All questions

Civil litigation

i Forums

It can be assumed that the judges presiding over the IP Court are competent and knowledgeable in the area of IP. Accordingly, a trademark owner normally institutes infringement proceedings before the IP Court (see Article 3(1), Intellectual Property Court Organization Act). Nevertheless, a common court (i.e., a district court) may also try a trademark infringement case if the trademark owner (as plaintiff) and the alleged infringer (as defendant) designate a common court as exercising jurisdiction, by a written agreement (see Article 24, Code of Civil Procedure).

Courts having jurisdiction to hear trademark infringement matters are specifically as follows:

  1. first instance: the IP Court (see Article 3(1), Intellectual Property Court Organization Act) or a mutually agreed district court (see Article 24, Code of Civil Procedure);
  2. second instance: the IP Court (see Article 3(1), Intellectual Property Court Organization Act), no matter whether the court of first instance is the IP Court or a district court; and
  3. third instance: Supreme Court (see Article 20, Intellectual Property Case Adjudication Act).
ii Pre-action conduct

There are no special pretrial formalities with respect to civil proceedings on trademark matters. If, however, the price or value of the subject matter is less than NT$500,000 (e.g., the claimed damages are less than NT$500,000), the court will institute a mediation proceeding before commencing litigation (see Article 403(1)(xi), Code of Civil Procedure). Formal demand letters or warning letters are popular although not required.

iii Causes of action

Causes of action regarding trademarks, company names, trade or business names, domain names and other trade dresses include primarily the following categories:

  1. violations of the Trademark Act (e.g., infringement of registered trademarks – see Article 69);
  2. violations of the Company Act (e.g., Articles 10, 18 and 19);
  3. violations of the Business Registration Act (e.g., Articles 28 and 29); and
  4. violations of the Fair Trade Act (e.g., Articles 22 and 29).
iv Conduct of proceedings

Civil proceedings generally proceed as follows.

First instance

The first instance generally includes the following procedures: initiation of litigation, preparation for oral argument (finished ordinarily with two court appearances), oral argument (finished ordinarily with one court appearance) and judgment. Both factual and legal examinations will be conducted in the first instance. That is, the court will examine any legal, factual or evidentiary issues during the preparation for oral argument and oral argument proceedings. In the first instance, the parties need not be represented by a litigation agent who has to be a lawyer in principle (see Article 68, Code of Civil Procedure). For court fees, the losing party is responsible for paying the court fees of the first instance (see Article 78, Code of Civil Procedure). As to attorney fees, the parties are responsible for paying their own attorney fees. Specifically, the losing party is not required to reimburse the prevailing party for attorney fees. The time frame for the first instance is from about six to 12 months.

Second instance (first appeal)

The second instance generally includes the following procedures: filing of appeal, preparation for oral argument (finished ordinarily with two court appearances), oral argument (finished ordinarily with one court appearance) and judgment. Both factual and legal examination will be conducted in the second instance. The appellate court, however, will not examine additional or new means of attack or defence (including laws, facts and evidence) presented by the parties during the preparation for oral argument and oral argument proceedings in principle, while many exceptions exist (see Article 447(1), Code of Civil Procedure). That is, the second instance adopts the system of successive examination rather than the system of repetitive examination. In the second instance, the parties need not be represented by a litigation agent who has to be a lawyer in principle (see Article 68, Code of Civil Procedure). For court fees, the losing party is responsible for paying the court fees of the first and second instance (see Article 78, Code of Civil Procedure). As to attorney fees, the parties are responsible for paying their own attorney fees. Specifically, the losing party is not required to reimburse the prevailing party for attorney fees. The time frame for the second instance is from about six to 12 months.

Third instance (second appeal)

The third instance generally includes the following procedures: filing of appeal, written review and judgment. Only legal examination will be conducted in the third instance. That is, the appellate court will only examine any legal issues during the written review proceedings. In the third instance, the appellant must be represented by a litigation agent, unless the appellant, one of its specific relatives or a member of its staff is a lawyer (see Article 466 bis (1), Code of Civil Procedure); however, the appellee need not be represented by a litigation agent who has to be a lawyer in principle (see Article 68, Code of Civil Procedure). For court fees, the losing party is responsible for paying the court fees of the first, second and third instance (see Article 78, Code of Civil Procedure). As to attorney fees, the parties are responsible for paying their own attorney fees in theory, and only a small part thereof is bearable by the losing party (see Articles 77-25(2) and 466 quater (1)). Specifically, the losing party is not required to reimburse the prevailing party for attorney fees or need only reimburse the prevailing party for a small part of the attorney fees. The time frame for the third instance is from about one to two years.

v Remedies

Remedies existing for the trademark owner are as follows.

For owners of registered trademarks
  1. To stop the infringement: to demand a person who infringes on the trademark rights to stop the infringement (see Article 69(1), Trademark Act);
  2. prevention of infringement: to demand a person who is likely to infringe on its trademark rights to prevent the infringement (see Article 69(1), Trademark Act);
  3. destruction of infringing articles: to demand a person who infringes on its trademark rights to destroy the infringing articles and the materials or implements used in infringing on the trademark rights (see Article 69(2), Trademark Act); and
  4. damages: to demand that a person who infringes on its trademark rights intentionally or negligently pay damages (see Articles 69(3) and 71, Trademark Act).
For owners of unregistered well-known trademarks
  1. To stop the infringement: to demand a person who infringes on its trademark rights to stop the infringement (see Article 29, Fair Trade Act);
  2. prevention of infringement: to demand a person who is likely to infringe on its trademark rights to prevent the infringement (see Article 29, Fair Trade Act);
  3. damages: to demand that a person who infringes on its trademark rights pay damages (see Articles 30 and 31(2), Fair Trade Act);
  4. punitive damages: to demand that a person who infringes on its trademark rights intentionally pay punitive damages of up to three times the proven amount of damage (see Article 31(1), Fair Trade Act); and
  5. publication of the judgment: to demand that a person who infringes on its trademark rights publish the content of the judgment in a newspaper at the infringer’s expense (see Article 33, Fair Trade Act).

Other enforcement proceedings

Trademark infringement constitutes a criminal offence in Taiwan (see Articles 95 to 97, Trademark Act). A criminal procedure for a trademark infringement offence is typically as follows:

  1. The trademark owner files a complaint with a judicial police officer.
  2. The judicial police officer sends the result of his or her investigation to a public prosecutor.
  3. The public prosecutor indicts the alleged infringer in a public prosecution before a district court.
  4. The district court hands down a guilty judgment.
  5. The accused (alleged infringer) appeals to the IP Court.
  6. The IP Court dismisses the appeal of the accused.
  7. The accused appeals to the Supreme Court.
  8. The Supreme Court dismisses the appeal of the accused.

In addition, our legal system provides for Customs seizure of counterfeit goods, but not for Customs seizure of parallel imports. The reason is that import or export of counterfeit goods is illegal anyway under Taiwanese trademark law, but parallel imports are legal because of international exhaustion of trademark rights under Taiwanese trademark law (see Article 36(2), Trademark Act). A Customs seizure procedure for counterfeit goods is typically as follows:

  1. Customs find that the imported or exported articles are obviously likely to be counterfeit (infringing articles).
  2. Customs gives notice to the trademark owner or its representative or agent in Taiwan and requires it to travel to the Customs office for identification, generally within 24 hours. Customs gives notice to the importer or exporter at the same time and requires its provision of relevant evidence of non-infringement.
  3. The trademark owner identifies the articles as counterfeit and provides relevant evidence of infringement.
  4. The importer or exporter provides relevant evidence of non-infringement.
  5. The trademark owner files an application for seizure of the articles with Customs.
  6. Customs seizes the articles.
  7. The trademark owner brings a trademark infringement action before the IP Court and gives notice to Customs.