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Judicial Yuan and IP Court 2015 Intellectual Property Forum Consensus on IP Issues

The Judicial Yuan and the Intellectual Property Court held the "Intellectual Property Forum" at the Intellectual Property Court on 4 & 5 May 2015. The Chief Justice of the Supreme Court moderated the discussions on civil litigation issues while the President of the IP Court moderated the criminal and administration litigation issues. The participants comprised of judges and public prosecutors of the first instance and second instance, attorneys, patent agents and patent attorneys as well as personnel from the Petitions and Appeals Committee of the Ministry of Economic Affairs (MOEA, the authority in charge of administrative appeal) and representatives from the Intellectual Property Office (IPO, the authority in charge of trademark, patent as well as other IP matters).
This forum discussed 12 proposed issues and reached consensus on the following specific issues:
1.  For the damage claim against civil liabilities due to trademark infringement, once the unit prices of the various kinds of the seized counterfeit goods are different, the average unit prices of these goods should be cited as the basis for calculation of claimed damages.
2.  The defense of prior use in good faith against the registered trademark owner's infringement accusation may just be cited as a defense rather that a right. Nonetheless, while the business is assigned, the assignee may also raise the prior use defense and then may still continue using the prior used trademark as the assignor did.
3.  Whether the use of the registered trademark as a company name will violate the Trademark Act should take the provisions of the Trademark Act when the company was established into consideration.
4.  Copyright ownership or authorship of the copyrightable works for work for hire may be determined by contact.
5.  The Trademark Act may have jurisdiction merely over Taiwan, exclusive of the trademark infringement conducted in China.
6.  Public performance of the copyrightable music at KTVs is not a type of renting.
7.  Once the patentee loses the patent litigation case and is dead later, the statutory period of the appeal should be renewed when the heir takes over the litigation.
Although the consensus reached at the Intellectual Property Forum cannot be considered as precedents, the public prosecutors and the judges of the courts will usually take such consensus into consideration while examining specific issues of the pending cases. Therefore, the consensus reached by the Intellectual Property Forum does have substantial influence on the investigation and trial of the intellectual property cases.