Amendment to the Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark

On November 28, 2016, the Ministry of Finance announced the amendment to the “Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark” (the “Regulations”) to strengthen protection of trademark proprietors’ rights, actualize e-government policy, and to simplify administrative procedures.  This amendment revises 9 articles, adds 6 articles, and removes 2 articles the current Regulations, and there are a total of 17 provisions of the amended Regulations.  The amendment is summarized as follows. 

1.　Proprietors may seek recordation of their Taiwanese registered trademark(s) with the Customs in accordance with the statutory requirements and by submitting required documents/information (Article 2 and Article 3); 

2.　The Customs shall act upon Article 75 of the Taiwan Trademark Act to enforce trademark protection without being restricted to specific scenarios.  (Article 2 of the current Regulations removed); 

3.　The current one-year protection term and annual renewal requirement for trademark recordal are abolished to reduce proprietors’ cost of filing the recordal request and the Customs’ administrative work (Article 4); 

4.　The Customs should complete implementation of trademark protection measures with proprietors’ or authorized attorneys’ assistance, and thus it is added in the amendment that the Customs may terminate the trademark recordal term earlier (Article 5); 

5.　Customs’ notice to proprietors, importers, or exporters may be made in verbal, writing, by telephone, emails or facsimiles.  The Customs may also provide pictures of the suspected infringing goods upon request for the proprietor involved to conduct authenticity analysis (Article 7); 

6.　The Customs may release the withheld suspected goods in accordance with the regulations governing the customs clearance of imported/exported goods under the circumstance where the Customs cannot reach the proprietor involved or the proprietor fails to conduct authenticity examination at the Customs (Article 9); 

7.　For fulfilling e-government policy, proprietors may file a request or file a complaint in writing or by electronic means (Article 13); 

8.　Trademark proprietors who have no domicile or business establishment in Taiwan shall authorize an agent who has domicile in Taiwan to act on behalf of himself/herself (Article 14); 

9.　For enforcement in line with Article 39 of the Taiwan Trademark Act stipulating that an exclusive licensee whose exclusive license granted has been duly entered and recorded with the Registrar is entitled, within the scope of the license, to the status as that of the proprietor, the amendment adds a provision that an exclusive licensee whose exclusive licensed has been duly entered and recorded with the Registrar may exercise the right in regard to the proprietor in his/her own name (Article 15); and 

10.　For keeping the Customs’ IPR information data in consistency with the actual information, the proprietor shall request for change of any relevant information with respect to any requests he/she has filed with the Customs (Article 16).  (November 2016) 

/CCS