Newsletter
Jurisdiction over the First Instance of Intellectual Property Civil Actions:
From Jurisdictional Priority to Special and Exclusive Jurisdiction
I. Introduction
Formerly, the Intellectual Property Case Adjudication Act (the "Adjudication Act") provides that the Intellectual Property and Commercial Court (the "IP Court") shall have jurisdictional priority over the first instance of intellectual property civil actions. However, the amendment this year to the Adjudication Act (approved by the Legislative Yuan on 12 January 2023, promulgated by the President on 15 February 2023, and enacted on 30 August 2023) has amended this jurisdictional priority to special and exclusive jurisdiction. What are their legal effects and differences? We have examined the recent Taiwan High Court Kaohsiung Branch Court 112-Kang-Geng(I)-Zi-10 Civil Case Ruling rendered during the transitional period of law amendment to illustrate the issue.
II. The special and exclusive jurisdiction adopted in the Adjudication Act after amendment
Article 9-1 of the Adjudication Act after amendment provides the following: "The first instance of civil matters provided in Articles 3-1 and 4 of the Intellectual Property and Commercial Court Organization Act shall be under the exclusive jurisdiction of the IP Court, and such jurisdiction shall not be affected by any added or amended claims; however, where Article 24 or Article 25 of the Code of Civil Procedure shall be applicable, the court referred to in such provisions shall also have jurisdiction."
This foregoing provision clearly illustrates what is meant by "special and exclusive jurisdiction." In other words, "the first instance of intellectual property civil matters shall be under the exclusive jurisdiction of the IP Court, unless the circumstances call for consensual jurisdiction or responding jurisdiction." Citing "technicality and legal expertise as features of intellectual property civil matters, pursuit of the objective of rendering judgments with consideration of specialized fields, and maintaining stability of proceedings" as the legislative reasons, the legislators stipulated that the IP Court shall have special and exclusive jurisdiction over the first instance of intellectual property civil matters.
Regarding the dispute of whether the jurisdictional priority adopted prior to amendment[1] causes the legal effect of judgements rendered by general courts to be negated—in other words, where a party files a lawsuit with a general court, can the court cite the jurisdictional priority of the IP Court as reason and ex officio render a ruling to transfer the case to the IP Court? In practice, there are divergent views on this issue. The special and exclusive jurisdiction adopted after amendment more clearly specifies the circumstances in which the first instance of intellectual property civil matters shall be processed in the IP Court and other general courts.
III. During the transitional period of law amendment: Taiwan High Court Kaohsiung Branch Court 112-Kang-Geng(I)-Zi-10 Civil Case Ruling
In this case, the plaintiff claims that the defendant infringed its trademark rights and copyright and accordingly initiated civil proceedings against the defendant with the Taiwan Ciaotou District Court. In its 112-Shen-Zhi-Zi-1 Civil Matter Ruling of 22 May 2023, the Court determined that the case shall be transferred to the IP Court because the IP Court has jurisdictional priority whereas the district court does not have jurisdiction. The case, through subsequent appeals and re-appeals taken from rulings, came to be pending for Geng(I) examination in Taiwan High Court Kaohsiung Branch Court. When the Court rendered 112-Kang-Geng(I)-Zi-10 Civil Case Ruling on 31 October 2023, the aforesaid amendment to the Adjudication Act had already been enacted. Therefore, even though the ruling did not specially cite the reasons for amendment to the Adjudication Act, it clearly took into consideration the gist of the amendment to the Adjudication Act and the trend of respecting specialized fields in handling cases by sustaining the reasons given in the ruling by the first-instance district court. As neither consensual jurisdiction nor responding jurisdiction shall be applicable under the circumstances of the case, the jurisdictional priority of the IP Court shall be recognized.
IV. Conclusion
Though jurisdictional priority differs from special and exclusive jurisdiction in terms of degree, it seems likely that, given the aforesaid Taiwan High Court Kaohsiung Branch Court 112-Kang-Geng(I)-Zi-10 Civil Case Ruling, the question of the jurisdiction of the first instance of intellectual property civil actions during the transitional period of law amendment will be largely influenced by the gist of the amendment and likely result in the determination that the IP Court shall have said jurisdiction, even under circumstances where jurisdictional priority is applicable.[2] This is in fact in line with the general trend of pursuing the objective of rendering judgments with consideration of specialized fields.
[1] Relevant regulations:
Article 7 of the Adjudication Act prior to amendment provides that the first instance of its cases shall be under the jurisdiction of the IP Court.
Article 9 of the Intellectual Property Case Adjudication Rules prior to amendment further provides the following: "No superior court may, on grounds of wrong jurisdiction, reverse the substantive adjudication of a civil or administrative court on an intellectual property civil or administrative action which, though not subject to the exclusive jurisdiction of the intellectual property court, shall be deemed to be so subject substantively."
[2] The forepart of Article 75-1 of the Adjudication Act after amendment provides that the first instance of intellectual property civil matters pending in court after 30 August 2023 shall be under the IP Court's special and exclusive jurisdiction, pursuant to Article 9-1 of the Adjudication Act after amendment; for those cases pending in court before 30 August 2023, the IP Court shall have jurisdictional priority, pursuant to Article 7 of the Adjudication Act prior to amendment and Article 9 of the Intellectual Property Case Adjudication Rules before amendment.