APAA e-Newsletter (Issue No. 38, December 2023)

Cracking Down on Counterfeiting: Taiwan Customs Anti-counterfeiting Platform Officially Launched

Lydia Wong, Top Team International Patent & Trademark Office (Taiwan)

To reduce the maintenance costs for trademark rights holders and enhance the efficiency of the Customs, Taiwan Ministry of Finance established an online platform in August 2021, which allows customs officers, trademark rights holders, and importers/exporters to swiftly exchange information and documents. In alignment with the launch of the Anti-Counterfeiting Platform, Articles 7 and 9 of the “Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark” were also amended and promulgated on September 15, 2021. In addition, a formal revision to Article 75 of the “Trademark Act” was officially announced on May 24, 2023. The stipulation of the Anti-Counterfeiting Platform and electronic information transmission enables trademark rights holders to employ a more convenient way of online identification for rights protection in Taiwan in the future.

Border protection in a race against time makes cross-border rights protection challenging

According to Article 7 of the pre-amended “Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark” and Article 75 of the “Trademark Act” in Taiwan, when customs officers identify suspicious infringing goods, trademark rights holders must appear for identification within a specified time frame upon receiving notification (i.e. within four hours for air-exported goods; within twenty-four hours for air-imported and sea-import/export goods). If on-site presence is not feasible due to factors such as distance, manpower, or the absence of a branch office of international brands in Taiwan, trademark rights holders should entrust the agents. Customs locations are often far from city centers, and require the dispatch of personnel for the identification of disputed goods, inadvertently increasing the cost and time pressure for enterprises in protecting their rights. Some enterprises are forced to abandon the right of identification, allowing potential counterfeit products to enter the market. This creates a vicious cycle.

Identification process completed by online works

In view of the challenges, amendments to Article 75 of the Trademark Act and Articles 7 and 9 of the “Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademark” relax relevant regulations. The amendments formally grant legal basis to the online platform, allowing customs, trademark rights holders, and importers/exporters to submit documents and undergo infringement identification procedures online through the approved Anti-Counterfeiting Platform. This process ensures information security while relieving the burden of on-site identification, thereby streamlining the rights protection process.

Trademark Act Paragraph 2 of Article 75:
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. 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.

Customs procedures remain unchanged, and the online platform is simple and easy to operate

The primary purpose of the online platform is to offer trademark rights holders a more diverse means of identification. Customs procedures and deadlines remain unchanged. When suspected infringing goods are detected, Customs officers can upload relevant photos to the platform and notify trademark rights holders and importers/exporters via email, providing them with a case identification code for further actions. Upon receiving the notification, trademark rights holders can choose to conduct on-site identification or make use of the “Intellectual Property Rights Zone” on the CPT Single Window for online identification and report submission.

Importers/exporters can also submit proof of non-infringement documents online. If the online is chosen, the system will automatically notify the Customs regarding the received documents, ensuring the completion of the identification procedure within the specified deadline.

The Anti-Counterfeiting Platform website currently features a traditional Chinese interface and there is no corresponding English interface available. Therefore, for foreign rights holders without personnel stationed in Taiwan to handle customs identification matters promptly, it is recommended to strengthen collaboration with local trademark agents. This collaboration ensures timely completion of identification and prevents disputed goods from entering the market.