Grace Shao, a Baker McKenzie partner in Taipei, offers her advice for local and overseas companies
Q: What are the main IP challenges that local and overseas companies face in the Taiwan market?
A: Well, IP protection in Taiwan is quite effective, but there are concerns about a few issues. For foreign companies, sometimes they don’t know to file trademark or patent registrations in Taiwan because it is not part of the international convention. However, foreign companies can be protected if they are WTO members.
The first thing worth reminding companies is that if you don’t have registration in Taiwan, it would be difficult to enforce your rights. For IP enforcement, anti-counterfeiting work is quite effective. However, there are some issues with more complicated civil cases, such as patent infringement, trade secrets, computer programme-related copyright infringement, etc. Therefore, there is a new law in Taiwan, passed earlier this year, the IP Case Adjudication Act, which will deal with all these issues to improve efficiency and ease the burden to prove infringement.
Q: What more can you tell us about this IP Case Adjudication Act?
A: It is an adjudication act, which revises the Civil Procedure Act and gives more weapons to judges. In Taiwan, we don’t have a discovery system, so it’s difficult for rights owners to prove infringement and to collect evidence. This law will give the authority to the judge to hire a third party, neutral technical examiners who can help the court to collect evidence from the venue of the defendant or a third party. Secondly, there is a requirement under the law saying that if you are a defendant, you cannot deny everything that plaintiffs say. You must have a concrete response to defend your case. If there is no such defence, then the judge can consider the allegation by the plaintiffs to be true. I think this is to try to ease the burden of proof and resolve the delay of cases in Taiwan.
Q: How do companies stay ahead of the curve and take advantage of the improved efficiency?
A: I think the best advice is to hire a good professional lawyer because, under the law for complicated cases, it is compulsory to be represented by attorneys. This is different from the past.
Secondly, under the new act, these complicated cases, or trademark cases over a certain amount, will need to be heard exclusively by the IP and Commercial Court in Taiwan. Although we have had the IP and Commercial Court since 2008, it was not exclusive. But now the law specifically says it has exclusive jurisdiction over all these civil matters. In IP infringement, there are still criminal cases. The first instance will also be heard by the general court, except for certain trade secret cases.
Although there are weapons to collect evidence, I advise to still plan and have a good strategy to utilise all the systems available to you. On the other hand, there will also be more risks if you are the defendant company. So, you must be very careful in your docketing, filing and never try to steal anything from others. For example, trade secrets are very sensitive in Taiwan and there is an entity liability for trade secret infringements.
Q: If you were to offer one simple advice to companies to boost their capacity for IP defence, what would it be?
A: If there is one thing that I would suggest a company to consider, it is to view IP strategy as part of their business decisions, as investments, and try to make the best use of IP, not consider it separate from the business. Because if you want to save costs and don’t want to file IPs, then your protection will be very limited.
Given the new development of technology, the filings or protection is not siloed, but interconnected. Some IPs can be protected as patents and trade secrets; trademarks can also be protected by design or copyright. So, I would suggest a company to rethink its whole IP strategy and really investigate it because it will be the future.
Also, in my experience – and I see already especially this year in the International Trademark Association – many companies, even when they are selling traditional products, are already restructuring their IP teams to catch up with the development, be more agile in their strategy to face-to-face with customers, and to effectively combat piracy.
For example, they have not only a trademarks department, but also include the patents department to consider, for example, design patents, and a department to deal with online piracy, online enforcement and domain names. These are all very important, and companies can consider adopting a new strategy and a new structure for IP strategy.
