{"id":136582,"date":"2026-04-08T12:45:22","date_gmt":"2026-04-08T12:45:22","guid":{"rendered":"https:\/\/my.legal500.com\/guides\/?post_type=comparative_guide&#038;p=136582"},"modified":"2026-04-09T09:28:08","modified_gmt":"2026-04-09T09:28:08","slug":"taiwan-trademark-disputes","status":"publish","type":"comparative_guide","link":"https:\/\/my.legal500.com\/guides\/chapter\/taiwan-trademark-disputes\/","title":{"rendered":"Taiwan: Trademark Disputes"},"content":{"rendered":"","protected":false},"template":"","class_list":["post-136582","comparative_guide","type-comparative_guide","status-publish","hentry","guides-trademark-disputes","jurisdictions-taiwan"],"acf":[],"appp":{"post_list":{"below_title":"<div class=\"guide-author-details\"><span class=\"guide-author\">Lee and Li, Attorneys-at-Law<\/span><span class=\"guide-author-logo\"><img src=\"https:\/\/my.legal500.com\/guides\/wp-content\/uploads\/sites\/1\/2019\/12\/Firm-Logo-1.jpg\"\/><\/span><\/div>"},"post_detail":{"above_title":"<div class=\"guide-author-details\"><span class=\"guide-author\">Lee and Li, Attorneys-at-Law<\/span><span class=\"guide-author-logo\"><img src=\"https:\/\/my.legal500.com\/guides\/wp-content\/uploads\/sites\/1\/2019\/12\/Firm-Logo-1.jpg\"\/><\/span><\/div>","below_title":"<span class=\"guide-intro\">This country specific Q&amp;A provides an overview of Trademark Disputes laws and regulations applicable in Taiwan<\/span><div class=\"guide-content\"><div class=\"filter\">\r\n\r\n\t\t\t\t<input type=\"text\" placeholder=\"Search questions and answers...\" class=\"filter-container__search-field\">\r\n\t\t\t<\/div>\r\n\r\n\t\t\t\r\n\r\n\r\n\t\t\t<ol class=\"custom-counter\">\r\n\r\n\t\t\t\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">To represent a client before Court in respect of a potential trademark infringement matter, do you require a Power of Attorney \u2013 and if so, what are the execution formalities required by your courts?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes, an original Power of Attorney is required to represent a client before a court. The Power of Attorney must be signed (especially for foreign companies) or sealed by both the client and the retained attorney. If the client is a company, in addition to affixing the company seal, its representative should also sign or affix seal to the Power of Attorney.<\/p>\n<p>If the Power of Attorney is signed outside Taiwan, additional requirements, such as notarization or legalization, may apply.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is it a requirement in your jurisdiction to send a cease and desist letter to a potential infringer before commencing proceedings for infringement? What are the consequences for a trademark owner who chooses not to send a pre-action letter?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Under Taiwan law, it is not mandatory to send a cease and-desist letter before commencing legal proceedings for trademark infringement, and there are no consequences for a trademark owner who chooses not to send a pre-action letter.<\/p>\n<p>The decision to send a cease and desist letter to a potential infringer depends on the nature of the infringement, whether the identity or contact information of the potential infringer can be ascertained and whether the potential infringer may be willing to negotiate or comply with the requests. Sending a cease-and-desist letter serves, among other purposes, to establish the point at which the potential infringer becomes aware of the infringement. At the latest, any infringing acts committed after receipt of the letter would be deemed intentional infringement.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, is there a risk that a pre-action letter could give rise to claim against the trademark owner for unjustified threats? What steps should a trademark owner take to ensure any cease and desist letter does not expose the trademark owner to any liability.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>A pre-action letter sent to any third party who is not a direct infringer could give rise to a claim against the trademark owner for making unjustified threats and may constitute a violation of Paragraph 1 of Article 25 of the Fair Trade Act, potentially resulting in administrative penalties.<\/p>\n<p>In order to avoid liability, it is advisable to follow Article 4 of the Fair Trade Commission&#8217;s Principles for Handling Cases Involving Warning Letters Issued by Enterprises for Infringement of Copyright, Trademark Right, or Patent Right by: (1) notifying the potentially infringing manufacturer, importer, or agent to request cessation of infringement prior to or simultaneously with sending the letter; and (2) specifying in the letter the clear content and scope of the trademark right, as well as the specific facts of the alleged infringement, such as when, where, and how the allegedly infringing product was manufactured, used, sold, or imported, so that the recipient is sufficiently informed of the possible infringement of the disputed rights.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is it mandatory for the parties to have attempted mediation or other alternative dispute resolution proceedings prior to commencing infringement proceedings? If so, what is the minimum expectation?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>No, the parties are generally not required to attempt mediation or other forms of alternative dispute resolution before initiating trademark infringement proceedings.<\/p>\n<p>However, if the circumstances specified in Paragraph 1, Article 403 of the Code of Civil Procedure apply, such as where the parties are spouses, direct relatives, collateral relatives within the fourth degree of kinship, relatives by marriage within the third degree of kinship, or have a parental or household relationship, and the amount or value in dispute is less than NT$500,000, then court mediation is required before filing a lawsuit.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Are claims for trademark infringements heard before a general commercial Court or a specialist Court focused on Intellectual Property disputes? Are trademark infringement claims decided by a judge or by a jury?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Civil cases involving trademark infringement at the first and second instances are subject to the exclusive jurisdiction of the Intellectual Property and Commercial Court (IPCC) pursuant to Article 9 of the Intellectual Property Case Adjudication Act (IPCAA). Civil cases at the third instance fall under the jurisdiction of the Supreme Court.<\/p>\n<p>Criminal cases involving trademark infringement at the first instance are under the jurisdiction of the district common courts pursuant to Article 54 of the IPCAA. Criminal cases at the second instance are subject to the exclusive jurisdiction of the IPCC pursuant to Article 3 of the Intellectual Property and Commercial Court Organization Act. Criminal cases at the third instance fall under the jurisdiction of the Supreme Court.<\/p>\n<p>In Taiwan, trademark infringement cases are decided by judge(s), not a jury.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is there a time limit for commencing trademark infringement proceedings once the facts giving rise to the infringement are known to the trademark owner. After how long would such a claim be time-barred? What action would a trade mark owner have to know to give rise to such a claim being time-barred (for example, is it knowing that a mark in question is in use or is it knowing that a trade mark application has been filed and\/or registered?)<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>To pursue criminal liability against a trademark infringer, the trademark owner must file a criminal complaint within six months from the date on which the owner became aware of the identity of the potential infringer, pursuant to Article 237 of the Code of Criminal Procedure. For civil damages, the trademark owner must file a civil action within two years from the date on which the owner became aware of the infringement and the person liable, and in any event within ten years from the date of the infringing act, pursuant to Paragraph 4, Article 69 of the Trademark Act.<\/p>\n<p>With respect to the point in time at which a trademark owner is deemed to have &#8220;become aware of the infringement,&#8221; the trademark owner must have knowledge not only of the damage suffered, but also that the conduct of a specific person constitutes an infringing act causing such damage. However, the trademark owner&#8217;s lack of knowledge as to the exact amount of damages does not affect the running of the statute of limitations.<\/p>\n<p>In cases of continuous trademark infringement, such as the sale of counterfeit goods, there is a judgment holding that the completion date of an infringement assessment report may serve as the point in time at which the trademark owner became aware of the actual cause and extent of the damage.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction does the law protect unregistered trademarks of any kind, including by way of passing off, unfair competition or protection of trade dress. What are the criteria for their subsistence?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>A trademark application\/registration that (1) is identical or similar to a well-known trademark and is likely to cause confusion or dilution of trademark distinctiveness, or (2) constitutes plagiarism, in bad faith, of an earlier used trademark in connection with goods\/services identical or similar to those on which the right holder has previously used the trademark, shall not be registered pursuant to Subparagraphs 11 and 12, Paragraph 1, Article 30 of the Trademark Act, respectively. For the application of the aforesaid provisions, the well-known trademark or prior-used trademark is not required to have obtained registration in Taiwan in order to receive such protection.<\/p>\n<p>Further, a well-known trademark without registration in Taiwan, as well as a well-known personal name, trade name, company name, product container, packaging, appearance, or other trade dress identifying another&#8217;s goods, business, or services, are protected under Subparagraphs 1 and 2, Paragraph 1, Article 22 of the Fair Trade Act. Where an infringer uses the right holder&#8217;s well-known trademark or trade dress on identical or similar goods or services, and such use is likely to cause confusion, the right holder may seek damages and request the cessation and prevention of the infringement.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction will the Court hear claims for registered trademark infringement in parallel with claims for passing off,unfair competition, infringement of trade dress or other misleading advertising, or does a claimant need to bring such claims in a separate cause of action?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes, it is acceptable to assert claims for trademark infringement together with claims for unfair competition, trade dress infringement, and\/or misleading advertising in a single lawsuit.<\/p>\n<p>While passing off is not a statutory term under Taiwan law, such tort is primarily governed by the Fair Trade Act. Where a party misrepresents its goods or services as those of another, causing consumer confusion and damaging the original brand owner&#8217;s goodwill, profits, or reputation, Taiwan courts and authorities typically scrutinize whether such actions constitute misleading advertising, infringement of famous trade dress, or other deceptive or obviously unfair conduct that adversely affects the trading order.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, do your Courts share jurisdiction with your Trade Mark Office, such that parties need to seek to seize the forum they prefer first in time, or does the Court take precedence and intervene to stay or transfer any live Registry proceedings (for example relating to invalidity or revocation of registered trade mark) which may overlap with an issued infringement claim and related counterclaim?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>In Taiwan, the courts and the Trade Mark Office do not share jurisdiction. For opposition, invalidation, or revocation proceedings, the applicant should file with the Taiwan Intellectual Property Office (TIPO). If dissatisfied with the decision of the TIPO, the applicant may file an appeal with the Ministry of Economic Affairs (MOEA). If still dissatisfied with the MOEA&#8217;s appeal decision, the applicant may initiate administrative litigation at the Intellectual Property and Commercial Court (IPCC). For decisions issued by the TIPO concerning the non-registrability of trademarks, the trademark applicant is also entitled to file an appeal with the MOEA and, if dissatisfied with the MOEA&#8217;S appeal decision, may further file administrative litigation with the IPCC.<\/p>\n<p>In civil and criminal cases involving trademark infringement, if a party asserts that there are grounds for invalidation or revocation of the trademark, the IPCC shall independently determine the merits of such assertion without suspending the proceedings in accordance with Articles 41 and 66 of the Intellectual Property Case Adjudication Act (IPCAA). However, the IPCC must notify the TIPO, and the TIPO shall inform the IPCC whether it has accepted a revocation or invalidation case or has rendered an administrative decision pursuant to Article 42 of the IPCAA. The IPCC may also seek relevant opinions from the TIPO pursuant to Article 44 of the IPCAA.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Where the defendant has a counterclaim for invalidity or cancellation of the registered trademark being asserted against it (either on the basis of earlier rights or as a result of non-use by the trademark proprietor), does the counterclaim become part of the infringement action, so that both issues are heard by the same Court within a single action, with the Court making a determination at its conclusion, or are the validity issues bifurcated and heard in separate parallel proceedings? If in your jurisdiction validity issues are bifurcated, what are the practical consequences of this from a timing perspective? For example, does this mean that a Court will stay the infringement claim and proceed with the validity attack first to avoid finding a trademark infringed, only to have a separate Court find the trademark invalid at a later date?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>If the defendant raises a counterclaim for invalidation or revocation of the registered trademark during civil trademark infringement litigation, the invalidity or revocation issues will form part of the same action and will be heard and decided by the same court. The court will not suspend the proceedings even if a separate invalidation action is initiated before the TIPO. It is not required to initiate separate or parallel proceedings before the TIPO for raising invalidity defense. That said, if the defendant not only raises the invalidity defense before the court but also initiates the invalidation action before the TIPO, the legal effect of the bifurcated mechanism is different. Only the parties to the litigation will be bound by the court&#8217;s decision on the invalidity defense, while everyone will be bound by a final and irrevocable TIPO decision on the invalidation action.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, does a defendant have a defence of using a mark honestly and concurrently available to them?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Pursuant to Subparagraph 4, Paragraph 1, Article 36 of the Trademark Act, a defendant is entitled to assert that it is not bound by the trademark right of the trademark at issue if: (1) prior to the filing date of the trademark at issue, the defendant had, in good faith, used an identical or similar mark on the same or similar goods or services; and (2) the defendant continues to use the mark within its original scope. However, the trademark owner is entitled to request that the defendant affix appropriate distinguishing indications.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">When considering the validity of a registered trade mark, does the Court consider whether the trade mark has been registered in bad faith? If so, what actions would indicate this bad faith?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Yes. The Court usually refers to the Examination Guidelines on &#8220;Likelihood of Confusion&#8221; issued by the Taiwan Intellectual Property Office to determine whether the registration of a trademark may cause relevant consumers to be confused, and to decide whether its registration should be cancelled. Whether a registered trademark was applied for in good faith is one of the factors mentioned in the Examination Guidelines on &#8220;Likelihood of Confusion&#8221; and is usually cited by the Court.<\/p>\n<p>Article 5.7 of the Examination Guidelines on &#8220;Likelihood of Confusion&#8221; provides that, for all trademark registration applications, it shall be presumed that the application is filed in good faith, unless the prior right holder submits evidence to the contrary. For example, such evidence may demonstrate that the trademark owner was aware of, or intended to cause, a likelihood of confusion among relevant consumers as to the source of the trademark when applying for trademark registration.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">If the main objective in commencing infringement proceedings is to secure an injunction, is a claimant required to state how much their claim is worth at the point their claim is issued?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>A claimant is not required to state the monetary worth of the claim at the time it is issued to secure a preliminary or final injunction.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is it possible to seek a preliminary injunction in your jurisdiction? If so, what is the criteria a trademark owner needs to establish and is there a bond or other undertaking in damages payable to compensate the defendant if the Court finds no infringement following a substantive hearing?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>It is possible to seek a preliminary injunction in Taiwan. A trademark owner can file a petition for preliminary injunction independent of the lawsuit, typically before initiating legal proceedings. To secure a preliminary injunction, the petitioner must &#8220;preliminarily show&#8221; the following reasons and necessity for relief:<\/p>\n<p>(a) likelihood of success on the merits of the case;<br \/>\n(b) whether the claimant would suffer irreparable harm in the absence of an injunction;<br \/>\n(c) balance of interests between both parties; and<br \/>\n(d) impact on public interest.<\/p>\n<p>The Court may ask the claimant to provide a security bond to compensate for deficiency of the evidence presented, and to secure the opposing party&#8217;s rights and interests.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Is a licensee (whether exclusive or non-exclusive) of a registered trademark entitled to commence proceedings for trademark infringement? Does the trademark proprietor need to be joined as a party to the proceedings, and does it have an effect whether the licensee is registered before the local Trademark Registry?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Unless otherwise prescribed in a licensing contract, an exclusive licensee is entitled, within the scope of the license, to commence infringement proceedings solely in its own name. A non-exclusive licensee can report trademark infringement to the prosecutors office or the police since criminal claims for trademark infringement are not prosecuted upon complaint in Taiwan. In either proceeding, the trademark proprietor need not be joined as a party.<\/p>\n<p>Regarding the effect of registration on the licensee, the Taiwan Trademark Act stipulates that the license cannot be asserted against third parties unless the license is duly registered in Taiwan. Due to the lack of clarity as to the legal effect of unregistered license under the Trademark Act, it is a controversial issue whether the &#8220;unregistered&#8221; licensee is really entitled to file civil litigation against trademark infringement or any other legal action. The Supreme Court and some district courts or high courts used to take the view that unregistered trademark or patent licensees are not entitled to file civil litigation against infringement. Furthermore, the Fair Trademark Commission (the authority in charge of the Fair Trade Act governing unfair competitions) prohibits unregistered licensees from dispatching cease and desist letters against infringers. Nonetheless, the Intellectual Property Court took different views and held in some civil trademark infringement cases that the trademark exclusive licensee, regardless of whether the license is registered in Taiwan, is entitled to file civil litigation against infringement.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Where the claim for trademark infringement is premised on similarity between the defendant\u2019s mark and the trademark owner\u2019s registered mark, does the proprietor need to demonstrate that confusion has occurred or simply that there is a risk of confusion? What is the minimum standard required to secure a finding of infringement?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>According to the Trademark Act, where a claim for trademark infringement is based on the similarity between the defendant&#8217;s mark and the trademark owner&#8217;s registered trademark, it is not necessary for the proprietor to demonstrate that actual confusion has occurred. Instead, it is sufficient to establish that there is a likelihood of confusion among relevant consumers.<\/p>\n<p>There is no prescribed minimum standard for a finding of trademark infringement; rather, the court will make its determination based on the specific circumstances of each case. In practice, the court generally considers the following eight factors to determine whether there is a likelihood of confusion:<\/p>\n<p>(1) the strength of the trademark distinctiveness;<br \/>\n(2) whether the trademarks are similar and the degree of such similarity;<br \/>\n(3) whether the goods\/services are similar and the degree of such similarity;<br \/>\n(4) the extent of the prior right holder&#8217;s business diversification;<br \/>\n(5) evidence of actual confusion;<br \/>\n(6) the degree of familiarity of relevant consumers with each trademark;<br \/>\n(7) whether the applicant applied for the trademark at issue in good faith; and<br \/>\n(8) other factors relevant to the likelihood of confusion.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction is it possible to rely on post-sale confusion as a means of securing a finding of trade mark infringement?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The Trademark Act does not expressly provide for the doctrine of post-sale confusion. However, several judgments in Taiwan have recognized the applicability of post-sale confusion in trademark infringement cases. The judgments held that a trademark serves not only to indicate the source of goods, but also embodies a function of quality assurance. Where goods bear an identical or highly similar trademark, other potential relevant consumers, even in the absence of purchase-related factors, may be unable to distinguish the differences between the goods, thereby leading to confusion or misidentification. Such confusion would undermine the trademark owner&#8217;s efforts to maintain the quality-assurance function of the mark and should therefore be considered as constituting trademark infringement.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction what type of disclosure or discovery is typically ordered by the Court in respect of trademark infringement actions from both parties?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The Taiwanese legal system does not provide a mechanism equivalent to &#8220;discovery&#8221; under the US legal system. A claimant bears the burden to prove its claims. Both parties may move for investigation on evidence in both civil and criminal trademark infringement cases. Instead of the US pre-trial discovery regime, the Court typically conducts preparatory proceedings before the opening of trial.<\/p>\n<p>During the preparatory proceedings of civil cases, the judge examines whether all required procedural formalities have been fulfilled. The parties then submit their respective arguments and may file motions to investigate evidence. The judge reviews these submissions and compiles a list of the disputed issues in the case. When the court deems the disputed fact material and a motion for production of documents just, it will issue a ruling requiring the opposing party to produce the documents.<\/p>\n<p>In criminal cases, the preparatory proceedings involve the judge compiling the substantive issues and the evidence presented by the parties. The judge also evaluates the admissibility of the evidence and decides whether to grant or deny any motions for investigation of evidence. The Court can issue pre-trial search and seizure orders against both parties.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">What type of expert evidence is permitted by the Court in your jurisdiction? Does the Court accept consumer surveys and are there specific rules about how consumer surveys are conducted. Do the parties need to request prior permission from the Court to adduce survey evidence?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The parties are allowed to submit various types of evidence, such as testimonies, consumer surveys, notarized webpages, etc., without the Court&#8217;s prior permission, though introducing expert witnesses does require the Court&#8217;s permission. In civil lawsuits, the parties may apply to the Court to seek permission to introduce expert witnesses to provide expert opinions in writing or orally during the trial.<\/p>\n<p>When evaluating consumer surveys, the Court generally considers factors such as the credibility of the survey institution, the details of the survey report (such as methodology, survey period, and the qualifications and skills of the survey personnel), and information that allows the Court to verify the evidence (such as original respondent data and original questionnaires). The Court has the discretion to evaluate the submitted evidence and decide whether to rely on it in its judgment.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Does evidence submitted by your client in trademark infringement proceedings have to be accompanied with a statement of truth or other similar declaration?  Which party is typically responsible for signing the statement of truth (or similar), the entity itself or the entity's representatives?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>In trademark infringement cases involving counterfeits, a trademark infringement assessment report prepared by the right holder, its exclusive licensee, or its authorized agent is generally required to be submitted to the court. If the report is not issued by the right holder, current practice requires that it be accompanied by a statement of assessment competence signed by the right holder or its representative.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction is it possible for a claimant to seek summary judgment and\/or strike out of an infringement claim? What are the legal criteria for a Court to grant summary judgment?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>If a summary judgment in Taiwan refers to the court rendering a ruling or judgment based solely on a review of the parties&#8217; written submissions without holding a hearing, a claimant may seek such judgment; however, this is only permitted under certain circumstances (for example, where the plaintiff has no standing or lacks the right to legal protection, or where the parties&#8217; arguments are manifestly without legal ground), since, in principle, a judgment should be based on the parties&#8217; oral arguments.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">How long does it typically take to reach judgment in a trademark infringement action from issue of the claim, through to first instance decision? What is the lower and upper range of legal costs for such an action?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>For a civil trademark infringement action in Taiwan, it typically takes about 10 to 12 months from initiating a lawsuit through to first instance decision. The duration for criminal and administrative trademark cases may vary, but they are generally within a similar range, subject to case complexity and procedural factors.<\/p>\n<p>In Taiwan, attorneys\u2019 fees are typically charged either based on the time spent or on a per-case basis, with costs varying significantly. Such fees largely depend on factors such as the number and complexity of claims, the volume of evidence presented, the length of the trial, and the number of hearings and witnesses involved. Regarding court fees, criminal cases do not incur court fees, while fees for civil cases are calculated based on the claimed amount in cases involving proprietary rights (around 1.1% of the claimed amount for the first instance; 1.5% for the second and the third instances). Therefore, it is not possible to provide a meaningful specific lower or upper range for fees.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Following a first instance decision, is it possible for either party to appeal the decision? What are the grounds upon which an appeal can be lodged? Is it necessary to request permission to appeal, or are appeals automatically permissible? If either party file an appeal, is the enforcement of the first instance decision stayed pending the outcome of the appeal?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Any party who disagrees with the first instance decision has the right to appeal to the second instance. An appeal must be filed within a strict timeframe of twenty days following the service of the first instance decision. Appeals are automatically allowed if all formal requirements\u2014such as submitting the reasons for the appeal and meeting the deadlines for filing both the appeal and its supporting documents\u2014are fulfilled; there is no need to request permission to appeal. A second-instance appellate court hearing a case \u201cde novo.\u201d The enforcement of the first instance decision is stayed pending the outcome of the final and irrevocable appeal.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">If the parties have been involved in a dispute before the local Trademark Office, what relevance does this have on later infringement proceedings? For example where trademark owner (A) may have already sought to oppose the registration of a third party (B\u2019s) mark in proceedings before the local Trade Mark Office, is the trademark owner estopped from seeking invalidity of a registered trade mark where its opposition failed where the invalidity action is based on the same grounds as the unsuccessful opposition?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>A dispute before the local Trademark Office has no binding effect on a subsequent infringement lawsuit in court. According to the Intellectual Property Case Adjudication Act, when a party asserts or defends that an intellectual property right should be cancelled or revoked, the court must decide the case based on its merits. If the court finds valid grounds for cancellation or revocation, the intellectual property right holder may not assert any rights against the opposing party in the civil action.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In your jurisdiction, does the Court consider both liability and quantum within the same proceeding, or will any damages be assessed after the Court has reached a decision on liability? How are damages for trademark infringement proceedings typically assessed in your jurisdiction?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>Both liability and the assessment of damages are generally determined by the Court in the same proceeding. It is possible that an interlocutory judgment be made for an independent claim regarding liability, and a final judgment be made with quantum being resolved at a later stage within the same trial proceeding.<\/p>\n<p>According to the Trademark Act, potential measures of damages for trademark infringement include:<\/p>\n<p>(1) The method provided in Article 216 of the Civil Code; the proprietor is entitled to demand damages based on the amount of the balance derived by subtracting the profit earned through using the trademark after infringement from the profit normally expected through using the same trademark, if no method of proof can be furnished to prove the damage suffered;<\/p>\n<p>(2) The profit earned by the infringer as a result of trademark infringement; if no proof on costs or necessary expenses can be furnished by the infringer, the total amount of income from selling the infringing products shall be presumed to be the amount of profit;<\/p>\n<p>(3) The amount not more than 1,500 times of the unit retail price of the infringing goods; if over 1,500 pieces of infringing goods were found, the amount of damages shall be a lump sum of the market value of the infringing goods; or<\/p>\n<p>(4) The equivalent amount of royalty that may be collected from using the trademark under licensing.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">In addition to an injunction and damages, what other remedies are available in your jurisdiction?<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The trademark owner may file a criminal complaint against an infringer for violations of the Trademark Act and seek a raid action. The owner can initiate a related civil action during trial proceedings after indictment, based on the facts found in the criminal prosecution and the seized counterfeits.<\/p>\n<p>For the civil action, in the event of claiming an injunction, the trademark right holder is entitled to demand the destruction of counterfeits and the materials or implements used in infringing the trademark. However, the court may order other dispositions as it considers necessary after taking into account the need for proportionality between the seriousness of the infringement and the interests of third parties.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Following a decision on the merits, is the winner entitled to recover all or a portion of its legal costs incurred in bringing or defending the proceedings. If legal costs are recoverable, what is the procedure involved and how does the Court assess the level of legal costs which should be reimbursed by the losing party.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>The costs of civil proceedings include court fees, travel expenses for witnesses, expert witness fees, and attorneys&#8217; fees incurred in the third instance (capped at TWD 500,000). Such costs are proportionally allocated and borne by the parties according to the extent to which they have won or lost the case; however, the court may adjust the fees to ensure fairness. Aside from the fees mentioned above, each party is responsible for their own attorneys&#8217; fees.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\t\t\t\t\t<li class=\"question-block filter-container__element\">\r\n\t\t\t\t\t\t<h3 class=\"filter-container__match-html\">Once the Court has issued a judgment, how long typically does the losing party have to comply with the Court\u2019s judgment including any final injunction issued? What are the consequences for failing to comply and how would the winning party seek enforcement of its judgement.<\/h3>\r\n\t\t\t\t\t\t<button id=\"show-me\">+<\/button>\r\n\t\t\t\t\t\t<div class=\"question_answer filter-container__match-html\" style=\"display:none;\"><p>After receiving a final judgment, the winning party may file for compulsory enforcement of the judgment with the district court in the location of the object to be enforced or the location where the enforcement action shall be carried out. The competent district court will then enforce the judgement against the losing party&#8217;s properties or set a deadline for the losing party to perform or assign a third party to perform specific act required by the judgment.<\/p>\n<p>If the losing party has no property or the amount derived from compulsory enforcement is insufficient to repay the losing party&#8217;s debts, the court will order the winning party to investigate and report the losing party&#8217;s property within one month. In case the winning party fails to report or reports that no property is found upon expiration of the period, the court will issue a certificate allowing enforcement to resume once the losing party&#8217;s assets are discovered. If the losing party violates court orders to perform or not to perform specific acts, they face surcharges of TWD 30,000 to 300,000. Continuing violations may result in further surcharges or custody. Additionally, the court may remove the consequences of non-compliance at the losing party&#8217;s expense. Any repeated violations can trigger enforecement action again, incurring further costs. The court may notify related authorities to provide appropriate assistance in performing or not performing specific acts.<\/p>\n<\/div>\r\n\r\n\r\n\t\t\t\t\t<\/li>\r\n\r\n\t\t\t\t\r\n<div class=\"word-count-hidden\" style=\"display:none;\">Estimated word count: <span class=\"word-count\">5209<\/span><\/div>\r\n\r\n\t\t\t<\/ol>\r\n\r\n<script type=\"text\/javascript\" src=\"\/wp-content\/themes\/twentyseventeen\/src\/jquery\/components\/filter-guides.js\" async><\/script><\/div>"}},"_links":{"self":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/comparative_guide\/136582","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/comparative_guide"}],"about":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/types\/comparative_guide"}],"wp:attachment":[{"href":"https:\/\/my.legal500.com\/guides\/wp-json\/wp\/v2\/media?parent=136582"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}