MEASURES FOR CROSS-STRAIT TRADEMARK DISPUTES.

        Cross-strait business transactions have been more and more common these days. Intellectual property rights-related disputes have also increased rapidly. Counterfeits and well-known trademark or product origin squatting are rampant in China. However, because right holders are unfamiliar with the laws and practices in China, it has been hard for them to seek reliefs. The Intellectual Property Office held a Seminar on Trademark-related laws and practices in China on July 20, 2010, inviting experts to share applications of relevant laws and examples on unfair competition, administrative punishment and border protection measures with respect to counterfeits and squatting-related issues in China.

        With respect to trademark squatting, senior counsel at Lee and Li Attorneys at law, Yang Shi-bing, indicated that to resolve squatting issues in China, an agency-distribution relationship between the right holder and the squatter must be proven first. Otherwise, it must be proven that the squatted trademark is well-known, and that it is a fact that the squatted trademark has been used in China. However, the most common case in trademark squatting is that the squatted trademark has not been used in China. Therefore, it is better to provide promotional and marking-related evidence. For example, due to frequent travels of visitors from China to Taiwan, it may be beneficial to set booths and advertising billboards in Taoyuan or Songshan airport to let the evidence of use or related information in Taiwan to be conveyed to China or to establish a connection to allow the Chinese government to determine the effect of the evidence.

        With respect to copied well-known products, managing partner at Chien-Yeh and Associates, Lai Wen-Pin, indicated that when names, packaging, and decoration special to well-known products are copied in a way that purchasers are mistaken the copied products as the well-known ones, or when well-known trademarks are deliberately attached by others to use as company names to generate confusion in the market, an unfair competition occurs. Thus, the right holder can file a lawsuit to stop the infringement act or claim damages. For example, well-known names in Taiwan, such as Tai-sun “Jelly Drink,＂ “Mixed-bean Congee,＂ have been completely copied by merchants in China with respect to their packaging and texts. Fortunately, justice was served on these cases.

        Additionally, senior partner at Lee, Tsai & Partner, Jaclyn Tsai, indicated that when registered trademarks are infringed, right holders can file a complaint at the responsible department of State Administration for Industry & Commerce in addition to filing a lawsuit at the people＇s court. If the infringing act, such as counterfeiting, is obvious, meaning one can tell right away that a product is a counterfeit, then it is recommended that the right holder goes through the administrative punishment procedures, or criminal procedures (for cases where identical trademarks are used on identical products).

         Because police force is involved in such procedures, it can impose a more deterrent effect on the infringer. However, if the counterfeit is in doubt, or if there are other disputes between the registered trademark right holder and the person making the counterfeit, then it is recommended that the right holder goes through litigation at the people＇s court to enforce his/her right. Also, with respect to border production measures, China adopts a filing system where the trademark right holder must make a recordation on file, and then the custom can initiate the border production measure ex officio.

        Furthermore, manager of Legal Council Office at TIPO, Shi Bo-jian, reminded the public that signing the Cross-strait IPR protection agreement is not the solution to everything. Intellectual property right is a private right and is protected by territory. Therefore, if the intellectual property right is squatted, counterfeited, or pirated in China, the right holder must follow the relevant laws in China to seek relief. However, if the right holder encounters difficulty in seeking relief, such as the right holder is discriminated in the case, then the government will assist the right holder in resolving the problem through the cooperation mechanism.

        Last but not least, Chief Secretary of TIPO, Hong Su-ming, indicated that with respect to the difference in the trademark systems between Taiwan and China, signing the Cross-strait IPR protection agreement is the first step to establish a framework and outline of common grounds. Details are yet to be planned and enforced. It is TIPO＇s goal to place the legal aspect and examination basis of the cross-strait examinations at the same level.

         TIPO has collected those deemed as exemplary well-known trademark cases and made them into CDs as reference for the Chinese government in hope of preventing trademark infringements. However, the Chinese government indicated that in addition to the numerous cases yet to be examined, it is a challenge to prevent infringements because the law does not stipulate well-known trademark as a preliminary rejection. With respect to the merchants  recommendation to TIPO to provide evidence for well-known trademarks, there is  no solution at this point because whether a trademark is well-known or not is determined on an individual basis in most countries. It is difficult to ask the government to provide evidence for well-known trademarks in both legal and practical aspects. China has already abolished the system for applying well-known trademarks and returned to the system where the trademark is determined on an individual basis to follow the international trend.