Goto Main Content
:::

Chapter Law Content

Title: Trademark Act CH
Category: Ministry of Economic Affairs(經濟部)
Chapter II Trademark
Section VII Infringement Remedies
Article 68
Infringement of registered trademark
Any of the following acts, without consent of the proprietor of a registered trademark, constitutes infringement of the right of such trademark:
(1)Using a trademark which is identical with the registered trademark in relation to goods or services which are identical with those for which it is registered;
(2)Using a trademark which is identical with the registered trademark and used in relation to goods or services similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers; or
(3)Using a trademark which is similar to the registered trademark and used in relation to goods or services identical with or similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers.
Any person who, without the consent of the proprietor of a registered trademark, manufactures, sells, possesses, displays, exports, or imports labels, tags, packaging, containers, or service-related articles that bear trademarks the same or similar to said registered trademark of the identical or similar goods or services in the course of trade for their own use or for others, shall also be deemed an infringer of the right of such trademark.
Article 69
Exclusion, prevention and damages of infringement; time limit to demand damages
A proprietor of a registered trademark is entitled to demand a person who infringes or is likely to infringe the trademark right to stop or prevent such infringement.
When making a demand pursuant to Paragraph 1, the proprietor is entitled to demand for destruction of infringing articles and the materials or implements used in infringing the trademark. However, the court may order other dispositions as it considers necessary after taking into account the need for proportionality between the seriousness of the infringement and the interests of third parties.
The proprietor is entitled to demand the infringer who knowingly, or with reasonable grounds to know, infringed such trademark rights to pay the proprietor damages.
The rights to demand referred to in the preceding paragraph shall become extinguished if not exercised within two years from the date on which the proprietor become aware of the damage and the person liable for damages. This right shall also become extinguished if it is not exercised within ten years from the time of infringement.
Article 70
Acts deemed infringement
Any of the following acts, without consent of the proprietor of a registered trademark, shall be deemed infringement of the right of such trademark:
(1)Knowingly using a trademark which is identical with or similar to another person’s well-known registered trademark, and hence there exists a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark; or
(2)Knowingly using words contained in another person’s well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark.
Article 71
Calculation of damages
Damages demanded by the proprietor of a registered trademark may be calculated according to any of the following:
(1)The method provided in Article 216 of the Civil Code; the proprietor is entitled to demand damages based on the amount of the balance derived by subtracting the profit earned through using the trademark after infringement from the profit normally expected through using the same trademark, if no method of proof can be furnished to prove the damage suffered;
(2)The profit earned by the infringer as a result of trademark infringement; if no proof on costs or necessary expenses can be furnished by the infringer, the total amount of income from selling the infringing goods shall be presumed to be the amount of profit;
(3)The amount not more than 1,500 times of the unit retail price of the infringing goods; if over 1,500 pieces of infringing goods were found, the amount of damages shall be a lump sum of the market value of the infringing goods; or
(4)The equivalent amount of royalty that may be collected from using the trademark under licensing.
A court may, at its discretion, reduce the amount of damages referred to in the preceding paragraph if such amount is apparently unequal.
Article 72
Application to Customs for detention
A proprietor of a registered trademark may file an application to Customs for detention of articles that are suspected of infringing the rights in the trademark.
Any application referred to in the preceding paragraph shall be filed in writing, accompanied by a statement of the facts of the infringement and a security in an amount equivalent to the duty-paid price of the imported articles or the F.O.B. price of the exported articles, assessed by Customs, or equivalent assurance.
Customs shall immediately give a notice to the applicant once the application for detention is admitted; if suspected articles are detained because the application conforms to the preceding paragraph, Customs shall give a notice to the applicant and the owner of detained articles in writing.
The owner of detained articles may request Customs to revoke the detention on provision of a security equivalent to two times the security referred to in the Paragraph 2 or equivalent assurance while following the procedures in accordance with applicable Customs Regulations on import and export articles clearance.
Where the applicant is awarded a final judgment of the court stating that the detained articles have infringed trademark rights, the owner of detained articles shall be liable for all relevant expenses incurred as a result of the delay of containers, warehousing, loading, and unloading of the detained articles.
Article 73
Revocation of detention
Customs shall revoke the detention if any of the following exists:
(1)Within a period of twelve days after the applicant has been served notice of admission of the application, Customs has not been informed that proceedings claiming that the detained articles are infringing articles pursuant to Article 69 have been initiated by the applicant;
(2)A final ruling of the court which dismisses the litigation initiated by the applicant claiming that the detained articles are infringing article;
(3)A final judgment of the court which holds that the detained articles do not infringe trademark rights;
(4)The applicant requests for revocation of the detention; or
(5)The circumstance in accordance with Paragraph 4 of the preceding article.
The period as prescribed in Subparagraph 1 of the preceding paragraph may be extended by another twelve days by Customs in appropriate cases.
If the detention is revoked pursuant to Paragraph 1, Customs shall follow the procedures in accordance with applicable Customs Regulations on import and export articles clearance.
Where the detention is revoked pursuant to Subparagraphs 1 to 4 of Paragraph 1, the applicant shall be liable for all relevant expenses incurred as a result of the delay of containers, warehousing, loading, and unloading of the detained articles.
Article 74
Release of security
If a final judgment of the court holds that the detained articles do not infringe trademark rights, the applicant shall compensate the owner of detained articles for injury caused to them through wrongful detention of articles or provision of a security as prescribed in Paragraph 4 of Article 72.
The applicant shall enjoy the same right as a pledgee in relation to the security as prescribed in Paragraph 4 of Article 72. The owner of detained articles shall enjoy the same right as a pledgee in relation to the security as prescribed in Paragraph 2 of Article 72. However, all relevant expenses incurred as a result of the delay of containers, warehousing, loading, and unloading of the detained articles as prescribed in Paragraph 4 of the preceding article and Paragraph 5 of Article 72 shall be paid prior to compensate the applicant or the owner of detained articles for injury.
Customs shall release the security as prescribed in Paragraph 2 of Article 72 upon request by the applicant in any of the following:
(1)Where the security is no longer required as the applicant has either obtained a final judgment in his/her favor or reached a settlement with the owner of detained articles;
(2)Where the applicant proves that the owner of detained articles has been notified but failed to exercise his/her rights within twenty days or more after the detention is revoked on the grounds prescribed in Subparagraphs 1 through 4 of Paragraph 1 of the preceding article and hence there is injury caused to them through wrongful detention, or after such owner obtained a final judgment in his/her favor; or
(3)Where the owner of detained articles agrees to release the security.
Customs shall release the security as prescribed in Paragraph 4 of Article 72 upon request by the owner of detained articles in any of the following:
(1)Where the security is no longer required as either after the detention is revoked on the grounds prescribed in Subparagraphs 1 through 4 of Paragraph 1 of the preceding article or such owner has reached a settlement with the applicant;
(2)Where such owner proves that the applicant has been notified but failed to exercise his/her rights within twenty days or more after the applicant has obtained a final judgment in his/her favor; or
(3)Where the applicant agrees to release the security.
Article 75
Suspension of release upon Customs’ own initiative
Where Customs acts upon its own initiative and finds that imported or exported articles in respect of which it has acquired prima facie evidence that a trademark right is likely to be infringed, Customs shall give a notice to the proprietor of the trademark and the importer/exporter.
In giving the notice referred to in the preceding paragraph, Customs shall specify a period for the proprietor of the trademark to identify the infringement and furnish proof of infringement, and Customs shall also specify a period for the importer/exporter to furnish proof of non-infringement. However, the period may be extended once only at the request of the proprietor of the trademark or the importer/exporter to Customs in writing, stating legitimate reasons for failure to furnish proof.
If proof of infringement has been furnished by the proprietor of the trademark and proof of non-infringement has not been furnished by the importer/exporter pursuant to the preceding paragraph, Customs may suspend the release of such articles.
If proof of infringement has been furnished by the proprietor of the trademark and proof of non-infringement has been furnished by the importer/exporter pursuant to Paragraph 2, Customs shall give a notice to the proprietor that he/she may, within three working days after the notice is given, file an application for detention pursuant to Paragraph 1 of Article 72.
If the proprietor did not file within the period prescribed in the preceding paragraph an application for detention pursuant to Paragraph 1 of Article 72, Customs may release the articles after retaining a representative sample.
Article 76
Provision of information of suspected articles upon request
Without prejudice to the protection of confidential information of detained articles, Customs may allow the inspection of detained articles upon request by the applicant or the owner of detained articles referred to in Article 72 or the proprietor of the trademark or importer/exporter referred to in the preceding article.
After Customs detained suspected articles pursuant to Paragraph 3 of Article 72 or suspended the release of such articles pursuant to Paragraph 3 of the preceding article, Customs shall inform the proprietor of the trademark, at his/her request, of the names and addresses of the import/exporter, the consignor/consignee, and the quantity of the suspected articles.
Proprietors of trademarks are permitted to use the data obtained on the basis of preceding paragraph solely for the purpose of investigating and bringing legal actions concerning alleged infringements of their trademark rights without disclosing such data to any third party.
Article 77
Request to Customs on taking samples of suspected articles
When identifying the infringement pursuant to Paragraph 2 of Article 75, the proprietor of the trademark may request Customs to take samples of suspected articles and hand them over or send them to such proprietor for identification by providing a security in an amount equivalent to 120 percent of the duty-paid price of the imported articles and relevant duties and taxes or the F.O.B. price of the exported articles and relevant duties and taxes, assessed by Customs, provided that it is necessary to take samples for identification, as well as such proprietor has undertaken in writing not to infringe the legitimate interests of the importer/exporter and not to use the samples for unjustifiable purposes.
The amount of the security referred to in the preceding paragraph shall not be less than NT$3,000.
If such proprietor does not return the requested samples within the period for furnishing proof of infringement prescribed in Paragraph 2 of Article 75, or if the samples returned are not the same as the original ones or are defective, Customs shall hold the security to compensate the importer/exporter for injury caused to them.
The importer/exporter of samples of articles shall enjoy the same right as a pledgee in relation to the security held as prescribed in preceding paragraph.
Article 78
Regulations prescribed by Customs
The regulations governing the application for detention, revocation of a detention, payment, provision and release procedures for a security or assurance, required documents and other matters to be followed as prescribed in Articles 72 to 74 shall be prescribed by the Competent Authority coordinating with the Ministry of Finance.
The regulations governing the procedures, the required documents, and other related matters as to Customs’ implementing measures for protecting rights of trademarks, the proprietor’s request for inspection of detained articles, for related data of the infringing articles and for samples of suspected articles as prescribed in Articles 75 to 77 shall be prescribed by the Ministry of Finance.
Article 79
Formation of specialized tribunal
A court may form specialized tribunal(s) or assign specific staff members to take charge of trademark litigation cases.