One of the most straightforward and cost-effective approaches for a trademark owner to halt infringement is to seek customs border protection. In order to increase efficiency and transparency of border control and considering the advancement of technology, on June 9, 2021, the Taiwan Customs Administration proposed a draft Amendment to the “Implementing Rules for Protecting the Rights and Interests in Trademark on the Border”. According to Paragraph 2, Article 7 of the draft Amendment, the Customs Administration is to install a new online platform from which a trademark owner can readily retrieve available data, including digital photo files of suspected infringing goods for verification purposes, thus alleviating the trademark owner’s burden to appear within a 24-hour time limit at the customs house to verity whether a batch of suspected infringing goods are counterfeits or not.
According to current rules, a trademark owner may file an application with the customs house to record a registered trademark. Based on such recordation, the customs house will conduct inspections ex officio. If any imported/ exported goods suspected of infringement are found, the trademark owner or his/her agent will need to respond to the customs house on a 24-hour notice and appear at the customs house soon after to identify the detained goods. He/she is also required to submit a report within 3 business days to declare that the detained goods are counterfeits and the reason why. Otherwise, the goods will be released unconditionally.
The above strict timelines would undoubtedly impose heavy obligations on trademark owners, especially those having premises or business places outside of Taiwan. Thus, in order to alleviate trademark owners’ burden, the draft Amendment offers an alternative to on-site verification of suspected infringing goods. According to Paragraph 5, Article 7 of the Amendment, upon receiving a notice from the customs house regarding the finding of possible infringing goods, the trademark owner will be able to gain access to digital photo files of the goods found by the customs house on an online platform to be installed. As such, the trademark owner or his/her agent no longer needs to pay a personal visit to the customs house on a short notice.
After obtaining digital photo files from the platform, the trademark owner may:--
i. visit either the customs house or the online platform within a prescribed time limit (4 hours for export air flight, and 24 hours for import air flight and import/export sea flight) to determine whether he/she is to take the next action against the suspected infringing goods.
ii. If the suspected infringing goods are assumed to be counterfeits based on digital photo files and/or on-site goods inspection, it will be necessary for the trademark owner to, within 3 business days, submit to the customs house an infringement analysis report or upload to the platform the report in order to request seizure of the suspected infringing goods and pursue further procedures. Said time limit can be extended for another 3 business days upon request of the trademark owner.
On the other hand, the importer/ exporter needs to either submit relevant printed documents proving non-infringement or upload them to the platform within 3 business days which is extendable for another 3 business day upon request. Otherwise, the goods will be formally seized by the customs house and the case, as well as the seized goods will be transferred to the judicial authorities.
It is anticipated that the new platform will bring about much more convenience to trademark owners and increase the transparency of customs border protection.
One other matter which merits special attention is Paragraph 5, Article 7 of the draft Amendment which stipulates that, digital photos files uploaded to the platform can serve as reference but cannot be relied upon as one and only reference referred to in an assess infringement or cited in an infringement lawsuit.
Due to the change of the relevant rules, trademark owners are urged to pay attention to the following:
i. In assessing trademark infringement, the trademark owner should evaluate all available information and conduct a comprehensive and thorough analysis based on a totality of the circumstances.
ii. In case infringement issue arises, during judicial proceedings, the trademark owner’s representative will need to submit a testimony. He/she may also be cross-examined in Court as to how and why the relevant goods are assumed to be counterfeits.
The Customs Administration is now in the process of seeking opinions from various sectors in the community. It remains to be seen as to whether additional modifications will be proposed so as to offer a useful and convenient tool to trademark owners to restrain infringement. Any further developments will be updated.