Chapter 7 Remedies for Right Infringement

Article 61 Remedies for infringement

A trademark right holder may claim for damages from a person infringing whose trademark rights, and may request for excluding infringement thereto; in case of likelihood of infringement, the said right holder may also request for the prevention thereof.
Using trademark under conditions stipulated by Paragraph 2 of Article 29 without consent from a trademark right holder shall constitute infringement of the trademark rights.
A trademark right holder, when requesting in pursuance with provisions of the preceding paragraph 1, may request for destruction or other necessary disposal of the goods infringing trademark rights, or raw materials or equipments utilized for infringement.

Article 62 Ban on using third-party mark as company name, domain name, etc.

A trademark right infringement shall be deemed to have occurred where consent of trademark right holder is absent from any of the following conditions:
1.Knowingly using a trademark identical or similar to a well-known registered trademark of another person, or using the word(s) contained in the said well-known trademark as the company name, trade name or domain name or any other representation identifying the body or source of whose business, and hence diluting the distinctiveness or reputation of the said well-known trademark; or
2.Knowingly using the word(s) contained in a registered trademark of another person as the company name, trade name or domain name or any other representation identifying the body or source of whose business, and hence causing confusion to relevant consumers of goods or services thereof.

Article 63 Assessment of damages

When claiming for damages, a trademark right holder may choose one of the following methods to estimate the amount thereof:
1. Damages may be claimed in pursuance with Article 216 of the Civil Code. However, in the event where evidence cannot be presented to prove the damages thereof, the trademark right holder may use the profit normally gained from using whose registered trademark to subtract the profit gained from the same trademark after infringement, and claim the difference as the amount of damage;
2. Damages may be claimed in accordance with the profit gained from trademark rights infringement. However, where no evidence on costs or necessary expenses can be proved by the infringer, the total amount of sales from selling the infringing goods shall be regarded as the amount of profit; or
3. Damages may be claimed in an amount equivalent to 500 to 1,500 times of the unit retail price of the infringing goods. However, in the case where over 1,500 pieces of infringing goods are found, the amount of damage to be claimed shall be assessed based on the total sale price of the said infringing goods.
A court may, at its discretion, reduce the amount of compensation in the case where the amount of compensation for damages assessed under the preceding paragraph is apparently unreasonable.
A trademark right holder may claim for additional compensation in a reasonable amount in the case where whose business reputation has sufferred any damage on account of such infringement.

Article 64 Publication of court decision in newspaper

A trademark right holder may request for publication on a newspaper, at the expense of the infringer, of the contents, in full or in part, of the judicial decision in relation to a trademark infringement.

Article 65 Seizure at Customs

A trademark right holder may request the Customs Authority to suspend the release of imported or exported goods that are suspected of infringing the trademark rights of the said right holder.
The request set forth in the preceding paragraph shall be presented in writing, explicating the facts of the infringement, and along with a bond in an amount equivalent to the duty-paid price of the imported goods or the F.O.B. price of the exported goods, assessed by the Customs Authority, or with an equivalent security.
Once the Customs Authority accepts a request for suspension of release, it shall immediately notify the applicant thereof; where suspension of release is carried out owing to compliance to the preceding paragraph, the said applicant and the party whose goods are detained shall be notified in writing.
The party whose goods are detained may request the customs authorities to revoke the suspension of release by providing a bond in an amount equivalent to two times the bond set forth in the preceding paragraph 2 or an equivalent security while following the procedures in accordance with applicable customs regulations on import and export goods clearance.
Without prejudice to the protection of the confidentiality of the detained goods, the Customs Authority may allow the inspection of the detained goods requested by the applicant thereof or the party whose goods are detained.
Where the applicant thereof is awarded an affirmed court ruling stating that the detained goods has infringed trademark rights, the party of the detained goods shall be liable for all relevant expenses incurred as a result of the delay of containers, warehousing, loading, and unloading of the detained goods, except for the conditions set forth in paragraph 4 of Article 66.

Article 66 Grounds for cancellation of seizure

The Customs Authority shall revoke the suspension of release under any of the following conditions:
1. Where the applicant thereof fails to initiate litigation claiming that the detained goods are infringements in pursuance with Article 61 while notifying the Customs Authority within twelve (12) days counting from the date on which the Customs Authority has notified its acceptance of suspension requested by the said applicant thereof.
2. Where a court ruling dismissing litigation initiated by the applicant thereof alleging that the detained goods are infringements becomes affirmative.
3. Where a court ruling sustaining that the detained goods infringe no trademark rights becomes affirmative.
4. Where the applicant thereof requests for revocation of the suspension of release.
5. One that complies with the condition set forth in paragraph 4 of Article 65.
The Customs Authority may extend the period set forth in Item (1) of the preceding paragraph by an additional twelve (12) days whenever necessary.
Where revocation carried out in pursuance with paragraph 1, the Customs Authority shall follow the procedures in accordance with applicable customs regulations on import and export goods clearance.
Where suspension of release is revoked in pursuance with Items (1) to (4) of paragraph 1, the applicant thereof shall be liable for all relevant expenses incurred as a result of the delay of containers, warehousing, loading, and unloading of the detained goods.

Article 67 Provisions relating to provisional seizure

When the detained goods are affirmed to be non-infringing by a court ruling, the applicant for suspension of release shall compensate the party whose goods were detained for any losses resulting from the suspension of release or from the provision of the bond set forth in paragraph 4 of Article 65.
The applicant of the bond set forth in paragraph 4 of Article 65, or the party, whose goods were detained, of the bond stipulated in paragraph 2 of Article 65 shall enjoy the same right as a pledgee. However, all relevant expenses incurred due to the delay of containers, warehousing, loading, and unloading of the detained goods as set forth in paragraph 4 of Article 66 and paragraph 6 of Article 65 shall be paid in priority from compensation over all losses incurred to the said applicant or the said party.

Under any of the following circumstances, the Customs Authority shall return the bond set forth in paragraph 2 of Article 65 upon request by the applicant thereof:
1. Where the bond is no longer required owing to the applicant thereof has either obtained a favorable affirmed judgment or reached a settlement with the party whose goods were detained;
2. Where the applicant thereof proves that the party of the detained goods was notified but has failed to exercise its rights within twenty (20) or more days after the suspension of release is revoked on account of any circumstances set forth in Items (1) through (4) of paragraph 1 of Article 66 in which the party of the detained goods has suffered from losses owing to the suspension of release, or after the party of the detained goods has been awarded a favorable affirmed judgment; or
3. Where the party whose goods were detained agrees to the return of the bond.
Under any of the following circumstances, the Customs Authority shall return the bond set forth in paragraph 4 of Article 65, upon request by the party whose goods were detained:
1. Where the bond is no longer required owing to either the suspension of the release order has been revoked pursuant to the provisions of Items (1) through (4) of paragraph 1 of Article 66, or the party whose goods were detained has reached a settlement with the applicant thereof;
2. Where the party whose goods were detained proves that the applicant thereof was notified but has failed to exercise its rights within twenty (20) or more days after the said applicant thereof has been awarded a favorable affirmed judgment; or
3. Where the applicant thereof agrees to the return of the bond.

Article 68 Relevant regulations

The regulations governing the application for detaining goods, revocation of a detaining, inspection of detained goods, payment, provision and return procedures for a bond or security, required documents and other matters to be abided by which set forth in the preceding three articles shall be prescribed by the competent authority and the Ministry of Finance.

Article 69 Availability of remedies for infringement to licensee/ sublicensee

The provisions of this Chapter shall apply mutatis mutandis to infringement on the right to use a trademark granted through licensing as provided under Article 33.

Article 70 Recognition not required for foreign trademark proprietors to initiate infringement proceedings

A foreign juristic person or entity, which is not limited to those recognized by the Government of the Republic of China, may also file a complaint, initiate a private prosecution, or institute a civil suit with respect to the matters prescribed in this Act.

Article 71 Tribunal