephone and facsimile when the trademark of the proprietor is likely to be infringed by imported or exported goods in question. However, Paragraph 3 of Article 7 of this Amendment provides that “when dealing with the notification, Customs may convey such by means of oral notice, text, telephone, email or facsimile and make a record attached to the file”. After this Amendment, in practice, it did happen that Customs would contact the proprietor of a registered trademark merely by means of telephone instead of the more commonly used means of facsimile. As a result, the proprietor of a registered trademark would miss the phone call and then lose opportunity to verify the imported or exported goods in question on-site which deserve the special attention of the proprietor of a registered trademark.

4.Customs may provide the proprietor of a registered trademark with photos of suspected infringing goods to help the proprietor determine whether to verify the goods on-site

Prior to this Amendment, Customs had started to provide the proprietor of a registered trademark with photos from July 1st, 2015 if it found the trademark and copyright of the proprietor likely to be infringed. Aiming to help the proprietor determine whether to verify the suspected infringing goods on-site so as to strengthen the intellectual property right protection and facilitate customs clearance procedures, this statement, however, only appeared in the news release by Customs (http://web.customs.gov.tw/ct.asp?xItem=73518&ctNode=4298).

Paragraph 5 of Article 7 of this Amendment therefore expressly provides that the proprietor of a registered trademark may, after receiving notification from Customs, make a request to Customs for providing photos of suspected infringing goods so as to determine whether to verify the goods on-site.

It shall be added that photo files of suspected infringing goods provided by Customs are only used to help the proprietor of a registered trademark to determine whether to verify the goods on-site and shall not be the basis of infringement or non-infringement evidence.

With regard to “make a request to Customs for providing photos of suspected infringing goods”, practically, the proprietor of a registered trademark may request Customs personnel in charge to take color photos of samples and email to the proprietor or his/her agent. If the suspected infringing goods be readily identified as genuine goods, the proprietor or his/her agent can save time and efforts to verify them on-site; but if there are difficulties verifying the suspected infringing goods, the proprietor should go to Customs or authorize his/her agent to verify the same on-site.

5.Circumstances where Customs may prematurely terminate the protection period

Since the protection period approved by Customs has been extended to the expiry of the registration period of a trademark which lasts for ten years and is allowed to extend by ten-year increments upon request, any circumstance may occur during such a long registration period of trademark protection. Moreover, only under assistance from the proprietor of a registered trademark or his/her agent can Customs implement the requested trademark protection measures. Therefore, Article 5 of this Amendment specially provides “circumstances where Customs may prematurely terminate the protection period”, including “Customs cannot get in contact with the proprietor of a registered trademark or his/her agent by the information specified in the application form of protection” and “the proprietor of a registered trademark who has no domicile or business establishment in the territory of the ROC had a contract of agency with his/her agent but the contract had been rescinded or abolished in any other circumstances which does not meet the requirement of appointing an agent in the proviso of Paragraph 1 of Article 14 of the Regulations.

In principle, it is up to the proprietor of a registered trademark to decide whether to retain an agent when dealing with Customs-relevant affairs. However, if the proprietor of a registered trademark has no domicile or business establishment in the territory of the ROC, Paragraph 1 of Article 14 of this Amendment particularly regulates that mandatory agency shall apply and the designated agent shall have a domicile in the ROC so as to facilitate the implementation of trademark protection measures by Customs, for instance, contacting the proprietor of a registered trademark to verify suspected infringing goods on-site or delivery of documents.

Last but not least, although this Amendment did not expressly specify that the proprietor of a registered trademark may upload “(a blacklist of) suspected infringers”, which is allowed, in practice, the application form of “Trademark Right Protection” provided by Customs, either prior to or after this Amendment, is designed with a “blacklist” field to make Customs pay special attention to goods imported and exported by suspected vendors. This field is especially useful in improving the effectiveness of protection requested by the proprietor of a registered trademark when the proprietor is struggling to find specific facts and evidence proving that suspected vendors have imported or exported counterfeits. Therefore, the proprietor of a registered trademark can make good use of this field.