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 given advances in technology, on 9 June 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 Article 7(2) 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 photos of suspected infringing goods, for verification purposes. This alleviates the onerous necessity of it appearing within24 hours at the customs house to verify whether a batch of suspected infringing goods are counterfeits.
Under current rules, a trademark owner may file an application with Customs to record a registered trademark. Customs officials will then conduct inspections ex officio. If any imported or exported goods suspected of infringement are found, the trademark owner or its agent will need to respond to communications within 24 hours and appear at the customs house soon after to identify the detained goods. It is also required to submit a report within three business days to declare that the detained goods are counterfeits and an explanation as to why. Otherwise, the goods will be released unconditionally.
These strict timelines impose heavy obligations on trademark owners, especially those with premises or operations outside of Taiwan. Thus, in order to alleviate this burden, the draft amendment offers an alternative to the onsite verification of suspected infringing goods. According to Article 7(5) of the amendment, upon receiving a notice from the customs house regarding the possible infringing goods, the trademark owner will be able to gain access to digital photos of the goods on an online platform. As such, the trademark owner or its agent no longer needs to personally visit to the customs house on short notice.
After obtaining digital photo files from the platform, the trademark owner may:
- visit either the customs house or the online platform within a prescribed time limit (four hours for export air flight, and 24 hours for import air flight and import/export sea flight) to determine whether it will take further action against the suspected infringing goods; and
- if the suspected infringing goods are assumed to be counterfeits based on digital photos and/or an onsite inspection, it will be necessary for the trademark owner to submit to the customs house an infringement analysis report or upload this to the platform within three business days in order to request seizure of the suspected infringing goods and pursue further action. Said time limit can be extended for another three business days upon request.
On the other hand, the importer or exporter needs to either submit relevant printed documents proving non-infringement or upload these to the platform within three business days, which is extendable for another three business day upon request. Otherwise, the goods will be formally seized by the customs house and the case, along with the seized goods, will be transferred to the judicial authorities.
It is anticipated that the new platform will be much more convenient for trademark owners and increase the transparency of customs border protection.
One other matter that merits special attention is Article 7(5), which stipulates that, digital photos uploaded to the platform can serve as a reference but cannot be relied upon as the one and only reference referred to in an infringement assessment or cited in an infringement lawsuit.
Due to the change of the relevant rules, trademark owners are urged to pay attention to the following:
- in assessing trademark infringement, they should evaluate all available information and conduct a comprehensive and thorough analysis based on a totality of the circumstances; and
- in case of an infringement issue arising during judicial proceedings, the trademark owner’s representative will need to submit a testimony. They 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 different parts of the community. It remains to be seen whether additional modifications will be proposed to offer a useful and convenient tool to trademark owners looking to halt infringements.