In September 2021, the Taiwan Customs put into operation an e-platform from which trademark owners can retrieve photos of detained goods for verification purposes, thus greatly alleviating their burden in the COVID-19 pandemic.
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 against the backdrop of the COVID-19 pandemic, on September 15, 2021, the Taiwan Customs implemented an amendment to the "Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark." As a result of the amendment, the Customs concurrently installed an e-platform from which a trademark owner can readily retrieve available data, especially digital photo files of goods detained by a customs house for verification purposes.
Under Taiwan's border protection system, a trademark owner may file an application with the customs house to record a registered trademark. Based on such recordation, the customs hose will conduct inspections ex officio. According to the old rules, if any imports/exports suspected of infringement were found, the trademark owner or its agent would need to respond to the customs house on a 24-hour notice and appear at the customs house soon after to identify the detained goods. The trademark owner was also required to submit a report within 3 business days to declare that the detained goods were counterfeits and the reason why. Otherwise, the goods would be released unconditionally. The above strict timelines imposed heavy burdens on trademark owners, especially those outside of Taiwan, and especially in the COVID-19 pandemic.
With the introduction of the e-platform, Taiwan Customs now offers trademark owners an alternative to on-site verification of suspected infringing goods. Upon receiving a notice from the customs house regarding the finding of possible infringing goods, the trademark owner will be able to gain access to digital photo files of the goods found by the customs house on the e-platform. As such, the trademark owner or its agent no longer needs to pay a personal visit to a customs house on a short notice.
After obtaining digital photo files from the e-platform, the trademark owner may:--
- visit either the customs house or the e-platform within a prescribed time limit (4 hours for export air flight, and 24 hours for import air flight and import/export sea flight) to determine whether he/she is to take the next action against the suspected infringing goods.
- If the suspected infringing goods are assumed to be counterfeits based on digital photo files and/or on-site goods inspection, it will be necessary for the trademark owner to, within 3 business days, submit to the customs house an infringement analysis report or upload to the e-platform the report in order to request seizure of the suspected infringing goods and pursue further procedures. Said time limit can be extended for up to another 3 business days upon request of the trademark owner.
On the other hand, the importer/exporter needs to either submit relevant printed documents proving non-infringement or upload them to the e-platform within 3 business days which is extendable for up to another 3 business day upon request. Otherwise, the goods will be formally seized by the customs house and the case, as well as the seized goods will be transferred to the judicial authorities.
Per our observations, the e-platform has brought about much more convenience to trademark owners and increase the transparency of customs border protection.
Due to the change of the relevant rules, we suggest that trademark owners pay attention to the following:
- In assessing trademark infringement, the trademark owner should evaluate all available information and conduct a comprehensive and thorough analysis based on a totality of the circumstances. According to the amended Article 7, digital photos files uploaded to the e-platform can serve as reference but cannot be relied upon as one and only reference referred to in an assess infringement or cited in an infringement lawsuit.
- In case infringement issue arises, during judicial proceedings, the trademark owner's representative will need to submit a testimony. He/she may also be cross-examined in Court as to how and why the relevant goods are assumed to be counterfeits.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.