Intellectual Property Enforcement in Taiwan
With offices in the United States and Taipei, Wang & Wang helps clients enforce their intellectual property rights in Taiwan. In most cases, an intellectual property rights holder starts enforcing his rights with an investigation, and then must determine which of the following methods of enforcement best protects his intellectual property rights in Taiwan.
- Preliminary Injunction
- Indictment and Trial
- Cease and Desist Letter - Negotiation and Settlement
An investigation of a target can determine the scope and level of infringement, and can also provide evidence for filing a complaint or instigating a police raid. It generally takes two to three weeks to obtain such evidence. No meaningful discovery procedure exists in Taiwan, thus the amount and quality of evidence of infringement we can present during litigation has a direct bearing on our chances of success. Moreover, any additional evidence revealed during such investigations puts us in a stronger position to proceed with the issuance of a cease and desist ("CD") letter and settlement negotiations in lieu of proceeding with a raid and civil or criminal litigation. Investigations help to determine the following:
- Whether the infringer exports the goods
- Whether the infringer manufactures and/or sells the goods
- The volume of infringing goods produced/sold
- The dollar value of the infringing goods compared to the price of the legitimate goods
- The location of the goods, such as in a warehouse, or distribution center
Depending on the results of the investigations, we can determine whether to proceed with raid actions, filing a lawsuit, or merely issuing CD letters.
With evidence in hand, we can prepare a complaint and begin raid coordination with the police. The Public Prosecutor generally asks the court to issue a search warrant within ten days of our commencing preparation meetings with the police.
Although the Court may issue a preliminary injunction, if petitioned to do so, the Court has ample discretion to determine the provisional measures it deems appropriate to each case. In addition, the petitioner must file a civil suit within a period specified by the Court, which is usually about one week. In the case of a provisional seizure for a monetary claim, the defendants may request that the Court order the plaintiff to post a bond, usually somewhere between one third to one half of the plaintiff's claim, to cover defendant's potential damages. However, in the case of provisional measures for a non-monetary claim, such as a claim for ceasing infringement, the court may request the plaintiff to post a bond for the full damages that may be suffered by the defendant. If the plaintiff loses the civil suit, it is liable for the defendant's actual damages, not limited solely to the bond posted. Damages could include injury to the corporate reputation.
Indictment and Trial
Following a raid, the Public Prosecutor's Office holds indictment hearings. These usually take three to six months, and consist of a series of four to five hearings. If an indictment is filed, there is another series of hearings for the criminal trial. This set of hearings usually lasts another three to six months. The trial process generally costs a similar amount, but varies with the complexity of the case and the defense.
With an indictment secured, we generally file an ancillary civil suit. One advantage of a piggy-back civil suit is that a plaintiff avoids the requirement to post court costs. The costs the plaintiff must post are generally a percentage of the damages or the value of the injunction claimed. These costs may be assessed at up to 4% of the value of the damages or injunction claimed, depending on various factors. Some non-binding cases based on infringement that have set precedent hold that the value of the injunction claim may be 20% of the paid-in capital of the infringing company. However, some judges tend to have the Trademark or Service mark and relevant factors evaluated by an appraiser to determine the value of such claim. The court costs operate as a strong incentive to not claim damages, and put the plaintiff in a civil suit at a financial risk.
Cease and Desist Letter - Negotiation for Settlement
For some infringers, the threat of criminal and civil liability is sufficient incentive to halt infringing activities and negotiate a settlement. The letter and negotiation approach can prove to be a cost-effective manner of stopping infringement, especially for retailers and small targets not meriting the effort of a law suit. A CD letter demands that infringers immediately stop the production and sale of any and all infringing goods, and deliver or destroy all infringing goods already produced and/or distributed.