Newsletter
The Amendments to the Trademark Act
In order to accession to the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), Taiwan government has reviewed and revised relevant laws and regulations to meet the standards set out in the CPTPP free trade agreement. Considering CPTPP's provision in connection with offenses of preparatory acts like producing counterfeiting packaging and labels of trademarks are subject to criminal liability; however, under the current Taiwan Trademark Act, counterfeiting packaging and labels are subject to civil and criminal liability on the condition that the acts were carried out "knowingly". To meet the CPTPP's requirements, Taiwan Legislative Yuan passed the Amendments to the Trademark Act on 15 April 2022 and promulgated by the President on 4 May 2022. According to the Article 111 of Taiwan Trademark Act, the implementation date will be determined by the Executive Yuan. The main points of the amendments and amended provisions are as follows:
I. According to the current Taiwan Trademark Act, the subjective condition for counterfeiting labels to be held civilly liable is that the acts were carried out "knowingly". This condition has been deleted and will revert to "intentional" and "negligent" acts, i.e. the subjective conditions for general civil damages while rulings on violations of the act in criminal cases will be based on whether there is intent. Criminal provisions for counterfeiting labels of trademarks or collective trademarks have been added, and criminal liabilities now apply to some preparatory and contributory acts of infringement including the importation of counterfeit labels and packaging of trademarks. The amended Article 68, Article 95, Article 96 and Article 97 are as follows:
1. Amended Article 68
Any of the following acts, without obtaining consent of the proprietor of a registered trademark, constitutes infringement of the right of such trademark:
(1) using a trademark which is identical with the registered trademark in relation to goods or services which are identical with those for which it is registered;
(2) using a trademark which is identical with the registered trademark and used in relation to goods or services similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers; or
(3) using a trademark which is similar to the registered trademark and used in relation to goods or services identical with or similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers.
Any person who for him self or for others to use on identical with or similar goods/services as a registered trademark is designated, without obtaining the consent of the trademark owner, manufacturing, selling, holding, displaying, exporting or importing, for the purpose of marketing, labels, hang tags, packagings or items related to services with a mark identical with or similar to such registered trademark thereon also should be deemed constituting infringement of the right of such trademark.
2. Amended Article 95
Any person who commits any of the following acts, without obtaining the consent of the proprietor of a registered trademark or collective trademark, shall be liable to imprisonment for a period not exceeding three years and/or a fine not exceeding NT$200,000:
(1) using a trademark which is identical with the registered trademark or collective trademark in relation to goods or services which are identical with those for which it is registered;
(2) using a trademark which is identical with the registered trademark or collective trademark and used in relation to goods or services similar to those for which the registered trademark or collective trademark is designated, and hence there exists a likelihood of confusion on relevant consumers; or
(3) using a trademark which is similar to the registered trademark or collective trademark and used in relation to goods or services identical with or similar to those for which the registered trademark or collective trademark is designated, and hence there exists a likelihood of confusion on relevant consumers.
Any person who for him self or for others to use on identical goods/services as a registered trademark or collective trademark is designated, without obtaining the consent of the trademark owner, manufacturing, selling, holding, displaying, exporting or importing, for the purpose of marketing, labels, hang tags, packagings or items related to services with a mark identical with or similar to the registered trademark or collective trademark thereon shall be liable to imprisonment for a period not exceeding one year and/or a fine not exceeding NT$50,000.
The same penalties described in the preceding paragraph shall also apply to the offenses which are carried out through electronic media or on the Internet.
3. Amended Article 96
Any person who, without the consent of the proprietor of a registered certification mark, uses a mark which is identical with or similar to the registered certification mark and used in relation to goods or services identical with or similar to those for which the registered certification mark is designated, and hence is likely to mislead relevant consumers shall be liable to imprisonment for a period not exceeding three years and/or a fine not exceeding NT$200,000.
Any person who for him self or for others to use on identical goods/services as a registered certification mark is designated, without obtaining the consent of the certification mark owner, manufacturing, selling, holding, displaying, exporting or importing, for the purpose of marketing, labels, hang tags, packagings or items related to services with a mark identical with or similar to the registered certification mark thereon shall be liable to imprisonment for a period not exceeding three year and/or a fine not exceeding NT$200,000.
The same penalties described in the preceding paragraph shall also apply to the offenses which are carried out through electronic media or on the Internet.
4. Amended Article 97
Any person who sells or, due to an intent to sell, possesses, displays, exports, or imports another person's goods referred to the first paragraph of preceding two articles shall be liable to imprisonment for a period not exceeding one years and/or a fine not exceeding NT$50,000;
The same penalties described in the preceding paragraph shall also apply to the offenses which are carried out through electronic media or on the Internet.
II. In conformity with the deletion of the subjective condition "knowingly" mentioned above , the Article 70(3) which prescribes the corresponding provisions have also been deleted. The amended Article 70 are as follows:
Amended Article 70
Any of the following acts, without consent of the proprietor of a registered trademark, shall be deemed infringement of the right of such trademark:
(1) knowingly using a trademark which is identical with or similar to another person’s well-known registered trademark, and hence there exists a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark;
(2) knowingly using words contained in another person’s well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark.