Newsletter
The Draft Amendment to Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark (2021.06.09 Publicly Announced Version)
Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark (hereinafter referred to as the “Regulations”) are enacted pursuant to Paragraph 2 of Article 78 of the Trademark Act. The competent authority, Customs Administration, Ministry of Finance, recently has been actively drafting new amendments. The third & latest draft of the Regulations proposed on 2021.06.09 (hereinafter referred to as the "2021.06 draft amendment") has been publicly announced on the Executive Yuan Gazette since 2021.06.11 according to Paragraph 2 of Article 151 of Administrative Procedure Act (Paragraph 1 of Article 154 of Administrative Procedure Act shall be mutatis mutandis applied). A 60-days period of public comments has commenced and any party could raise comments on the 2021.06 draft amendment by 2021.08.10. After the public comment period ends, the Customs Administration will review the comment, if any. If there is no comment or if the Customs Administration accept the comment by amending the draft again, the draft of the Regulations will not have to be publicly announced again and may be enacted by the end of 2021.08.
I. Differences between recent draft amendments and current Regulations
The table below showcases the differences between the current Regulations and the latest three amendment drafts, proposed on 2021.06.09, 2021.02.22 (hereinafter referred to as the "2021.02 draft amendment") and 2020.12.03 (hereinafter referred to as the "2020 draft amendment") respectively.
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2021.06 Draft Amendment
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2021.02 Draft Amendment
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2020 Draft Amendment
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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 at Customs' office or on the Customs' authorized platform for confirming whether to determine infringement within twenty-four (24) hours for import/export by sea freight and import by air freight, and then submit evidence of infringement or non-infringement within three (3) business days, by submitting either hardcopy or electronic copy to the Customs' authorized platform. Anyone failing to provide such evidence in time should apply in writing, by submitting either hardcopy or electronic copy to the Customs' authorized platform, with a legitimate reason for an extension of additional three (3) business days prior to the deadline. Application for extension is acceptable only once”
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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, and then submit evidence of infringement or non-infringement within three (3) business days. Anyone failing to provide such evidence in time should apply in writing with a legitimate reason for an extension of additional three (3) business days prior to the deadline. Application for extension is acceptable only once”
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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, and then submit evidence of infringement or non-infringement within three (3) business days. Anyone failing to provide such evidence in time should apply in writing with a legitimate reason for an extension of additional three (3) business days prior to the deadline. Application for extension is acceptable only once”
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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, and then submit evidence of infringement or non-infringement within three (3) business days. Anyone failing to provide such evidence in time should apply in writing with a legitimate reason for an extension of additional three (3) business days prior to the deadline. Application for extension is acceptable only once.”
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Subparagraph 2 of Paragraph 2 of Article 7
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“The importer/exporter should submit documents of non-infringement within three (3) business daysby submitting either hardcopy or electronic copy to the Customs' authorized platform. Anyone failing to provide such evidence in time should apply in writing, by submitting either hardcopy or electronic copy to the Customs' authorized platform, with a legitimate reason for additional three (3) business days prior to the deadline. Application for extension is acceptable only once.”
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(No amendment)
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(No amendment)
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“The importer/exporter should submit documents of non-infringement within three (3) business days. Anyone failing to provide such evidence in time should apply in writing with a legitimate reason for additional three (3) business days prior to the deadline. Application for extension is acceptable only once.”
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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 may access the photo files of suspected infringing goods on the Customs' authorized platform taken by Customs when seizing the 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 only basis of infringement or non-infringement evidence.”
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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 photos files, which being limited to those taken by the customs during the seizure, are references for the owner of a registered trademark on determining (1) whether an onsite inspection at the customs is needed or (2) to notify Customs whether to conduct an assessment.
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“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.”
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“After receiving the notification of Paragraph 1, the owner of a registered trademark may 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 arrive on-site at Customs' office or enter on the Customs' authorized platformfor confirming whether to determine infringement prior to the deadline in accordance with Subparagraph 1 of Paragraph 2 of Article 7 hereof.”…
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…“2. The owner of a registered trademark does not determine infringement prior to the deadline in accordance with Subparagraph 1 of Paragraph 2 of Article 7 hereof.”…
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…“2. The owner of a registered trademark does not determine infringement prior to the deadline in accordance with Subparagraph 1 of Paragraph 2 of Article 7 hereof.”…
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…“2. The owner of a registered trademark does not arrive on-site to determine infringement prior to the deadline in accordance with Subparagraph 1 of Paragraph 2 of Article 7 hereof.”…
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II. No Violation against the Principle of the Explicit Delegation– “[arrive] on-site at Customs' office or [enter] on the Customs' authorized [online] platform ”
To alleviate the burden on the owner of a registered trademark to arrive on-site, both the 2021.02 and 2020 draft amendments have relaxed such requirement for the owner of a registered trademark required by Subparagraph 1 of Paragraph 2 of Article 7. Also, Paragraph 2 of Article 9 of both the 2021.02 and 2020 draft amendments further have deleted the “arrive on-site.” However, the Regulations were enacted in pursuant to Paragraph 2 of Article 75 of the Trademark Act 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 the Trademark Act has specified “arrive on-site” yet the 2021.02 and 2020 draft amendments of the Regulations have relaxed the requirement regarding physical appearance has raised concerns that the 2021.02 and 2020 draft amendments might violate the principle of explicit delegation.
The 2021.06 draft amendment amends the “arrive on-site” to “[arrive] on-siteat Customs' office or [enter] on the Customs' authorized platform.” As the Chinese word “至” in the term “至海關” (“arrive on-site”) has two meanings: “arrive on-site” or “enter on”, the concern on violating the principle of explicit delegation shall be lower.
The Purpose of the 2021.06 draft amendment explains that the technological advancements making it possible for Customs to provide trademark owner with the photos of suspected infringing goods on the Customs' authorized online platform. Besides, if the trademark owner does not manufacture or sell the seized goods, the trademark owner could determine the authenticity merely with the photos of suspected infringing goods. Furthermore, compared with the previous draft amendments, in the 2021.06 draft amendment, trademark owner can directly access the photos of the suspected infringing goods without application for requesting the photo files.
Under the practice of trademark border protection, requesting the trademark owner to arrive on-site within 24 hours does cause the owner's burden of communication. Sometimes, the trademark agent could not receive instructions from foreign trademark owner within 24 hours which results in the fact that the owner could not actively protect its trademark right. The 2021.06 draft amendment which provides that the trademark owner could confirm whether to determine the authenticity online will alleviate the burden on the owner of a registered trademark to arrive on-site (e.g. the travelling expenses, time spent and human resources), and is a shot in the arm for the trademark border protection.
III. Photos of the suspected 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 that Customs provided shall not be the only basis of infringement or non-infringement evidence” in Paragraph 5 of Article 7 from the 2021.06 draft amendment. This amendment is referring to the Purpose of the 2021.02 draft amendment, which 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.”This amendment is also corresponding to Audrey's and Wei-Ting's comments in their article analyzing the 2021.02 draft amendment published in 2021.03.
IV. An convenience measure for the trademark owner and the importer/exporter – submit evidence to online platform
“[T]he owner of a registered trademark shall …submit evidence of infringement or non-infringement within three (3) business days, by submitting either hardcopy or electronic copy to the Customs' authorized platform.” quoted in Subparagraph 1 of Paragraph 2 of Article 7 of the 2021.06 draft amendment and “[t]he importer/exporter should submit documents of non-infringement within three (3) business days by submitting either hardcopy or electronic copy to the Customs' authorized platform.” quoted in Subparagraph 2 of Paragraph 2 of Article 7 of the 2021.06 draft amendment provide that both the trademark owner and the importer/exporter could choose to either submit evidence in the form of hardcopy or submit electronic copy to the newly established Customs' authorized online platform.
V. Conclusion
Due to the possible crowd control caused by the current Covid-19 situation and the technological advancements, the 2021.06 draft amendment provides that the trademark owner could review the suspected infringing goods online and submit documents online. The 2021.06 draft amendment significantly alleviates the burden on the trademark owner and upscales Taiwan's image on trademark protection. Furthermore, the draft shows the Taiwan government's determination to stay the course to protect intellectual property right.