本 期 提 要 HEADLINES
Taiwan on Special 301 “Priority Watch List”
Taiwan’s Bureau of Foreign Trade
indicated that at 3pm on April 30 (U.S. Eastern Time), the USTR had
released its Special 301 Report for 2002, which listed a total of 51 of
U.S.’s trade partners. Taiwan
was named on the “Priority Watch List”.
USTR categorizes countries based on 3
different degrees of inadequacy in their intellectual property
protection: “priority foreign countries”, “priority watch list”
and “general watch list”. The
U.S. would engage in discussions with countries named on the “priority
foreign countries” list within 6 months, and if an agreement could not
be reached, the U.S. would adopt relevant trade retaliation measures.
Countries named on the “priority watch list” or “general
watch list” would not face any immediate retaliation measures or
requests for negotiation, unless more serious violations of intellectual
property rights were discovered. If
the U.S. is in the view that there is a need to review certain
countries, then those countries may be listed on the “irregular
review” list. If a
country were listed as under monitoring or its “Section 306”, then
if that country has already breached its bilateral IP agreement with the
U.S. under the U.S. Trade Act,
and has not made promised improvements, the U.S. can proceed directly
with trade sanctions without further investigations or discussions.
During the Special 301 Report of 2002, the U.S. had expressed disappointment in contents of Taiwan’s Optical Media Management Law, and had also accused Taiwan of being the main source of pirated optical media products globally. In addition, in its view a substantial proportion of Taiwanese businesses are still using unlicensed software, and there are also problems with trademark infringements, including pharmaceutical product trademarks.
Taiwan & U.S. Sign “Agreement on Criminal Justice Cooperation”
The Ministry of Justice recently
indicated Taiwan and U.S. had signed an “Agreement on Criminal Justice
Cooperation” on the afternoon of March 26, 2002 (U.S. Eastern Time). The signing took place at the AIT, and the signatories were
Mr. CHEN Chien-jen of Taiwan’s TECRO in U.S., and Mr. PU Jui-che,
Chairman of AIT. Criminal
justice cooperation provided by the two countries under the said
Agreement include: (1) Interrogation of witnesses; (2) Provision such
evidence as documents, records, and objects; (3) Location of relevant
parties and confirmation of identity; (4) Service of documents; (5)
Transporting persons in custody for testimonial or other purposes; (6)
Executing requests for search and arrests; (7) Assist in freezing and
confiscating assets, payment of damages, collection of fines; (8) Any
other form of assistance that does not violate the laws of the country
receiving the application for assistance.
The signing of this Agreement will strengthen cooperative relationship between Taiwanese and U.S. judicial authorities in combating cross-national crimes, including drug-related crimes, money laundering, economic crimes, Internet crimes and so on. It will also facilitate our assistance to the U.S. in fighting against terrorism.
Draft Amendment of Trademark Law (Executive Yuan Version)
The basic framework of the presently
applicable Trademark Law
was promulgated on December 22, 1993.
Subsequently, in relation to Taiwan’s accession to the
WTO, 8 articles were amended by order of the President on May 7, 1997,
and entered into force on November 1, 1998. In order to be consistent with the Administrative Procedures Law that came into force on January 1,
2001, the Executive Yuan had recently prepared draft amendments to
Articles 77-1 and 79 of the Trademark
Law, and had submitted them for consideration by the Legislative
Yuan on March 20, 2002. Given
the high level of competition between businesses, many new types of
business activities are now being invented, and the presently applicable
Trademark Law must be amended to take them into account.
In addition, trademarks are now more international than ever, and
since the signing of the trademark treaty in Geneva by various countries
on October 27, 1994, all countries are working towards integration of
their trademark systems. In light of these concerns, the Executive Yuan had prepared
further amendments to the Trademark
Law, and submitted them to the Legislative Yuan on May 7, 2002.
The main concerns in and reasons for the Executive Yuan’s version of the amendments are as follows:
(1) The definition of “trademark” has been extended, so that it applies to all marks related to goods and services.
(2) Certain requirements are relaxed, including allowing certain information that must be provided in respect of a claim of priority right to be supplemented. The amendments also deleted the requirement that a potential trademark must represent the applicant’s own businesses, and the applicant must have an intention to use the mark.
(3) Inserting provisions that allow sound and 3D shapes to form elements of a trademark.
(4) The definition of “trademark use” is amended to take into account developments in E-commerce and Internet.
(5) Certain amendments are made so as to be consistent with the Administrative Procedures Law.
(6) Trademark examiner must specify his/her name on the examination decision.
(7) Insert circumstances that will prevent registration of a trademark, including: (i) Where a 3D shape is functional and is a necessary element of the product, it may not be registered as a 3D trademark; (ii) A mark may not be registered, where there is likelihood that it will dilute the distinctiveness or damage the reputation of a famous trademark or service mark; (iii) Reasonably protect the names of juridical person, trade name or other associations, so that in deciding whether the trademark of a juridical person, trade name or other association that is identical with the name of another juridical person, trade name or other association should be registered, the criterion is amended to be “whether there is likelihood of misleading or confusing the relevant public”.
(8) Insert provisions relating to place of production signs for alcohol and liquor products.
(9) A trademark application may designate more than one class of goods or services.
(10) An application may be divided into two or more applications; a portion of products or services may be divided and transferred after trademark registration; application for trademark division may be made before affirmation of an opposition or evaluation.
(11) Registration fees may be paid in 2 installments, so that the trademark owner can decide whether it will pay the 2nd installment. This will facilitate more efficient management of trademarks.
(12) Clearly stipulate scope of trademark rights.
(13) Adopt an opposition-after-registration system.
(14) Abolish combined trademark system, and gradually abolish protective trademark system.
(15) Abolish substantive examination for applications to extend registration.
(16) Assignment of trademark will not affect continuation of trademark license.
(17) Where the assignment of a trademark is likelihood to cause confusion or mislead relevant consumers, appropriate distinctive marks should be adopted.
(18) Delete restrictions on interested parties that may apply for revocation of a trademark.
(19) Trademark infringements will include: knowingly using a mark that is identical or similar to another person’s registered famous trademark, or uses a part of the text in that famous trademark as its own company name, trade name, domain name or any other indication of its business identity or source, with the result of diluting distinctiveness or damaging reputation of that famous trademark; or knowingly using a part of the text in a registered trademark as its own company name, trade name, domain name or any other indication of its business identity or source, with the result of misleading or confusing relevant consumers.
(20) Stipulate border controls for infringing products, including allowing trademark owners to apply for seizure of products that infringe their trademarks. The amendments stipulate the relevant procedures and requirements for stop of seizure and return of bond. They also delegate determination of enforcement regulations.
(21) Insert group trademarks and place of production signs.
(22) Stipulate improper uses of group trademarks, group service marks, and certification marks.
(23) Stipulate regulations applicable during transition periods.
MOEA Calls IPR Meeting
order to thoroughly carry out the Government’s “Intellectual
Property Right Protection Action Year” program and related
instructions issued by Premier You of the Executive Yuan, the Ministry
of Economic Affairs had on April 26, 2002 called an Inter-departmental
“Coordination Meeting concerning Enforcement of Intellectual Property
Right Protection Action Year”. Minister
Lin Yi-fu of the MOEA was chairman of the meeting, being the chief
coordinator of the Action Year program.
Also in personal attendance were vice-coordinators Mr. Hsieh Wen-ding,
Vice Administrator of the Ministry of Justice, and Mr. Hsu Ying-tan,
Vice Administrator of the Ministry of Interior Affairs.
Participating departments included the Ministry of Interior
Affairs, Ministry of Finance, Ministry of Justice, Directorate General
of Budget Accounting & Statistics (DGBAS), Government Information
Office, Department 5 of the Executive Yuan, and the National Information
The purpose of the meeting was primarily to examine progress of the Action Year program and carrying out of Premier You’s April 3 instructions. Members also discussed closer cooperation so as to enhance the program’s effectiveness. The results reported by each department are set out as follows:
of Economic Affairs:
4. DGBAS of the Executive Yuan:
Pursuant to the “Supervision, Reward & Penalty Guidelines for Use of Licensed Software by Governmental Departments”, the DGBAS will conduct random checks on software use by governmental departments. It will also assist departments in negotiating more favorable prices from the main software companies.
5. Directorate General of Customs of the Ministry of Finance:
The DGC will strengthen its
collection of information and exchange of information with police
departments, so as to construct a comprehensive information network; it
will conduct random checks directed at high-risk goods and businesses;
it will review importation lists and conduct random inspections of
suspicious cargoes; departments will strengthen inspection of warehouse
information and warehouse supervision; it will conduct random checks on
C1 cargoes that are exempt from examination.
It will strengthen its supervision of specific cases, and focus
on specific companies in conducting compliance checks.
It was also decided at the Coordination Meeting that the meeting will be held once each in June, September, and December respectively. The MOEA will be in charge of coordination, supervision, and external liaison.