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Office Action from Intellectual Property Office as an Evidence of Criminal Intent for Criminal Trademark Infringement
In addition to civil liability, a trademark infringer might also be found criminally liable for trademark infringement under the Trademark Act in Taiwan. According to Article 59 of the Trademark Act, the basic elements of a criminal claim for trademark infringement are the same as a civil claim: the trademark infringer should use a trademark that is identical or similar to other's registered trademark in relation to identical or related goods or services. Other than these elements, a criminal trademark claim in Taiwan requires "criminal intent", with which the infringer must know or have reason to know that it infringed other's registered trademark.
In the practice of criminal litigations, the "criminal intent" of a trademark infringer may be difficult to prove. However, according to the past court decisions, if a trademark infringer received an office action refusal from the Taiwan Intellectual Property Office because of a likelihood of confusion with other's registered trademark, courts in Taiwan often cited such official actions as evidence to support the infringer's criminal intent. In a recent criminal trademark infringement case, the Intellectual Property Court in Taiwan took the same approach.
In this case, the Defendant manufactured and sold raincoats with an infringing trademark. The Defendant claimed that he had never purchased anything from the registered trademark owner and did not know the existence of the registered trademark. Since recklessness or criminal negligence is not enough to constitute criminal trademark infringement in Taiwan, the Defendant should not be guilty.
The Intellectual Property Court, on the other hand, pointed out that the Defendant applied for trademark registration with the Taiwan Intellectual Property Office. The Taiwan Intellectual Property Office issued an office action which refused registration because of the trademark owner's prior registered trademark. According to the Court, the Defendant should have known the existence of the trademark at issue and should have known that that there might be a likelihood of confusion with the prior trademark. Further, the Defendant did not prevent the raincoats with infringing trademark from being sold to the market despite knowing the risk of likelihood of confusion. As a conclusion, the Court held that the Defendant had the criminal intent for criminal trademark infringement in Taiwan.