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Executive Yuan passes Trademark Act draft amendment to facilitate Taiwan’s TPP accession and stay current with the Criminal Code’s new confiscation provision

  • Date Posted:2016-08-08

On June 23, 2016, TIPO’s draft partial amendment and amendment to Articles 98 and 111 of the Trademark Act passed review at the Executive Yuan and will later be reviewed by the Legislative Yuan. This is to facilitate TPP accession, as well as to stay current with the Criminal Code’s new confiscation provision.

Key revisions made to meet TPP requirements include: 1. The “knowingly” subjective assessment provision applied to determine civil or criminal liability for counterfeiting trademark labels is deleted. In its place, the general subjective assessment provision is restored and applied. 2. A new criminal penalty provision on counterfeiting trademarks or collective trademark labels is added. 3. Acts such as counterfeiting trademarks, collective trademarks or certification mark labels are clearly defined. The provision on banning sale of infringing goods is revised to include sale via electronic media or the Internet.

The Criminal Code’s new “confiscation” provision (Article 10ter) took effect on July 1, 2016. Other provisions on confiscation, levy, demanding payment, and compensation stipulated under relevant laws prior to this effective date will no longer be applied. However, the efficacy of counterfeit criminal investigations and efforts to crack down on infringing goods would be compromised if this new “confiscation” provision were applied. More specifically, investigations that comply with this “confiscation” provision have to ascertain rights ownership of infringing goods, as well as legitimate grounds for obtaining such goods. In addition, confiscation by ex officio in compliance with this provision requires evidence collection and presumption of infringement. In view of compromised efficacy, only minor revisions to wording were made in the draft amendment to Articles 98 and 111 on absolute obligation of confiscation.

These two amendments will enable Taiwan to gain fair competitive edge in the international market through TPP accession. They will also enable smooth confiscation of trademark-infringing goods by ex officio, and avoid hurdles in the crackdown.