In addition to litigation, intellectual property (hereunder “IP”) rights holders may exercise their rights under Taiwan Code of Civil Procedure by filing for preliminary injunction to exclude infringement or preserve the status quo. The Intellectual Property and Commercial Court (hereinafter “IPC Court”) will accord the parties an opportunity to be heard, and apply the four factors test, namely: deliberating on the applicant’s likelihood of winning the principle case in the future, whether the granting or rejection of the application will cause irreparable harm to both parties, weighing the extent of damages to the parties, and the impact on the public interests. According to the statistics of the IPC Court for the past three years (2019 to 2021), there are about 20 applications for IP preliminary injunction filed each year, with the approval rate of about 30%. Most of the approved cases are trademark cases.
From those reported trademark cases, the IPC Court has repeatedly declared that the protection of the trademark law is not limited to the trademark itself, but also includes the evaluation of “goodwill” accumulated from long-term use and advertising for the trademark, which directly affects consumers’ perception of the products or services. The continued use of a “suspicious mark” by the infringing party affects the competitive advantage of the trademark owner or diminishes the distinctiveness of the trademark, brand value and goodwill. The injury caused by such infringement use will be difficult to be quantified by an exact damages amount or to be compensated by subsequent damages award. The cases of the IPC Court show that it is possible for the trademark owner to convince the court to grant preliminary injunction if the trademark owner can provide evidence to explain how the “suspicious mark” affects consumer behaviors, as well as his or her claim is reasonable, such as requesting the infringing party to only stop using or to modify the “suspicious mark” without requiring the same to suspend its main business.
As for preliminary injunction cases involving patent infringement, the parties will usually engage in technical issues and the IPC Court will look into patent validity and infringement when considering the likelihood of success of the applicant in the future. Although the IPC Court did have previously rejected preliminary injunction on the grounds of patent invalidity, it seldom does so recently but has been merely determining patent infringement in the last three years. That is, even in the case involving the patent validity disputes, the IPC Court only expresses “the likelihood of success is unknown”, and tends to avoid prematurely revealing its judgment on the issue of patent validity at the preliminary injunction stage. For other test factors, the IPC Court is more inclined to consider that the damage caused by patent infringement is usually curable by means of monetary compensation, without the risk of imminent danger or major damages. Besides, most patent cases do not involve public interests, and therefore, eliminating the need to grant preliminary injunction in most patent cases.
In terms of court procedure, it usually takes one to three months for IPC Court to make a decision on preliminary injunction application. For trademark cases, if the trademark owner can fully explain the necessity of the injunction, and the claim against the infringing party will not significantly affect the latter’s overall business operation, the IPC Court may be persuaded to approve the application. However, as far as patent cases are concerned, it is not as easy for the patentee to convince the IPC Court that the case is likely to be won in the future, and the IPC Court tends to view that most patent disputes can be compensated monetarily. Therefore, compared to trademark owner, it is relatively difficult for patentee to obtain preliminary injunction under current judicial practice in Taiwan.