1. Private complaint v. Complaint to prosecutor: The progress of the former can be controlled somehow by the complainant but the complainant needs not care much about the case in the latter after complaining to the prosecutor who has the responsibility to ascertain whether there really is a crime so that he or she must exercise his/her power to look into the matter whereas the former needs in theory to investigate everything for serving as the proof before the court which should theoretically allow the complainant to exercise some power comparable to that utilized by the prosecutor but normally declines to permit such exercise through fear of undue utilization.

2. Court proceedings: Since the court can judge by itself whether there is an infringement in quite a lot of cases in respect of trademark or copyright matters, to seek justice before the court in Taiwan is not difficult, especially in view of the fact that it appears the US would like to sell us defensive weapons only when our courts present a resultful decision list showing how many cases have been decided guilty and how many persons have been put into jail through IPRs infringements.  As to patent cases, the situation becomes a little more complicate because the court normally decides the case by heavily relying on opinions rendered by the appraisal authority of technical nature as to whether there is a patent infringement.  It is not so fortunate as to be fully determinate that the appraisal authority will not make equivocal, incomplete or inaccurate appraisal report so far as the patent law is concerned.

3. It is really convenient that an IP owner can easily find helps all over Taiwan since all judicial police entities or quasi-judicial authorities are readily prepared to offer or render helps in this regard.

4. The private associations could render effective helps although it will happen only when a business has joined into the respective association after being levied with some membership fee.

We would like to quote 3 articles in our Trademark Law to show how robust our enforcement laws look like as follows.

Article 65 Customs Practices

The trademark rights owner may petition the customs to seize in advance articles, imported or to be exported, infringing the trademark rights.

Petition in the preceding paragraph shall be made in written, showing the fact of infringement and provided with a bond equivalent to taxed price of import goods or free on board price of export goods evaluated by the customs, or an appropriate guaranty.

The customs shall immediately notify the petitioner after having entertained the petition for seizure and shall notify in written petitioner and owner of seized articles after considering provision of the preceding paragraph having been met to perform the seizure.

The owner of seized goods may deposit bond doubling the bond in the second paragraph or appropriate guarantee to petition the customs repealing the seizure, and act in accordance with relevant customs clearance provisions for import/export goods.

The customs may grant inspection on the seized goods upon petition by petitioner or owner of the seized goods under the conditions not to damage the confidential data protection of seized goods.

The owner of seized goods shall bear container demurrage, warehouse rent, loading/unloading fee and relevant expenses of seized goods except the case provided in the fourth paragraph of Article 66, if the petitioner has obtained an irrevocable court judgment that the seized goods infringe the trademark rights.

Article 66 Seizure Repeal

Customs shall repeal seizure in any of the following cases:

1. The petitioner does not initiate and notify the customs of a suit accusing the seized object as the infringing object under provision of Article 61 in twelve days from the date of notification that the customs have entertained the seizure.

2. The suit the petitioner accuses seized object as infringing object has been decided by the court to be irrevocably dismissed.

3. The court has irrevocably decided that the seized object is not an object infringing the trademark rights.

4. The petitioner petitions to repeal the seizure.

5. Where the provision of the fourth paragraph of the preceding article is met.

The period provided in Item 1 of the preceding paragraph may be prolonged for twelve days when the customs deem necessary.

The customs shall act in accordance with relevant customs clearance provisions for import/export goods to repeal seizure under provision of the first paragraph.

Where seizure is repealed due to any cause in Items 1 through 4 of the preceding paragraph, the petitioner shall bear container demurrage, warehouse rent, loading/unloading fee and relevant expenses of the seized object.

Article 67 Damages for Goods Being Seized

Where the court has irrevocably decided that the seized object is not an object infringing the trademark rights, the petitioner shall compensate the loss suffered by owner of the seized goods through seizure or provision of bond provided in the fourth paragraph of Article 65.

Petitioner, in respect of the bond provided in the fourth paragraph of Article 65, and owner of the seized goods, in respect of the bond provided in the second paragraph of Article 65, shall have identical rights as a pledgee, provided that container demurrage, warehouse rent, loading/unloading fee and relevant expenses provided in the fourth paragraph of the preceding article and the sixth paragraph of Article 65 shall be compensated prior to the loss of petitioner or owner of the seized goods.

Upon request of the petitioner, the customs shall return the bond provided in the second paragraph of Article 65 in any of the following cases:

1. The petitioner has obtained a favorable irrevocable judgment or reached a settlement with the owner of the seized goods, rendering it unnecessary to keep the bond provided.

2. Where the seizure is repealed through the cause provided in Items 1 through 4 of the first paragraph of the preceding article, after the owner of the seized goods gets thus lost or obtains a favorable irrevocable judgment, the petitioner proves having set a term of 20 or more days to urge that the owner of the seized goods enforces its rights but has not so enforced.

3. The owner of the seized goods consents the return.

The customs shall upon request of the owner of the seized goods return the bond provided in the fourth paragraph of Article 65 in any of the following cases:

1. The seizure is repealed through the cause provided in Items 1 through 4 of the first paragraph of the preceding article, or the owner of the seized goods reaches a settlement with the petitioner, rendering it unnecessary to keep the bond provided.

2. After the petitioner obtains a favorable irrevocable judgment, the owner of the seized goods proves having set a term of 20 or more days to urge that the petitioner enforces its rights but has not so enforced.

3. The petitioner consents the return.

From the above, the border control articles in Taiwan should have provided channels for IPRs owners to take necessary actions to safeguard their rights.  Certainly a civilized country will not permit or will protect an undue interference to or from the rights of a private entity.

The enforcement environment in Taiwan

Except the above factors, the enforcement environment of a country at least further involves in the following factors:

1. The factual reality of the society;

2. The mobility of the society;

3. The efforts made by the government.

So far as the factual reality of the society is concerned, attention is directed to the existence that the economic two-peak phenomenon, which describes the fact that the rich is getting richer and richer but the poor is getting poorer and poorer, appears got worse and worse all over the world.  For the rich group, it is not difficult to enforce the IPRs from any viewpoint.  For the poor group, the following factors might require considered:

1. Shall the society curb any possibility that a poor person can be emotionally somehow satisfied through owning a counterfeited article?  Since this factor will be implicated with a moral level, we would like not to discuss it here.

2. Is it possible that the society can expel a drive of pursuing to own an article, either genuine or counterfeited, of a famous brand out of the mind of a poor person?  This appears to be difficult as it seems violating the primitive desire of the human being.  Unless the government power can rectify such condition of the poor being poor, it appears that what are left for the IPRs owners are those mentioned in the conclusion in the section of “The habits and customs relating to anti-counterfeiting in Taiwan” above-described.

Nevertheless, it might be possible that the major counterfeiting concerns come from the group not belonging to the rich or the poor although it should be true that this group might become lesser and lesser through the reasons given above.  Because such group cannot bear the high cost of buying expensive genuine goods but has the power to buy the common goods, it might be possible for them to be lured into buying counterfeiting goods.

So far as the mobility of the society is concerned, it might include various attributes. We would like to exemplarily discuss them as follows:

1. Business-running entity: To do business in a significant scale normally involves in the establishment of a company by which a group of persons can commonly engage in business operations.  The problem is that a company can be established very easily.  Accordingly, even if a company is declared infringing and even has its properties seized, another company having shareholders substantially the same as those of the infringing company can easily be registered to continue the infringing activities.  Such mobility causes it difficult to effectively enjoin an illicit lawbreaker from involving in further infringements because the laws sometimes cannot punish the correct persons intentionally manipulating a company to engage in illegal affairs due to the different personalities of the individual and the company itself.  Nevertheless, it is believed that this problem is happening in any corner all over the world.  In this economy-directed era making easy the establishment of a company, it appears that this problem can only be obviated when all businesspersons are law-abiding good ones either voluntarily or forcedly by either the law or the morality made possible by civilization, education or religion.

2. Possibility to mobilize, sell or manufacture articles: It will increase the hardship to seize the product if it is very easy for a potential infringer to hide the infringing products by quickly moving them to another place.  It will also reduce the possibility of physically tracing the infringing articles in large volume if they could be sold relatively easily without the back tracking possibility as to where the goods come from.  It certainly might be infringement-encouraging if a country is technique-equipped to produce an infringing article easily.  All these factors need be dealt with by respective due considerations.  For example, in order to cope with hiding, enough secret but efficient investigations and/or raid in advance or in time are desired.

3. Retailing system: Before the product goes to the end consumer, a retailing system is normally involved in.  If so many retailers are involved in, IPRs owners will have a hard time to clean up such infringing field.  This is especially true when childish or innocent retailers are there and a lot of people want to buy and consume speedily the infringing articles from them.  In this case, it should be clear that tracing and finding out the upstream origin is the correct choice.

So far as efforts made by Taiwan government is concerned, any person on earth caring about the enforcement environment for suppressing counterfeiting should be sincerely moved by those made by our government.  We will quote to describe what our government had made recently in the following.

1. Receiving and collecting information lodged against acts of counterfeiting and piracy, and forwarding the same to public prosecutor’s office, the police or investigation office for further action:

(1)      Local or foreign nationals or firms provide clues and information about counterfeit and piracy to ACC (Anti-Counterfeiting Commission) by telephone, letter or E-mail;

(2)      All the overseas representative offices of our government, upon discovering any pirated products exported from Taiwan, promptly notify ACC, which refers the complaint or relevant information to the public prosecutor’s office, the police or the investigation office for proper action.

(3)      The Customs or the Bureau of Standards, Metrology and Inspection, MOEA, upon finding any CD without an SID Code, refer the case to ACC, which would in turn consult a copyright related organization to judge whether such CD was pirated.

(4)      Information about acts of counterfeit and piracy is collected and forwarded to the public prosecutor’s office, the police or the investigation office for further action.

2. Coordination of anti-counterfeiting works:

(1)    ACC, together with public prosecutors’ offices, the police and investigation offices, organizes a “Joint Anti-counterfeiting Team,” which holds coordination meetings at irregular intervals to develop concrete anti-counterfeit action plans and coordinates and enhances in a timely manner the anti-counterfeiting work of public prosecutors’ offices, the police and investigation offices.

(2)    Activities will be held to praise those government offices devoted to curbing acts of anti-counterfeiting; and those in charge of anti-counterfeiting actions at the police, investigation offices and customs offices will be given bounties as special rewards for their outstanding performance on anti-counterfeiting cases.

3. Assistance in export inspection:

(1) The Institute of Information Industry was commissioned to establish the “Export Monitoring System” (EMS), a software inspection center specially established for computer program related products, in order to facilitate export inspection at customs.

(2) A Chip Marking System was established for the administration of mask-ROMs made in Taiwan.  The Taiwan Institute of Economic Development and the Chinese Institute of Industrial and Commercial Research are commissioned to process applications for registration filed by mask-ROM manufacturers.  Manufacturers could export their Mask-ROMs only after having labeled and registered their products in accordance with the relevant provisions.

(3) If, during the export inspection, the customs office discovers any exports, which probably bear counterfeit trademarks or whose export declarations contain any false information, the cases would be referred to ACC, which would check on the relevant trademark registration with the IPO.  If it were highly possible that such exports are counterfeits, the cases would be forwarded to the public prosecutor’s office, the police or investigation office for further investigation.

4. Anti-counterfeiting work involving foreign elements:

(1)    Reports on the Taiwan, Penghu, Kinmen and Matsu (TPKM) administrative measures for curbing counterfeits and the results from the implementation of such measures will be prepared with respect to issues concerned about by the international economic and trading organizations, such as the WTO and APEC, and the bilateral meetings between TPKM and other countries.

(2)    Consultations between TPKM and foreign countries on intellectual property rights as well as TPKM anti-counterfeiting activities involving in foreign countries will be carried out.

In addition to the above, our government also engages in the following actions:

1. Special action plan:

To deal with the numerous counterfeits and pirated VCDs sold at night markets or by hawkers, a mobile anti-counterfeiting task force composed of representatives from ACC, the 2^nd Security Police Group of the National Police Administration and the entities of IPR owners concerned has been assigned to take anti-counterfeiting actions at optional suspicious places at irregular intervals, e.g. those taken especially in the strengthened period between March 1 and May 31, 2001.

2. To protect the legal rights and interests of IPR owners, the IPO has taken the following new measures to curb counterfeits, with the consent of the National Police Administration:

(1) A written instruction was issued to all the police offices island-wide on January 15, 2001, that IPR owners or the public could report any IPR infringement cases by calling 110, the line for the reporting system of the Operational Command and Control Center.

(2) Policepersons have been continuously assigned from the 2^nd Security Police Group to organize three action teams to respectively carry out the mobile pirated CD prohibition projects in northern, central and southern parts of Taiwan.

(3) The “Implementation Plan for Enhanced IPR Protection” was amended in July 2001 to the effect that a special police force is organized to crack down on IPR infringements; policepersons with outstanding performance are to be awarded extra credits/merits, and assessment efficiency of work results is enhanced.

Moreover, our government also engages in the following educational training programs:

1. Improvement of the know-how and capabilities of the anti-counterfeiting workforce:

(1) To improve the knowledge and capabilities of the anti-counterfeiting workforce, “Judicial Personnel Seminars on Anti-counterfeiting” and “Police Seminars on Anti-counterfeiting” have been respectively held.

(2) These seminars offered instructional courses about legal disputes over IPRs, the new era of Taiwan’s WTO accession, policies on anti-counterfeiting, and the study of the techniques of curbing and investigating counterfeiting audio products, films, video tapes, business software and video game software, and trademark infringements.

2. Consolidating the power and sources of related industries and entities of IPR owners to enhance anti-counterfeiting:

(1) Related industries and entities of IPR owners always have the best knowledge of the latest changes and trends of counterfeiting and pirating acts in the market.  They also have professional equipment and expertise in this respect.  Hence, ACC held or participated in several meetings with them to communicate and exchange opinions and keep abreast of the current changes and trends so as to take and/or design measures and or preparations in order that they could react accordingly.

(2) Responsible persons of main entities of IPR owners were and will be appointed as lecturers in “Judicial Personnel Seminars on Anti-counterfeiting” and “Police Seminars on Anti-counterfeiting” in which they could have direct exchanges of anti-counterfeiting techniques and practical experience with representatives from public prosecutors’ offices, the police and law enforcement authorities.

Furthermore, our government also tries to make full publicity of anti-counterfeiting work to the general public as follows:

1. Praising government agencies with outstanding performance in anti-counterfeiting work and publicly destroying seized counterfeits: For examples, a ceremony to publicly honor police agencies’ outstanding performance in protecting intellectual property rights and to publicly crackdown counterfeiting and pirating products was held at the auditorium of the Ministry of Economic Affairs on August 28, 2001.  Two Vice Ministers from Ministry of Justice and of Interior, prosecutors of Taiwan High Court, high-rank police officials, lawmakers, and foreign embassies, consulates and representative offices as well as domestic IPR owner organizations were invited to the ceremony.  It illustrates the TPKM’s determination to protect intellectual property rights; moreover, to reinforce anti-counterfeiting/piracy policy.

2. Manufacturers and consumers were and will periodically be called to pay attention to IPRs: To make examples by events of the same 2001, in early August 2001, a letter was issued in the name of the Minister of Economic Affairs to about 20,000 enterprises and manufacturers, calling their attentions to IPRs.  Furthermore, an announcement and a news release regarding the same issue were posted at the websites of the TPKM Ministry of Economic Affairs and the IPO on August 31.  On the same day, the MOEA and the Business Software Alliance of Taiwan jointly published a letter from the Minister to enterprises in the Economic Daily News, China Times (Edition A), Business Weekly (Issue 719) and Win-Win Weekly (Issue 246).

3. Manufacturers going abroad for commodity exhibitions were and will be periodically called to pay attention to IPRs: In order to give Taiwanese manufacturers a better understanding about the territoriality of IPR protections given by various countries and to help them avoid any involvement in IPR infringements upon participating in overseas exhibitions, a pamphlet entitled “Overseas exhibitions—a means to expand business; IPRs—a concept to be kept in mind” was published.  The pamphlet has been distributed to various divisions and departments of the Ministry of Economic Affairs, major Taiwanese economic and trading offices in foreign countries, relevant trading, industrial and commercial associations, organizations and professional groups of companies participating in such exhibitions. The contents thereof have also been posted on the IPO’s website.

4. Preparation of other relevant promotional documents: The Reports on the Prohibition of Counterfeiting and Piracy and various promotional pamphlets were distributed to related divisions and units.  Advertisements were launched on various media to enhance publicity of anti-counterfeit work and actively promote the “3-No Policy,” i.e., not to manufacture, not to purchase and not to make sale of goods infringing on IPRs, so as to effectively curb counterfeits.

From the above-described, we have discussed some significant factors concerning about anti-counterfeiting strategies in Taiwan.  For respective consideration, we have made some comments or suggestions about the might-be feasible strategy, which might be locally or specifically helpful after one has been equipped with general or basic knowledge or idea about how to anti-counterfeit.

Strategy, as it is, gives the world:

1. The image of success in itself;

2. An expression of being subtle; and

3. A sense of being miraculous.

It would appear from what are described above that we did not have expressly worked out what kind of strategy in this article so that it seems that we did not succeed in completing a wonderful article or strategy to be disseminated to relevant parties.  Nevertheless, we would rather consider the matter otherwise since we have tried to find out and analyze all potential and possible variables and/or parameters in formatting any possible strategy once desired when there is a specific case happening in any specific factual circumstance under a specific environmental situation, although it might be very true that some specific or unknown variables and/or parameters have not been duly dealt with.

According to the traditional Chinese mystery, a top strategy is offered if a commonly disguised article makes no or few mention of strategy but invisibly and naturally presents a strategy in the mind of a reader.  Although we dare not and do not know whether we have done so, we are so anticipating.

Claims We Have

1. Since a sound legislation is anticipated to improving or providing the best predictability as to what will result from a legal behavior, if it really is, not only it would be self-explanatory for a law-offender to understand what legal consequence it is to bear but also it is clear and easy for the injured to take a legal measure for being remedied.

2. Although the period of the imprisonment in relevant Taiwan IP laws might not be the highest in this world or the punishments stipulated therein might not be the gravest, it is believed that the stern extent for the above-described is never loose by which it means that the substantive laws for anti-counterfeit in Taiwan are IPRs owners-oriented.

3. Habits and customs cannot be switched or changed very soon because they are historically formed in a certain period of time and can only be phased in or out historically either through intentionally formatting or randomly or optionally plasticizing activities or events.

4. One of key factors for coping with habits and customs relating to anti-counterfeiting in Taiwan is trying to link national sentiment of local consumers with a specific trademark by sponsoring kinds of activities in a specific country in order to improve the image of the specific trademark and to engrave in the mind of local consumers that it is proud to own a goods having the specific trademark so that it is absolutely worthy of costing some money to own such goods.

5. The habits and customs relating to anti-counterfeit in Taiwan might not be very good in all aspects but negative factors could be separately dealt with satisfactorily because our people are easily subject to popular or reasonable influence.

6. Although we raise the question as to whether this world needs a famous trademark in the above, we did not mean that this world needs not a famous trademark, which normally can satisfy, at least emotionally, the consumer.

7. Since the economic and developed degree in Taiwan is quite well, although Taiwan might be a good place to arouse counterfeiting, Taiwan is also a wonderful area to effectively practice anti-counterfeiting measures since the court system, the law mechanism and the social system can so support.

8. It is really convenient that an IP owner can easily find helps all over Taiwan since all judicial police entities or quasi-judicial authorities are readily prepared to offer or render helps in this regard so that the enforcement laws for anti-counterfeiting in Taiwan are sound, complete and encouraging.

9. It might be possible that the major counterfeiting concerns come from the group not belonging to the rich or the poor, although it should be true that this group might become lesser and lesser, because such group cannot bear the high cost of buying expensive genuine goods but has the power to buy the common goods.

10. Prevention from wrongdoing through establishment of a company can only be obviated when all businesspersons are law-abiding good ones either voluntarily or forcedly by either the law or the morality made possible by civilization, education or religion.

11. So far as efforts made by Taiwan government are concerned, any person on earth caring about the enforcement environment for suppressing counterfeiting should be sincerely moved by those made by our government.

12. The enforcement environment is strived by our government to be improved a lot so that no IPRs owners should worry about enforcement environment in Taiwan.  In other words, as long as due care and preparations have been taken and made, IPRs owners always get fruitful enforcements in Taiwan.

13. Strategy, as it literally is, gives the world the image of success in itself, an expression of being subtle and a sense of being miraculous.  According to the traditional Chinese mystery, a top strategy is offered if a commonly disguised article makes no or few mention of strategy but invisibly and naturally presents a strategy in the mind of a reader.  Although we dare not and do not know whether we have done so, we are so anticipating.