Formosa Transnational - Taiwan
The Taiwanese government has proposed a draft amendment to the Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademarks.
In 2011 the Taiwanese legislature empowered Customs to detain items suspected of infringing IP rights by enacting Articles 75 to 78 of the Trademark Act. Pursuant to this, in 2012 the Customs Administration enacted the regulations, under which it can seize imports and exports of suspected counterfeits.
The regulations establish that the owner of a registered trademark must identify the items in question on-site and determine whether they are infringing within 24 hours of receiving notice that the goods have been seized. If the rights holder fails to attend and to supply proof that the items are in fact infringing within three days of being notified, Customs will release the detained goods.
However, differences in time zones and public holidays in various countries mean that this 24-hour window is often insufficient for trademark owners based outside Taiwan, especially if they have no local agents that can identify the items and furnish proof of infringement. The Ministry of Finance’s Customs Administration found that the 24-hour requirement has in fact impeded the goal of preventing the import and export of counterfeit goods.
If the draft amendment passes, trademark owners will be able to rely on photos of suspected infringing goods provided by Customs in order to determine whether the goods are infringing – without having to be physically present. However, they – or a local agent – will still need to testify as part of the judicial process for determining whether the goods are infringing.
Therefore, although the amendments will alleviate the pressure on trademark owners with respect to the 24-hour time frame, they or their agent will still have to examine the detained items in person and offer testimony at any hearings as to how they have determined that the items are in fact infringing.
The Custom Administration has now completed a consultation process with various relevant government agencies and non-government organisations regarding the amendment, which looks set to come into effect later this year.