Draft Amendment to Border Control Measures
for Trademark Enforcement
The Customs Administration released the first draft of amendment to the “Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark (Measures)” in June 2016. The Administration has been calling the general public for a review of the draft and for advice regarding the draft amendment. The policy of amended Measures is aimed at relaxing the right holders’ burden to submit various kinds of information to Customs, fostering electronic government procedures, and simplifying the administrative requirements. Several specific aspects are as follows:
- The system of trademark records at Customs was abolished after the Measures were adopted. However, the Measures have not expressively prescribed how the trademark holders should notify Customs in cases of likelihood of trademark infringement. The draft amendment has specified that a notice may be filed with Customs so that protective measures may be executed.
Customs is entitled to, and has the discretion to, initiate detention of imported or exported infringing goods under the Article 75 of the Trademark Act, without being restricted to only specific scenarios. The draft amendment deletes the four types of scenarios in the current Measures under which the Customs shall take actions ex officio or by notice, which has been criticized as putting undue burden on trademark right holders.
- The draft amendment relaxes the burden of proof born by the right holders when reporting infringement to Customs. The current Measures require significant details relating to the suspected goods from the right holders, including submission of genuine and fake products, and a comparison chart thereof, the name of the importing company, date of import/export, flight or voyage number, etc. According to current practice, Customs would also require that the goods to be monitored and enforced should be within the same or similar classification of goods with the registered trademark. In reality such requirements have caused problems because trademark infringement may not merely occur in similar classifications of goods. The provisions relating to these burdensome requirements have therefore been deleted from the draft amendment.
- Notices or complaints made by a trademark holder to Customs according to the Measures can be sent by either paper or electronic means.
- Pursuant to the Trademark Act, a recorded exclusive licensee is entitled to proprietary rights as a trademark holder within his scope of license. Thus, a recorded exclusive licensee may exercise rights in the name of itself under the Measures.
- For an international trademark right holder who has no domicile or business establishment within the territory of Taiwan (R.O.C.), he/she shall designate an agent to act on behalf of himself/herself.
- The customs protection period spans from the granting date to the expiration of the trademark term. Extension is available depending on and corresponding to an adjusted trademark term. The draft amendment abolishes the one-year protection term and annual renewal requirement in the current Measures in an effort to reduce administrative work and to release the burden from the trademark right holders.
- Customs may terminate protection measures with its own discretion in circumstances such as, when foreign right terminates the representing power of attorney, or if Customs is not able to contact the right holders or its attorneys.
- Notifications from the Customs sent to the trademark holder or importers/exporters may be made in/by verbal, written, telephone, emails, or facsimiles. Customs may also provide photographs of the suspected goods in order to facilitate right holders decision of whether or not they should verify their goods at Customs.
- Customs may proceed to lift detention under some circumstances including failure to contact trademark holder, failure to present infringement evidence, etc.
We are glad to see that the draft amendment relax the administrative requirements and release these burdens from the right holders and their attorneys. As Customs Administration’s first draft for public review, the Measures may invite some modification proposals as expected. We will keep close watch on any further developments.
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