Strategy In Taiwan ©Part
II of II
|From the above, it can be known that
Taiwan has tried her best to provide IPRs owners with various channels to curb
any potential infringement. So far
as the above five alternatives are concerned, we would like to comment as
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
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
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.
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
Except the above factors, the
enforcement environment of a country at least further involves in the following
1. The factual reality of the
2. The mobility of the society;
3. The efforts made by the
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
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
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
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;
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.
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
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
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
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
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:
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.
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 2nd
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 2nd 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
(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
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¡Xa means to expand
business; IPRs¡Xa 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
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
Strategy, as it is, gives the world:
1. The image of success in itself;
2. An expression of being subtle;
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
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
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