Recent Legal Changes in Taiwan’s IP-Related Laws
Ronald C.Y. Tsai, Wideband IP Office (Taiwan)
On April 15, 2022, the Taiwan Legislative Yuan passed partial amendments to the Copyright Law, Trademark Law and Patent Law to make the IPR-related regulations in Taiwan be more in line with CPTPP (Comprehensive and Progressive Agreement for Trans-Pacific Partnership). The summaries of the amendments to the three laws are as follows:
I. Copyright Law
According to Article 18.77 of the CPTPP, each party shall provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright or related rights piracy on a commercial scale. In the past few years, the most common type of copyright infringement is reproducing other’s work in digital and non-physical forms. These pirated copyright goods can be easily distributed to the unauthorized party through the internet and causes enormous damages to the copyright holder.
According to the amended Copyright Law, if a person reproduces someone else’s work in a digital form without authorization and intends to sell or rent to someone else and causes a damage more than one million New Taiwan Dollars (about 33 thousand USD), then a prosecutor is entitled to file a charge against this person without a complaint.
II. Trademark Law
According to Article 18.74 of the CPTPP, those who are liable for trademark civil infringement should be liable for damages if the infringement is found wilful or negligent. In addition, Article 18.77 of the CPTPP stipulates that the criminal punishment should be based on “wilful”, and each party shall treat wilful importation or exportation of counterfeit trademark goods or pirated copyright goods on a commercial scale as unlawful activities subject to criminal penalties.
In the previous Taiwan Trademark Law, only a trademark infringement is found “wilful” then the accused party has to be liable for the criminal and civil liabilities. But now, the “wilfulness” is no longer a requirement to establish the civil liability in a case of trademark infringement according to the latest amendment of Trademark Law, which means those who are liable for trademark civil infringement should be liable for damages whether the infringement is found wilful or negligent.
Another point of this amendment is to impose criminal liability for knowingly counterfeiting trademarks or collective trademarks, and for knowingly manufacturing, possessing, displaying, selling, exporting or importing labels, tags, packaging or containers, or articles which bears the same or similar registered trademark.
III. Patent Law
According to Article 18.53 of the CPTPP, if a Party is going to approve the marketing of a pharmaceutical product to persons other than the person originally submitting the safety and efficacy information, then the Party has an obligation to provide a system to allow for a patent holder to be notified prior to the marketing of such a pharmaceutical product.
Prior to this amendment, a new drug patent holder does not have any right to exclude the act of “applying for marketing” done by a generic drug company, even though the patent linkage system has been ruled in the Pharmaceutical Affair Law on August 20, 2019. But now, a new article (Article 60-1) has been added to the Patent Law, which provides a basis for the patent holder to file a patent infringement complaint against the generic drug.