To promote accession to the CPTPP (Comprehensive and Progressive Agreement for Trans-Pacific Partnership), the Taiwan government amended and promulgated Articles 68, 70, 95, 96 and 97 of the revised Trademark Act on May 4, 2022. The enforcement date will be announced by the Executive Yuan.
The following are highlights of the partial amendments to the Trademark Act:
- Before the Trademark Act was amended, the act for trademark counterfeit must be carried out “knowingly” to constitute the condition of infringement. However, the civil liability of trademark infringement as stipulated by the CPTPP comprises “knowing” or “with reasonable grounds to know,” while the latter refers to indirect intention and/or negligence that are liable for damages. Per judicial practice in Taiwan, “knowingly” is deemed as limited to direct intention, hence it is impossible to assert trademark infringement against indirect intention and negligence. Therefore, the revised Trademark Act has deleted the requirement of knowingly, so that intention or negligence shall be contributed as the subjective condition, by referring to general civil damages.
- Adding criminal penalty for counterfeiting the labels, hang tags, packaging, etc. of goods/services identical with or similar to the registered trademark or collective trademark. This is in reference to the CPTPP regulations for those who counterfeit the labels or packaging that is identical with or cannot be distinguished from the use for the same goods or services of the registered trademarks or collective trademarks. Namely, the offender shall be liable to imprisonment for a period of not more than one year and/or a fine not exceeding NT$50,000. Further, it is expressly stated that such penalty is also applicable to those same acts conducted through electronic media or the internet.
- Amending the criminal penalty for counterfeiting the labels, hang tags, packaging, etc. of the certification mark, to include the act of export or import, and deleting the subjective requirement of “knowingly.” The offender shall be liable to imprisonment for a period not more than three years and/or a fine not exceeding NT$200,000. Further, it is expressly stated that such penalty is also applicable to those same acts conducted through electronic media or the internet.
- Deleting the subjective requirement of “knowingly” with respect to the criminal penalty for the act to sell or offer to sell the infringing goods by another person.
It is anticipated that this amendment of Trademark Act will be enforced when Taiwan is able to access to CPTPP. However it is unknown when such would be available as it is involved with many factors.
