Newsletter
The Latest Draft Amendment to Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark (2021.02.22 Version)
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, aims to provide concrete guidelines for Customs to follow when implementing border protection measures with respect to trademark rights. The competent authority, Customs Administration, Ministry of Finance, has been actively drafting new amendments in recent years in the hope of accommodating technological progress with more flexible trademark protection measures.
I. Differences between recent draft amendments and current Regulations
The table below showcases the differences between the current Regulations and the latest two amendment drafts, draft proposed on 2021.02.22 (hereinafter referred to as the "2021 draft amendment") and 2020.12.03 (hereinafter referred to as the "2020 draft amendment.")
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2021 Draft Amendment |
2020 Draft Amendment |
Current Regulations |
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Subparagraph 1 of Paragraph 2 of Article 7 |
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“[T]he owner of a registered trademark shall identify the goods in question on-site for determining infringement within twenty-four (24) hours for import/export by sea freight and import by air freight, or apply to have Customs provide photo files of suspected infringing goods before notifying Customs whether to determine infringement within the prescribed time frame…” |
“[T]he owner of a registered trademark shall identify the goods in question on-site for determining infringement within twenty-four (24) hours for import/export by sea freight and import by air freight, or apply to have Customs provide photo files of suspected infringing goods before notifying Customs whether to determine infringement within the prescribed time frame…” |
“[T]he owner of a registered trademark shall identify the goods in question on-site for determining infringement within twenty-four (24) hours for import/export by sea freight and import by air freight . . . .” |
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Paragraph 5 of Article 7 |
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“After receiving the notification of Paragraph 1, the owner of a registered trademark requests Customs to provide the photo files of suspected infringing goods. The photo files limited to referring to the goods that Customs had seized are reference for determining whether to arrive on-site to identify the goods in question to determine infringement or reference for notifying Customs that whether the trademark owner will determine infringement.” |
“After receiving the notification of Paragraph 1, the owner of the registered trademark requests Customs to provide the photo files of suspected infringing goods. The photo files that Customs provided are reference for determining infringement, and shall not be the basis of infringement or non-infringement evidence.” |
“After receiving the notification of Paragraph 1, the owner of a registered trademark may make a request Customs to provide 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. But the photos files that Customs provided shall not be the basis of infringement or non-infringement evidence.” |
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Subparagraph 2 of Article 9 |
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…“2. The owner of a registered trademark does not identify the goods in question to determine infringement prior to the deadline in accordance with Subparagraph 1 of Paragraph 2 of Article 7 hereof.”… |
…“2. The owner of a registered trademark does not identify the goods in question to determine infringement prior to the deadline in accordance with Subparagraph 1 of Paragraph 2 of Article 7 hereof.”… |
…“2. The owner of a registered trademark does not arrive on-site to identify the goods in question to determine infringement prior to the deadline in accordance with Subparagraph 1 of Paragraph 2 of Article 7 hereof.”… |
II. Principle of the Explicit Delegation in Trademark Act
To alleviate the burden the owner of a registered trademark to arrive on-site (e.g. the expense, time spent and human resources), Customs Administration has proposed to relax the regulation set out in the subparagraph 1 of paragraph 2 of Article 7. Both the 2021 and 2020 draft amendments have abandoned the requirement for the owner of a registered trademark to arrive on-site required by the subparagraph 1 of paragraph 2 of Article 7. The owner can now choose to determine the authenticity with the photos of suspected infringing goods provided by Customs and then notify Customs that whether the trademark owner will determine infringement within the timeframe set out by the Regulations. Both paragraph 2 of Article 9 amendments further have deleted the “arrive on-site.”
Besides the technological advancements making it possible to identify the authenticity of the goods from photos, when referring to other state laws such as the U.S.A, Japan, Germany, South Korean, India, or China (the P.R.C), one can hardly find any regulation that requires physical presence on-site to Customs. The requirement that the owner of a registered trademark to arrive on-site in Customs within 24 hours has posed great burden in practices, such as the communication that undertakes between attorneys and the trademark owners. Oftentimes, limited by the 24-hour time frame, though wanting to enforce their rights the trademark owner can only call quit.
The Regulations were enacted in pursuant to Trademark Act paragraph 2 of Article 75 that reads “In giving the notice referred to in the preceding paragraph, Customs shall specify a period for the owner of the trademark to arrive on-site to identify the infringement and furnish proof of infringement, and Customs shall also specify a period for the importer/exporter to furnish proof of non-infringement…”. The fact that Trademark Act has specified “arrive on-site” yet the draft amendments of the Regulations have relaxed the requirement regarding physical appearance has raised concerns that the subparagraph 1 of paragraph 2 of Article 7 of the draft amendments might violate the principle of explicit delegation. Considering the directions and goals of amendment are of good will, it is expected that all related competent authorities come together and work on future drafts or legal packages.
III. Photos of the infringing goods as reference for determining infringement
Customs Administration has left out “[T]he photo files that Customs provided shall not be the basis of infringement or non-infringement evidence”, and instead specified “[T]he photo files limited to referring to the goods that Customs had seized are reference for determining whether to arrive on-site to identify the goods in question to determine infringement or reference for notifying Customs that whether the trademark owner will determine infringement” in Paragraph 5 of Article 7 from the 2021 draft amendment.
The Purpose of the 2021 draft amendment reads that “if the owner has included those photos into their infringement assessment report as evidence, one needs to be responsible for such own decision. The infringement determination should be made after considering all related evidence and it is not recommended to use the photos provided by Customs as the only evidence.” It acknowledged that the photos can serve as evidence, but should not be the “only” evidence that supports the infringement determination. Photos are important and effective materials when determining trademark infringement cases, it might be too rigid if the Regulations were to rule out its admissibility as evidence. Besides, the owner of a registered trademark should carry the burden of proof when claiming trademark infringement.
IV. Possible ambiguity of the subject matter
“[T]he owner of a registered trademark shall …or apply to have Customs provide photo files of suspected infringing goods before notifying Customs that whether to determine infringement within the prescribed time frame…” quoted in subparagraph 1 paragraph 2 of Article 7 of the 2021 draft amendment encompassed a lengthier text, and the subject matter can be ambiguous. Thus, it is advised to change the text to “[T]he owner of a registered trademark shall …or apply to have Customs provide photo files of suspected infringing goods before notifying Customs that whether the trademark owner will determine infringement within the prescribed time frame…” with the reference of paragraph 5 of Article 7 of the 2021 draft amendment.
Regarding the progress of the 2021 amendment, Customs Administration has been actively collecting feedback from all related units and civil organizations and pushing the legislation agenda. We are in support of an amendment of the Regulations and look forward to its promulgation and implementation.