One important distinction is that Taiwan’s IP police has only one mission, to address IP crimes. While other jurisdictions have law enforcement teams that handle IP-related matters, those officials often have a broader mission that involve covering other issues such as economic crimes or fraud. When charged with dealing a wider range of activities, IP infringement may get less attention than rights holders would like.
“For departments that have limited budgets and officials that aren’t pure IP enforcers, they naturally may have priorities that pull them in other directions,” notes Dan Plane of Simone IP Services in Hong Kong. He contrasts Taiwan’s IP police to their counterparts in mainland China, where the officials that handle IP cases are also responsible for other economic crimes as well.
Plane previously served as in-house counsel for LVMH and was involved in handling counterfeiting cases in Taiwan.
One common complaint about enforcement in China is that the consequences of IP infringement are relatively low. Though the last revision of the Trademark Law increased damages and is considered by many rights holders to be a positive development, there are some that would like to see bigger changes.
Taiwan on the other hand offers an interesting contrast, as it treats most forms of trade mark infringement as criminal matters.
“Unless things have changed drastically since I was there, the trade mark law in Taiwan is criminalised, which means that if you make even one counterfeit watch and you get raided, you have a criminal record,” says Kevyn Kennedy of CBI Consulting in Shanghai. “The flip side is that there’s a lot more paperwork, as the rule of law is stronger there and you always have to get a warrant to do a raid.”
Kennedy estimates that in his current practice in China, he is involved in a raid almost every day, while in Taiwan, it was much less often, in the range of one action a week.
Mainland officials appear to be aware of the steps that Taiwan and other jurisdictions have taken to improve IP protection. Plane says that the last year’s revisions to the Trademark Law, which came into effect last May, are a good example.
“It is clear that some parts of the new PRC Trademark Law are influenced by Taiwanese law,” he explains. “For example, the new provisions dealing with bad faith applicants who have a prior business relationship with the owner of the mark and thus a clear knowledge of their marks contain language similar to the Taiwan law.”
“It remains to be seen, but the hope is that the PRC officials will apply those provisions as broadly as they have been applied in Taiwan.”
Kennedy says that he expects that IP protection in China will improve, much in the way that it did in Taiwan, though it will take more than legal changes and stronger enforcement.
“Enforcement actions did not put an end to the roadside counterfeit vendors on their own,” he explains. “The demand for fake goods has to go down - that’s what happened in Taiwan, as consumers got more sophisticated, started traveling abroad more and shopping there and didn’t want counterfeits anymore.”
For more about Taiwan’s IP enforcement, please see Managing IP’s interview with captain Wei-Hsu Chen of the Taiwan IP Police.
