Is Custom Recordal of Intellectual Property Rights (IPRs) available in Taiwan?
Yes
Is Custom Recordal of IPRs compulsory in Taiwan?
No
Is it an effective measure to stop the infiltration of illegal and counterfeit products in Taiwan?
Yes
Which law forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Taiwan?
The Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark - form the legal basis for Custom Recordal of IPRs (Border Control Measures) in Taiwan.
Is Custom Recordal of IPRs effective on import or export of goods or both?
Custom Recordal of IPRs is effective on both the import and export of goods.
What is the role of the customs department/authority? (Kindly give 2-3 points)
The Customs is an authority or agency responsible for collecting and safeguarding customs duties and controlling the flow of goods in and out of a country and the scope of their powers differs from country to country. The Customs Administration of Taiwan is authorised to prevent counterfeit goods from being imported (copyright, patents, trademarks) into Taiwan or exported from Taiwan (in case of trademarks and copyright only). Once the trademark or copyright owner has registered his or her IP with the Customs Administration, the Customs will detain suspicious goods to give the IP owner the opportunity to take enforcement actions. If found to be infringing, the goods will be destroyed.
Is there a procedure to record IP with the customs department/authority? If yes, then kindly explain it in brief.
Under the said Regulation, the proprietor of a registered trademark may seek to have an infringing import/export detained by filing a written request with Customs along with supporting materials/information, including
(1) The fact of infringement as well as a description of the infringing goods' identifiable features;
(2) The name of the exporter/importer, name of the goods, import/export ports, date, number of flight or ship, number of container, storage venue of the goods; and
(3) The Certificate of Trademark Registration.
The Customs shall notify the proprietor of a registered trademark whether the information submitted is specific enough for acceptance, and shall provide rationales if the request is dismissed.
What documents are to be submitted along with the application for Custom Recordal of IPRs?
The documents/information includes the following:
(1) The fact of infringement as well as a description of the infringing goods' identifiable features;
(2) The name of the exporter/importer, name of the goods, import/export ports, date, number of flight or ship, number of container, storage venue of the goods; and
(3) The Certificate of Trademark Registration.
Is the applicant required to execute a bond (against all liabilities and to bear the costs towards destruction, demurrage, and detention charges incurred till the time of destruction or disposal) with the customs department/authority for Custom Recordal of IPRs?
Yes
What is the time frame for the customs department/authority to notify the applicants whether their application (for custom recordal of IPRs) is registered or rejected?
24 hours
Does the customs department/authority have a centralized system or the Custom Recordal is required to be done with each port of entry in Taiwan by land, sea, and air?
The customs authority has a centralized system.
Is there an online system for Custom Recordal in Taiwan?
Yes
What is the official fee for Custom Recordal in Taiwan?
There is no fee.
What is the term of Custom Recordal of IPRs? Can it be further renewed?
The protection period is 02 year from the date on which Customs accepts the case and the copyright can be extended by 01 year each time before the expiry date. In case of trademarks, a Customs registration (‘advice protection’) will remain in force until the due date for renewal of the registered trademark. The registration with the Customs is renewable after the registered mark is renewed.
Does the customs department/authority have a right to conduct raids and seize the counterfeit goods within Taiwan?
Yes
In which scenario does the customs department/authority suspend the clearance of imported goods?
The Customs authority suspends the clearance of imported goods when it finds that goods are infringing in nature. The goods are suspended for a limited time unless otherwise decided by the customs after conferring with the rights holder. Therefore, if the detained goods are recognized by the proprietor of a registered trademark as counterfeit and if the importer/exporter fails to submit rebutting evidence, the goods will be formally detained by the Customs. In that scenario, the case as well as the detained goods would be transferred to the judicial authorities.
Who bears the liabilities and expenses related to suspension of the release of infringing goods?
The applicant bears the liabilities and expenses related to suspension of the release of infringing goods.
Is the IP rights holder authorized to examine the goods, the clearance of which has been suspended?
Yes
Is the IP rights holder authorized to request the information about the personal details of the importer and additional crucial piece of information concerning the consignment, which has been suspended from clearance?
Yes
Can the importer or the authorized representative of the goods, which have been suspended from clearance, request the information of the IP rights holder in question?
Yes
Within what timeframe the IP rights holder needs to confirm whether the goods are counterfeit or original after suspension?
After receiving the notification from the Customs, the copyright or trademark holder must identify on-site the items in question within 04 hours for export by air freight and within 01 business day for import/export by sea freight and import by air freight.
Is the IP rights holder required to produce an injunction order or evidence of court proceedings to detain the goods?
If the answer to the above question is 'Yes,' then what is the deadline to do so?
Does the IP rights holder need to pay an additional bond for the detention of goods?
Yes
If the answer to the above question is 'Yes,' then to what extent and how is the valuation calculated?
The importer may provide a bond at twice the amount of the bond put up by the trademark owner for the release of the suspicious goods.
In the scenario where the goods detained or seized are found to be infringing the IPRs of the IP rights holder in question, what steps does the customs department/authority take?
The Customs authority destroys the goods.
Does the customs authority invite the rights holder and importer to join the proceedings? Are there any consequences of failure to join such proceeding, if any?
Yes, the Customs authority transfers the goods to the judicial authorities.
Before disposal/destruction of infringing goods, does the rights holder need to submit a ‘no objection’ or concurrence document?
Are there any disadvantages of Custom Recordal of IPRs in Taiwan? If yes, then kindly give 2-3 points?
None
If an IP rights holder is not satisfied with the action taken by the customs department/authority, can he/she initiate separate legal proceedings to enforce his/her IP rights?
Yes
To establish if the goods are counterfeit before the court of justice, will the affidavit by the IP rights holder suffice or any other documentary requirement is there?
As may be required by the court.
Upon conclusion of proceedings before the Court of Justice, what are the possible remedies awarded by the court?
The possible remedies awarded by the court include the destruction of goods.
Is the rights holder under an obligation to inform customs authority when his Intellectual Property Right ceases to be valid/ he ceases to be the owner of such IPR?
