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Operational Directions for Customs Authorities in Implementing Measures for Protecting the Rights and Interests of Patent, Trademark and Copyright

1.The Directions is promulgated for the purpose of protecting the rights and interests of patent, trademark and copyright owners in accordance with the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS") of the World Trade Organization ("WTO") as well as the relevant laws and regulations of the Republic of China on the basis of fairness and equality so as to promote normal international trade and avoid the creation of barriers to customs clearance.

 

2.Trademark and copyright are protected under the Directions primarily on the ground of complaints made by the trademark holder, copyright holder, right holder licensee, agent of right holder licensee, agent of right holder, right holder association (hereinafter referred to as “right holder”). Nevertheless, in the event that the customs authority discovers imported or exported goods suspected of infringing on trademark right or copyright upon advice given by the right holder, or upon notice given by other authorities or in the execution of its own duties, the customs authority shall implement the relevant provisions set out in the Customs Act, Customs Anti-smuggling Act, Foreign Trade Act, Copyright Act, Trademark Act, Code of Civil Procedure and Code of Criminal Procedure.

 

3.In case of infringement of patent rights whereunder the goods in question are suspended from import/export on the ground of provisional measures adjudicated by the judicial authority, the customs authority shall implement the measures after the patent owner (or exclusive licensee) provides the time of import/export of the goods in question, location, the name of carrier for import/export, flight/voyage number or declaration form number, except those goods which have already been released by the customs authorities.

 

4.Procedures for complaint-based protection:

(1)The right holder shall make a written complaint to the Directorate General of Customs or the customs office of the place of import or export in the event that the imported or exported goods are suspected of infringing on trademark right or copyright. The following information shall be submitted upon making a complaint.

(i)Facts of the infringement and explanations which are sufficient to identify the goods that infringe on trademark right or copyright.

(ii)Relevant substantive information, such as the name of importer/exporter, the description of goods, the port and date of import/export, flight (voyage) number, container number and place of storage of goods.

(iii)Trademark certificate, copyright certificate or any other document which is sufficient to establish copyright ownership. In the event that a complaint is made by an agent, documents which prove the existence of agency shall be submitted.

 

(2)The customs authority shall determine whether the complaint is substantive enough to be accepted upon the receipt of a complaint which is made in accordance with the above 4(1). The right holder shall be notified if the complaint is accepted. In the event that a complaint is rejected, the customs authority shall notify the right holder (who shall be invited by notice to the office to give explanation when necessary) and state reasons for its decision of non-acceptance.

    

(3)In the event that the customs authority accepts a complaint and establishes that the imported or exported goods in question are the same as those set out in the complaint, the customs shall:

(i)immediately notify the right holder by telephone and facsimile, and the right holder shall attend the office of the customs authority within the prescribed time from receiving the notice (four hours for export by air freight, one business day for import/export by sea freight and import by air freight) to identify the goods.  The right holder shall also submit documents to identify the facts of infringement within three business days from receiving the notice.  One extension of the prescribed time is available upon the right holder’s statement of reasons in writing submitted to the customs.

(ii)The customs authority shall also notify the importer or exporter of the goods by telephone and facsimile to request license document or any other document which proves the absence of infringement within three business days from receiving the notice. One extension of the prescribed time is available upon the importer’s or exporter’s statement of reasons in writing submitted to the customs.

 

(4)When suspicion of trademark infringement is substantiated by the right holder’s submitting documents for identifying the facts of infringement:

(i)In the event that the importer/exporter is unable to provide licensed document or any other document which proves the absence of infringement within the prescribed time of the above 4(3)(ii), the customs authority shall transfer the case to the judicial authorities in accordance with Article 82 of the Trademark Act (under advice to the Intellectual Property Office of the Ministry of Economic Affairs).

(ii)In the event that the importer/exporter provides licensed document or any other document which proves the absence of infringement within the prescribed time of the above 4(3)(ii), the customs authority shall immediately notify the right holder.

(iii)The right holder may apply to the customs authority for detention of the goods, in accordance with Paragraph 1 of Article 65 of the Trademark Act, or apply to the court for preservation proceedings. The application is required to be completed within three days from receiving the notice of the above 4(4)(ii), and the customs authority shall implement the detention. The person subject to the detention may apply to the customs authority for revocation of the detention, in accordance with Paragraph 4 of Article 65 of the Trademark Act, or to the court for cancellation of preservation proceedings.

(iv)If the right holder fails to apply to the customs authority for detention of the goods in accordance with Paragraph 1 of Article 65 of the Trademark Act or apply to the court for preservation proceedings within the prescribed time of the above 4(4)(iii) and there is no violation of customs clearance regulations, the customs authority shall release the goods after taking representative samples.

(v)Where the application thereof fails to initiate litigation proceedings alleging that the detained goods are in infringement in accordance with Article 61 of the Trademark Act while notifying the customs authority within twelve days counting from the date on which the customs authority has notified its acceptance of suspension requested by the said applicant thereof, the customs authorities shall rescind the detention order. If there is no violation of customs clearance regulations, the customs authority shall release the goods after taking representative sample. The customs authority may extend the preceding period by an additional twelve days in a necessary circumstance.

 

(5)When Suspicion of copyright infringement is substantiated by the right holder’s submitting document for identifying the fact of infringement:

(i)In the event that the importer/ exporter is unable to provide license document or any other document which proves the absence of infringement within the prescribed time of the above 4(3)(ii), the customs authority shall suspend the release of the goods in accordance with Article 90-1 of the Copyright Act and notify the right holder(under advice to the Intellectual Property Office of the Ministry of Economic Affairs).

(ii)In the event that the right holder fails to apply to the customs authority for detention in accordance with Article 90-1 of the Copyright Act or initiate protective civil or criminal procedures within three business days after the customs authority has suspended the release of the goods, the customs authority shall immediately release the goods in question if there is no violation of customs clearance regulations.

(iii)In the event that the importer / exporter provides license document or any other document which proves the absence of infringement within the prescribed time of the above 4(3)(ii), the customs authority shall immediately notify the right holder. The right holder shall apply to the customs authority for detention in accordance with Article 90-1 of the Copyright Act, or apply to the court for preservation proceedings within three business days from receiving the notice, and the customs authority shall implement the detention. If the right holder fails to make either of the above applications within the prescribed time and there is no violation of customs clearance regulations, the customs authority shall release the goods after taking representative samples and transfer the case to the relevant authority.

(iv)After the right holder has applied to the customs authority for detention of the goods, where the applicant thereof fails to initiate litigation proceedings alleging that the detained goods are in infringement while notifying the customs authority within twelve days counting from the date on which the customs authority has notified its acceptance of suspension requested by the said applicant thereof, the customs authority shall rescind the detention order. If there is no violation of customs clearance regulations, the customs authority shall release the goods after taking representative sample. The customs authority may extend the preceding period by an additional twelve days in a necessary circumstance.

 

(6)In the event that the right holder acknowledges that no infringement of trademark right or copyright has taken place, or the right holder fails to attend the office of the customs authority to make identification or fails to submit documents to identify the facts of infringement, the customs authority shall release the goods if there is no violation of customs clearance regulations.

 

5.In the event that the customs authority discovers that the appearances of imported or exported goods meet the description of goods that are advised by the right holder or notified by other government authorities to have infringed trademark or copyright:

(1)The customs authority shall notify the right holder to assist in identifying the goods, and inform the importer/exporter of the goods to provide license document or any other document which proves the absence of infringement. In the event that the customs authority is unable to obtain contact information of the right holder, it may request assistance from the Intellectual Property Office of the Ministry of Economic Affairs by facsimile. Provided that the customs authority is unable to obtain the relevant information within one business day counting from the date on which the assistance request by facsimile above is made, the customs authority shall release the goods after taking representative samples if there is no violation of customs clearance regulations.

 

(2)The right holder shall provide trademark certificate, copyright certificate or any other document which is sufficient to establish copyright ownership (together with certificate of agency if there is an agent) and assist in making identification.

 

(3)The relevant procedures shall conform to Article 4.

       

6.In the event that the judicial authority possesses substantive evidence indicating the infringement of trademark right or copyright, and notifies the customs authority in writing or issues a detention warrant, the customs authority shall implement the detention if the goods in question are discovered, and transfer the case as well as the goods in question to the said judicial authority. In case of difficulties which prevent the storage of goods, the aforementioned judicial authority shall request the right holder to store the goods at warehouse, container yard, or air cargo terminal where the goods were originally stored.

 

7.If, in the execution of duties, the customs authority suspects from the appearance of imported/ exported goods that there is an infringement of trademark or copyright, the following procedures shall apply:

(1)In cases where trademark right is suspected of being infringed, the procedures of 4(3), (4), and (6) shall apply mutatis mutandis.

 

(2)In cases where copyright is suspected of being infringed, the procedures of 4(3), (5), and (6) shall apply mutatis mutandis.

 

(3)In the event that the customs authority is unable to obtain contact information of the right holder, it may request assistance from the Intellectual Property Office of the Ministry of Economic Affairs by facsimile. Provided that the customs authority is unable to obtain the relevant information within one business day counting from the date on which the assistance request by facsimile above is made, the customs authority shall release the goods after taking representative samples if there is no violation of customs clearance regulations.

 

8.The customs authority is allowed to provide to the right holder information of the consignor, importer, exporter, consignee and quantities of the goods that infringe on the rights (including name of the responsible person, name and address of the company, etc.) only after the judicial authority determines and establishes by judgment the existence of infringement of trademark right or copyright.

 

  • Publish Date:2008-10-20
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