In order to implement border protection measures stipulated by the Trademark Act, customs administration under the Ministry of Finance has enacted “Regulations governing Customs measures in protecting rights and interests of trademark.” The regulations provide that a trademark registrant (trademark right holder) can apply for advice protection. Also, customs administrators who act upon their own initiative and find the imported/exported goods that may obviously infringe a trademark right, shall simultaneously notify both the trademark registrant to identify the goods and present the evidence of infringement, and the importer/exporter to submit a non-infringement evidence, within a prescribed term. Based on the evidence of infringement by the trademark registrant, and if the importer/exporter does not submit any non-infringement evidence, Customs may suspend the release of the goods and transfer the entire case to judicial authorities for investigation.
The above advice protection on trademark right is a mechanism at customs database recording the intellectual property information. By recording the trademark information in customs database for advice protection, Customs can strengthen their judgment or identification of counterfeited goods. The advice protection period is from the date when Customs approve the application of advice protection and until the expiration date of the trademark right. A trademark right has a duration of ten years and can be renewed every ten years. The advice protection period is also extendable upon request until the expiry of trademark renewal period. If Customs is unable to contact the trademark registrant/agent, Customs may terminate the advice protection period earlier.
Below are key points and necessary information for trademark registrant to file an advice protection with customs administration:
- Each application for advice protection is limited to one trademark registration number per case.
- The application must specify the relevant information of the trademark right and its right holder (including the communications, etc.).
- Sufficient written description for identifying the characteristics of genuine goods and infringing goods.
- Sufficient digital images for identifying the characteristics of genuine and infringing goods (such as photos or catalogs of genuine goods, counterfeit goods, or their comparisons, etc.), and the image content should be the designated items of registered trademark.
- Document evidencing the trademark right (e.g. trademark registration certificate).
- Power of Attorney (if the trademark registrant appoints an agent to file the advice protection).
Since the import and export of goods have time schedule controlled by Customs, the trademark registrant must, within 24 hours (for sea import/export and air import; 4 hours for air export) after Customs notice, identify whether there is infringement, by conducting on-site inspection or with the online photos provided by customs electronic platform, and present an infringement evidence of the counterfeit goods within 3 (extendable to 6) working days upon receipt of Customs notice. If the importer/exporter submits a non-infringement proof within 3 or 6 days, the trademark registrant can apply to detain the goods within 3 working days after the customs notice and provide a deposit equal to the price of the goods or an equivalent bond. The owner of the detained goods may request to revoke the detention with twice amount of the price or equivalent bond, and proceed customs clearance of goods accordingly. Then, the trademark registrant must file a lawsuit with the court within 12 days from the next day of detention. If the detention or lawsuit is not carried out in accordance with the regulations, or if the lawsuit is dismissed by a court ruling, customs will release the goods.
In practice, most of the suspected counterfeit goods seized by Customs are goods manufactured overseas and imported into Taiwan. Whether or not the trademark registrant has filed an advice protection, Customs shall inform the trademark registrant/agent of the suspected infringing goods. However, if the trademark registrant is a foreign company, sometimes Customs may notify the trademark agent recorded on TIPO’s online trademark database who has not been authorized by the foreign company to handle the matter related to customs border protection. Therefore, if the trademark registrant suspects or is concerned about the infringement of his/her trademark rights by imported/exported goods, a request for advice protection can be filed with customs administration. This can assist customs notification, detention of counterfeit goods, and other procedures, as well as enhancing the protection of the trademark registrant’s own rights and interests.
