八卷八期　89年04月30日

First Draft of Trademark Border Enforcement Measures
In order to join the World Trade Organization, Taiwan has substantially revised its intellectual property laws in order to be in conformance with the Trade-Related Aspects of Intellectual Property Rights (TRIPS). In addition, the Asian Pacific Economic Cooperation (APEC) has required each member economy by the year 2000 to carry out the provisions of TRIPS. Among these TRIPS provisions are Articles 51-60 regarding border control measures. Member economies must formulate border control procedures to prevent the flow of products that infringe trademarks or copyrights.
Taiwan revised the Copyright Law on 21 January 1998 by adding Article 90bis and 90ter to carry out its legislative obligations regarding border control measures for copyrights. Moreover, the copyright agency-in-charge at that time, the Ministry of the Interior, and the Ministry of Finance announced regulations governing the customs authorities detention of goods that infringe copyright and plate rights.
The Intellectual Property Office recently completed the first draft of four new articles to the Trademark Law regarding similar border control measures regarding the detention of goods that infringe trademark. These draft articles, Articles 61bis through 61quinto, were modeled on the corresponding articles in the Copyright Law. The principle features of the four articles are as follows:
a.The regulations and procedures under which the owner of the right of exclusive use of a trademark may apply to the customs authorities to suspend the release of the goods which infringe on the exclusive right of trademark. (draft Article 61bis)
b.The legal grounds when the customs authorities must revoke a suspension of release order. (draft Article 61ter)
c.The legal grounds when the customs authorities may return security bonds upon application. (draft Article 61quatro)
d.The authority for drafting implementing regulations (draft Article 61quinto).
The IPO drafted two versions of the proposed articles. The complete text of draft B is as follows: (The underlined portions reflect language not contained in Draft A. Otherwise, the two proposed drafts are identical.)
Article 61bis
1.With regard to the import or export of goods that infringe on the exclusive right of trademark, the owner of the right of exclusive use of the trademark may apply to the customs authorities to suspend the release of the goods.
2.The application referred to in the preceding paragraph shall be filed in writing, setting forth the facts of the infringement, and with a bond in an amount equivalent to the customs authorities-assessed landed cost of imported goods or the F.O.B. price of exported goods, such bond serves as a security for the party whose goods are subject to the suspension of release.
3.The customs authorities must notify the applicant after accepting an application, and must notify the applicant and the party whose goods are subject to the suspension of release if the customs authorities conclude that the provisions of the previous paragraph are satisfied and therefore carry out the suspension of release.
4.The party whose goods are subject to the suspension of release may provide a bond in the amount of two times the bond provided under paragraph 2 to request that the customs authorities revoke the suspension of release and that the goods be processed in accordance with applicable import and export regulations.
5.Provided that protection of confidential information regarding the detained goods is not compromised, the customs authorities may permit an inspection of the detained goods upon an application by the applicant or the party whose goods are suspended of release.
6.Where the applicant has obtained a final and non-appealable judgment that determined the goods infringe on the right of exclusive use of the trademark, the party whose goods are subject to the suspension of release shall be held liable for all expenses incurred as a result of the delay of containers, storage, loading and unloading, and other related charges.
7.The customs authorities may ex officio confiscate the detained goods referred to in the previous paragraph. The party whose goods are subject to the suspension of release shall be held liable for necessary expenses incurred as a result of the destruction of the goods. Cases of payments not paid with the periods prescribed by customs authorities may be referred to the court for compulsory execution.
Article 61ter
1.In any of the following circumstances, a suspension of release order shall be revoked by the customs authorities:
A.Within 12 days of the date on which the applicant is informed of the suspension of release, the customs authorities have not received notification that litigation proceedings with regard to the detained goods have been initiated or that a complaint has been filed with the procurators office.
B.Within 12 days of the date on which the applicant initiates litigation proceedings that the detained goods are infringing goods, the customs authorities have not received notification that an application has been made to a court for a decision on precautionary proceedings.
C.The prosecutors office or a court has seized the detained goods or issued a decision on precautionary proceedings.
D.A civil court issues a final decision rejecting the applicant's lawsuit that the detained goods are infringing goods, or a criminal court issues an affirmed judgment dismissing the case or a judgment not accepting the case.
E.The detained goods are the subject of a final and non-appealable decision of procurators not to bring indictment or have been determined to be non-infringing of the right of exclusion use of the trademark by a final and non-appealable judgment of a court.
F.The applicant applies for revocation of a suspension of release.
G.Cases that satisfy Paragraph 4 of the preceding Article.
2.The period referred to in subparagraph 1 of the preceding paragraph may be extended by another 12 days if the customs authorities deem necessary.
3.Except under the conditions of subparagraph C, the goods covered by the suspension of release order revoked by the customs authorities according to paragraph 1 shall be processed in accordance with applicable import and export regulations.
4.Regarding suspension of release orders revoked under paragraph 1 due to the actions of the applicant, the applicant shall be held liable for all expenses incurred as a result of the delay of containers, storage, loading and unloading, and other related charges, and shall compensate the party whose goods are subject to the suspension of release for the damages from the suspension of release or the bond provided under paragraph 4 of the preceding article.
5.The customs authorities may upon application or court notification, take all or a part of the bond provided under paragraph 2 of the preceding article to serve as a guarantee for the precautionary proceedings under subparagraph c of paragraph 1; or to take all or a part of the bond provided under paragraph 4 to serve as a guarantee for the application of the prevention or revocation of the precautionary proceedings under subparagraph c of paragraph 1. The implementing regulation for the preceding shall be prescribed by the Executive Yuan in consultation with the Judicial Yuan.
Article 61quartro
1.Customs authorities shall return the security bond provided under paragraph 2 of Article 61bis in accordance with the applicants request therefor in any of the following circumstances:
A.There is no need to continue posting the bond either because the applicant has obtained a favorable final and non-appealable judgment or because the applicant has reached a settlement with the party whose goods were detained.
B.The procurators office has seized the detained goods.
C.After the suspension of release is revoked due to an action by the applicant, the applicant proves that more than twenty days have elapsed since the applicant notified the party whose goods are subject to the suspension of release to exercise its rights and such party has failed to exercise its rights.
D.The party whose goods were detained agrees to the return.
2.Customs authorities shall return the security bond provided under paragraph 4 of Article 61bis in accordance with the applicants request therefor in any of the following circumstances:
A.There is no need to continue posting the bond either because the party whose goods were detained has obtained a favorable final and non-appealable judgment or because the party whose goods were detained has reached a settlement with the applicant.
B.There is an affirmed decision not to issue an indictment by a prosecutor or an affirmed and final decision by a court that the goods subject to the suspension of release order do not infringe the right of exclusive use of trademark.
C.After the applicant terminated a lawsuit that the goods subject to the suspension of release are infringing goods, the party whose goods are subject to the suspension of release proves that more than twenty days have elapsed since the party whose goods are subject to the suspension of release notified the applicant to exercise its rights and such party has failed to exercise its rights.
D.The applicant agrees to the return.
3.With regard to the bonds referred to in the second and fourth paragraphs of Article 61bis, the applicant and the party whose are subject to the suspension of release, respectively, have the same rights as a pledgee, provided that priority shall be given the expenses incurred as a result of the delay of containers, storage, loading and unloading, and other related charges under paragraph 3 of the preceding article and paragraph 6 of Article 61bis over the claims of the applicant and the party whose goods are the subject of the suspension of release.
Article 61quinto
The implementing regulations for the preceding three articles, except for paragraph 5 of Article 61ter, shall be prescribed by the competent authority in consultation with the Ministry of Finance.

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