TRADE RELATED INTELLECTUAL PROPERTY REGIME
VII. TRADE RELATED INTELLECTUAL PROPERTY REGIME
182. Some members of the Working Party noted that in recent years, Chinese Taipei had introduced a number of improvements to the protection of intellectual property rights and that Chinese Taipei was apparently ready to assume in full the obligations set out in the WTO Agreement on TRIPS. In their view the problems faced by Chinese Taipei in this area related to enforcement rather than to the intellectual property rights legislation itself. Information was requested with regard to the entry into force of the Patent Law, the Trademark Law, the Integrated Circuit Protection Law and the Industrial Design Law. Information was also requested on the existence of bilateral agreements, the border measures to combat counterfeiting, the procedures applicable to the infringement of intellectual property rights, the protection accorded to pharmaceutical inventions, the protection accorded to geographical indications and to appellations of origin for wines and spirits.
183. In response, the representative of Chinese Taipei said that the Action Plan to Comprehensively Protect Intellectual Property Rights approved on 29 June 1993 had set out the following eight directions for efforts to strengthen the protection of intellectual property rights: (i) improving the relevant legal framework; (ii) strengthening the relevant administrative organization; (iii) enhancing the enforcement of the relevant laws and regulations; (iv) increasing education and promotion; (v) increasing the capability to negotiate with other economies; (vi) strengthening investigation and research capabilities; (vii) providing adjustment assistance to the industries concerned; and (viii) monitoring the implementation of the plan. Some members of the Working Party responded that they had noted continued high levels of piracy of computer software in Chinese Taipei and export of pirated software embodied in semiconductors. Members of the Working Party expressed concern regarding the failure to impose penalties, in particular administrative penalties and seizure of infringing product and machinery predominately used to produce such products, sufficient to deter piracy.
184. The representative of Chinese Taipei stated that in January 1999 Chinese Taipei had established the Intellectual Property Office whose responsibility was exclusively for dealing with intellectual property matters.
Copyright and related rights
185. Concerning copyrights, the representative of Chinese Taipei noted that according to Article 4 of the Copyright Law, copyrights of economies or territories which have established reciprocity with Chinese Taipei were protected by Chinese Taipei. Protection also extended to foreign works published for the first time in the territory of Chinese Taipei, or foreign works which were published in Chinese Taipei within thirty days of their first publication in territories outside of Chinese Taipei. Chinese Taipei had revised the Copyright Law to meet the requirements of TRIPS. The main revision includes: (a) amending the definitions for public broadcast and public performance; (b) giving explicit protection for performers' performance; (c) deleting provisions concerning compulsory licenses for translation; and (d) affording a life-plus-50-years or 50 years term of retroactive protection in consistency with the obligation under Article 18 of the Berne Convention. The Amendment had been promulgated since 21 January 1998, and effective since 23 January 1998, except the retroactive protection provisions which would not take effect until Chinese Taipei's accession to the WTO.
186. In response to a question concerning Chinese Taipei's current protection for computer programs, the representative of Chinese Taipei stated that computer programs had been protectable since 1985 under the Copyright Law. The protection term was 50 years.
187. The representative of Chinese Taipei committed that Chinese Taipei would amend relevant Articles to protect computer programs as literary works and to extend the term of protection to life plus 50 years or 50 years from date of publication. The Working Party took note of these commitments.
188. The representative of Chinese Taipei stated that in his opinion, the Copyright Law was in conformity with the Berne Convention and the TRIPS Agreement. He provided details of the Copyright Law provisions to the Working Party. He said that Chinese Taipei had promulgated one Act and eight implementing regulations: Copyright Intermediary Organization Act; The Illustrated Contents of Each Kind of Works in Paragraph 1 of Article 5 of the Copyright Law; The Certain Amount in Item 2 and 3 of Paragraph 1 of Article 87bis of the Copyright Law; Regulations Governing Application for Approval of Compulsory License of Musical Works and Royalties for Use Thereof; Standards for Compensation for Fair Use of Works in Paragraph 4, Article 47 of Copyright Law; Regulations Governing Registration of Plate Rights; Implementation Regulations for Suspension of Release of Goods Infringing on Copyright or Plate Right by Customs Authorities; Regulations of Copyright Dispute Mediation; Organic Charter of the Copyright Examination and Mediation Committee of the IPO, MOEA.
189. In response to the assertion by some members of the Working Party that Chinese Taipei did not appear to protect against the transmission of infringing copyright material on its cable television network, the representative of Chinese Taipei indicated that the Government Information Office (GIO) had determined that a priority target was a crackdown on illegal cable television networks that transmitted illegal copyrighted television programmes without authorization. In the event of such a transmission being made, the GIO severed the cable connection of the broadcaster and referred the matter to the prosecuting authorities. After the Cable TV Law had been promulgated in 1993, the GIO had the authority to impose fines on those cable TV networks which transmitted copyrighted televisions programmes without authorization, and refer cases to the prosecuting authorities.
190. The representative of Chinese Taipei also noted that a bilateral agreement on protection of copyright with the United States had taken effect on 16 July 1993 and had been reinforced by a bilateral agreement regarding reciprocal treatment on the priority rights of trademarks and patents of 10 April 1996. In his view, the agreement in some cases gave a higher standard of protection than the Berne Convention. The text of this agreement was made available to the Working Party as well as the Agreement Concerning the Protection and Enforcement of Rights in Audiovisual Works between the Coordination Council for North American Affairs and the American Institute in Taiwan. The representative of Chinese Taipei welcomed any opportunity of entering into bilateral agreements on the enforcement and recognition of intellectual property rights with its other trading partners.
191. In this connection, the representative of Chinese Taipei noted that Article 4 of the Copyright Law provided that copyright protection for works created outside Chinese Taipei could be granted on the basis of reciprocity. The reciprocity required for granting protection to foreign copyrights could be established by way of (i) a treaty or agreement, (ii) unilateral action by other economies through their laws, regulations, or other legal instruments which provide protection to Chinese Taipei's copyrights, or (iii) customary practices. Chinese Taipei was willing to discuss with interested parties to find a mutually accepted way to establish such reciprocity. In addition to the reciprocity established with the United States, Chinese Taipei had decided to protect works originating in the United Kingdom; Hong Kong, China; New Zealand; Macao, China; and Switzerland through unilateral administrative action following those five economies actions protecting works of Chinese Taipei origin.
192. In response to questions, the representative of Chinese Taipei stated that Article 37(7) of the Trademark Law was applied to provide protection for well known foreign marks in accordance with Article 6 bis of the Paris Convention, i.e. even when the goods were not similar to the goods in respect of which a trademark was registered.
193. In response to further questions concerning the Trademark Law and the statement by a member of the Working Party that Chinese Taipei's Intellectual Property Office applied the standards for trademark registration in a manner that was not consistent with the requirements of the TRIPS Agreement, the representative of Chinese Taipei provided details of the system of protection and the respective time limits which, in his opinion, were basically consistent with the TRIPS Agreement. He stated that the Intellectual Property Office had recently adopted several measures to facilitate the examination process and to maintain consistency. Statistics revealed that in Chinese Taipei applications for trademark registration filed by foreign applicants had a consistently high approval rate. Concerning the question of geographic denominations of origins, he confirmed that the Trademark Law did not deal with geographic denominations of origin. However, if an application for a trademark was made and the trademark could cause confusion as to the geographic origin of the marked goods, the application could be rejected. If appellations of origin were used as trademarks their use would violate Article 37 of the Law.
194. The representative of Chinese Taipei said that the Trademark Law, Articles 4, 5, 23, 25, 34, 37 and 61 had been amended to achieve:
(i) to broaden the scope of reciprocal granting of the right of priority to cover the situation where there was no formal agreement but the right of priority was granted to Chinese Taipei's owner of trademark through practice;
(ii) to include a combination of colours in the group of items that were capable of constituting a trademark so as to be consistent with Article 15 of the TRIPS Agreement; and
(iii) to extend administrative protection to well known marks by providing that no applications may be filed for registration of a trademark design which was identical with or similar to another person's well-known trademark or mark and likely to cause the public to form a mistaken belief. This amendment had been passed in April 1997 and has come into force on 1 November 1998.
195. On geographic indications, he noted that currently, the Trademark Law did not have specific provisions for the protection of geographic indications and appellations of origin for wines and spirits. However, as a general rule, if a manufacturer's use of geographic indications as trademarks caused confusion to the general consumers as to the geographical origin of the product concerned, the Intellectual Property Office could on its initiative or upon petition by interested parties turn down the application of trademark registration or cancel the existing registration, as the case may be, according to Article 37, sub-paragraph 6 of the Trademark Law. If appellations of origin were used as trademarks, there would be a violation of Article 37, sub-paragraph 10 regarding indications of origin. The relevant trademark application would be turned down or the registration would be cancelled. Chinese Taipei believed that the above protection should meet the requirement for the protection of geographical indications and appellations of origin contemplated in the WTO TRIPS Agreement.
196. Concerning patents, the representative of Chinese Taipei noted that under paragraph 1 of Article 42 of the 1986 Patent Law, a patent holder had the exclusive right to make, sell, or use his invention. Therefore, a product patent gave protection to the product no matter which process was used in the manufacturing of the product. Paragraph 2 of the same Article provided that if the patented invention was a process, the patent protection extended to the product using the process in the manufacturing. However, if the product was subject to another party's patent, the use of the process invention required the consent of that other party. The above rules applied to all inventions, including pharmaceutical inventions. The Patent Law, (as amended in 1994) provided statutory bars to an invention patent in Article 21. Article 56 of the amended Patent Law conferred on the patentee of a patented article and patented manufacturing process the exclusive rights to manufacture, sell, use or import. Article 80 stipulates that where the product manufactured in accordance with a patented manufacturing process was under a product patent granted to others, the owner of such process patent would not put his process invention into practice without the consent of the product patentee.
197. In response to questions concerning whether pharmaceutical inventions could be the subject of a product patent giving protection to the product independently of the process with which it had been manufactured, the representative of Chinese Taipei said that a patent was granted on the invention, regardless of which process was used in the manufacture of the goods. He said that the examining authority could grant extensions of the time limits for the submission of supplementary information supporting a patent application.
198. He added that the 1994 Patent Law, Articles 21, 51, 56, 57, 78, 79, 80, 82, 88, 91, 105, 109, 117 and 122 had been amended to achieve the following objectives:
(i) to delete the requirement of reciprocity in respect of the granting of patents for micro-organisms, extension of patent protection terms and the granting of exclusive import rights so as to be consistent with Articles 3 and 4 of the TRIPS Agreement;
(ii) to limit compulsory licensing in respect of semi-conductor technology to public non-commercial use or to remedying anti-competitive practice, so as to be consistent with Article 31(c) of the TRIPS Agreement;
(iii) to provide patent owners and his/her exclusive licensees the right to request destruction or other necessary disposition of the infringing goods, raw materials or instruments used, in connection with the infringement, so as to meet the requirement of Article 46 of the TRIPS Agreement which calls for giving the judicial authority to order disposition outside the channels of commerce;
(iv) to provide for shifting the burden of proof in respect of process patents as required by Article 34 of the TRIPS Agreement; and
(v) to provide for longer term of protection for industrial design, so as to meet the minimum requirement of 10 years of the TRIPS Agreement.
These amendments had been passed in April 1997 and would enter into force at the time of accession. Chinese Taipei also committed to amend Article 134 of the Patent Law so that upon accession patents issued prior to January 1994 that were still in effect would have a term of protection of 20 years and 12 years as from the date of filing for the invention patents and new design patents respectively. The Working Party took note of these commitments.
Protection of undisclosed information
199. In response to questions concerning whether Chinese Taipei protected trade secrets, the representative of Chinese Taipei said that the Trade Secrets Law was promulgated on 17 January 1996. He assured the Working Party that the protection of trade secrets would conform with the requirements of the TRIPS Agreement.
200. Concerning enforcement of intellectual property laws, the representative of Chinese Taipei noted that in addition to the administrative measures to be taken by the Intellectual Property Office, the Fair Trade Law and the Commodity Labelling Law also provided for the protection of intellectual property. Article 21(1) of the Fair Trade Law provided that enterprises (i.e. firms or individuals engaging in trade) could not make any false or misleading marking of place of origin or manufacturing or distribute, export or import goods bearing such marking. Violators could be fined up to one million NT Dollars. The fine had been raised to NT$25 million as a result of the amended Fair Trade Law which had been promulgated on 3 February 1999. Under the Commodity Labelling Law, importers and manufacturers were required to include information relating to the name and address of the manufacturer on product labels. An offender found guilty of violating this law and failing to rectify the impropriety within a prescribed time-limit would be punished by a fine of 5,000 to 50,000 yuan (equivalent to NT$15,000 to NT$150,000). In the case of grievous offence, the violator may also be subject to such disciplinary action as suspension or cessation of business operations. In addition, persons using false designations could be liable under Article 339 of the Criminal Code as having committed the offence of forgery.
201. Concerning the enforcement of intellectual property rights, the representative of Chinese Taipei said that Chinese Taipei provided training concerning intellectual property rights (intellectual property rights) to judges, prosecutors and other law enforcement officials. Newly appointed judges and prosecutors could not practice until they had completed an eighteen month training programme which included an introduction to intellectual property rights. Additional training was provided to incumbent public prosecutors. Chinese Taipei had also taken steps to co-ordinate the relevant agencies in the enforcement of intellectual property rights. The Public Prosecutors' Office attached to the Chinese Taipei High Court had conducted five seminars since 1 July 1992 for representatives from government agencies including Customs, the Government Information Office (GIO), the Board of Foreign Trade (BOFT), and the Police Administration. Specific public prosecutors had been appointed to deal with intellectual property rights infringement cases. Public prosecutors were directed to handle intellectual property rights complaints expeditiously and to press for harsh sentences whenever the circumstances warranted. Judgements which appeared not to have a deterrent effect would be appealed to the High Court. All prosecutors were directed that the discretion to commute prison terms to fines should be exercised very carefully in intellectual property rights cases.
202. To facilitate the investigation of intellectual property rights infringement cases, on 31 March 1993, the Public Prosecutor's Office had integrated all intellectual property rights agencies to form a task force. In a letter of 20 August 1996, all prosecutors had been directed to investigate cases where Chinese Taipei residents infringed copyrights in the PRC. If the result of the investigation met the requirements under Article 251 of the Criminal Procedure Code, prosecutors should prosecute the case. Article 100 of the Copyright Law provided that a prosecutor could initiate an investigation and issue an indictment in the absence of a complaint. If a complaint had initiated the investigation, Article 100 also provided that the prosecutor could continue with the investigation or prosecution even if the injured party withdrew the complaint. When a search warrant and the seizure of goods was considered appropriate, prosecutors were required to proceed promptly. In addition to the Copyright Law, all prosecutors had been directed that the discretion to not prosecute a case under the Criminal Code should be exercised very carefully in intellectual property rights criminal cases. Judges had also been encouraged to impose the heaviest penalties possible on intellectual property rights infringers, and special intellectual property rights divisions had been established in District Courts. Specific prosecutors had been designated to deal with intellectual property rights cases. The Public Prosecutors' Office attached to the Chinese Taipei High Court had conducted several on-the-job seminars since 1 July 1992 for new and current prosecutors. The government would continue to hold educational seminars and courses for new and current prosecutors and judges on a regular basis to keep them informed of the new developments relating to intellectual property rights issues.
203. To further deter the export of counterfeit computer software, the Board of Foreign Trade of the Ministry of Economic Affairs promulgated the Guidelines for Handling Cases Where the Export of Products related to Computer Programs was Suspected of Copyright Infringement in 1996. In this connection, the representative of Chinese Taipei noted that in November 1992, export licensing requirements were introduced for the following products in order to control the export of infringing goods:
8473.30.10.00 Computer PC board (only PC boards with semiconductor chips and computer software within the chip); 8473.30.10.00 Printer PC board (only PC boards with semiconductor chips containing computer software); 9504.10.00.10 Television video game PC boards with semiconductor chips containing computer software; 9504.10.00.10 Video games of a kind used with a television receiver; 9504.90.90.00 Other articles for funfairs, table or parlour games (palmtop electronic games containing computer software); 9504.90.90.00 Other articles for funfairs, table or parlour games (cassettes for palmtop electronic games); 9504.10.00.20 Cassettes for television video games; 8471.20.00.00 Digital automatic data processing machines (containing in the same hosing at least a CPU and output unit, whether combined or not); 84184.108.40.206 Dot matrix printer; 84220.127.116.11 Laser printer; 8418.104.22.168 Daisy printer; 8422.214.171.124 Other printer; 8524.90.30.00 Recorded data processing system magnetic disks (only disks containing computer software); 8524.11.90.00 Other digital integrated circuits (used in computers, printers or TV video games and containing chips with computer software); 8542.19.90.00 Other monolithic integrated circuits (used in computers, printers or TV video games and containing chips with computer software); 8542.20.00.00 Mixed integrated circuits (used in computers, printers or TV video games and containing chips with computer software); 85126.96.36.199 Other integrated circuits and micro assemblies (used in computers, printers or TV video games containing chips with computer software).
204. He noted that the export licensing requirements on the above computer-related products were eliminated on 15 July 1998. Since that date (and pursuant to a memorandum of understanding signed with the United States) the Customs had been delegated to examine packages of software consigned for export, to determine whether they conformed to the export permit, invoice and packaging list or other export documents. The examinations were carried out at random with 30-50 per cent of such exports being examined. All exports of an exporter who had been previously found to have exported intellectual property rights infringing products were subject to inspection, whether or not these exports were described as computer software. All exports suspected of being counterfeit were seized, unless the exporter could provide evidence to offset such suspicion. The seized products would be confiscated when the intellectual property rights right-holder obtained a final judgment from the Courts confirming that the products were infringing intellectual property rights. Public Prosecutors were required to prosecute forgers of documents including documents which were used to support the exportation of intellectual property rights infringing products. In response to further questions, the representative of Chinese Taipei noted that CD, VCD, CD-ROM and DVD manufacturers in Chinese Taipei were required to inscribe the source identification code (SID) on all CDs, VCDs, CD-ROMs and DVDs manufactured. This measure was aimed to further deter the circulation of pirated CDs, VCDs, CD-ROMs and DVDs. Concerning patents and trademark infringements, the representative of Chinese Taipei stated that the Anti-Counterfeiting Committee (ACC) under the Ministry of Economic Affairs worked closely with the Customs and the Prosecutors Office. The ACC had been designated as the coordination agency to assist the effective operation of the export monitoring system. The ACC was responsible for the enforcement of anti-counterfeiting efforts involving trademark, patents and copyright. The ACC directed the work of the intellectual property rights Enforcement Supervisory Task Force since July 1989. The ACC was empowered to refer suspected counterfeiting cases directly to the Courts for prosecution. Following conviction, the ACC could request the BOFT to impose punitive measures according to the degree of seriousness of the offence. The BOFT could refuse to issue export permits for a period of one year to the companies concerned. He added that the inspection by the Customs emphasized the examination of the product name, brand names, qualities, specifications, product serial numbers, model numbers, countries of manufacture, net weights etc. Trademark holders with sufficient information could file a petition to the Court for the provisional attachment of the counterfeit goods or inform the prosecutor. The Customs could only seize the goods when informed by the Court or the trademark authority. If Customs suspicions were aroused concerning the export of certain goods, it would refer the matter to the ACC. There was no such mechanism to deal with imported goods. He also stated that consultations with the United States on the protection for pharmaceuticals had been concluded. On 7 July 1993, the Department of Health had issued revised public notices regarding safety monitoring which applied to all pharmaceuticals regardless of their origin.
205. In reply to questions concerning border measures and the seizure by the Customs of infringing products, the representative of Chinese Taipei indicated that in relation to patented goods, it was necessary for the right holders to obtain a Court order before any seizure could be made by the Customs. All infringements of intellectual property rights had to be dealt with in the same manner as patent rights. The only exception was Article 90 bis of the Copyright Law, which provided that right-holders upon the posting of an appropriate bond could petition the Customs to seize imports reasonably suspected to be infringing copies. The goods would be confiscated upon a Court judgment confirming the infringement. In response to questions concerning the seizure of parts imported into Chinese Taipei for the purpose of being assembled into infringing goods which would be exported to a third country, the representative of Chinese Taipei replied that Chinese Taipei had never encountered such a situation, but the goods could be seized if a Court order was obtained.
206. Some members of the Working Party asked whether any additional measures were planned in order to combat the infringement of intellectual property rights, taking into account that existing measures did not appear to be having a sufficient deterrent effect on certain commercial scale counterfeiting operations, such as watches. Some members also noted the continued high levels of piracy of computer software embodied in semi-conductors. These members expressed concern regarding the failure to impose penalties, in particular administrative penalties and seizure of infringing products and machinery used to produce such products, sufficient to deter piracy. The representative of Chinese Taipei replied that Chinese Taipei had issued an Action Plan for Enforcement and Protection of Intellectual Property Rights. The Action Plan laid down a framework for the improvement of intellectual property protection, including the upgrading of the standards of protection, the application of stiff administrative measures, the strengthening of judicial enforcement and the education of the general public to respect intellectual property rights. An inter-agency Task Force had been established to co-ordinate and supervise the enforcement of intellectual property rights. Chinese Taipei was determined to enjoy a reputation as a territory that respected intellectual property rights.
207. The representative of Chinese Taipei noted that efforts to ensure fully conformity with the Agreement on TRIPS were ongoing. Amendments to the Trademark Law passed in April 1997 had entered into force on 1 November 1998. The amendments to the Patent Law passed in April 1997 would enter into force upon accession. The draft frameworks for the Integrated Circuits Layout Protection Law had been promulgated on 11 August 1995 and entered into force on 11 February 1996. Some members of the Working Party expressed their appreciation to the representative of Chinese Taipei for the information on efforts to implement the TRIPS Agreement. These members re-emphasized the need for effective enforcement of Chinese Taipei s intellectual property laws as part of its obligations under the TRIPS Agreement. The Working Party took note of these commitments.
208. Recognizing that sales into the domestic market of smuggled or counterfeit imports of alcohol and tobacco products undermine Chinese Taipei's market for legally marketed products, and wishing to discourage such activities in the future, the representative of Chinese Taipei confirmed that all contraband smuggled or counterfeit imports of alcohol and tobacco products seized would be destroyed, or otherwise disposed of, taking into account the practices of WTO Members in a similar situation, and that Chinese Taipei would take additional efforts to prevent such illegal imports. In this regard, Chinese Taipei would ensure that certain alcoholic beverage imports would be accompanied by a certificate of origin similar to that issued by the regulatory authorities in the country of origin in order to combat counterfeiting. The Working Party took note of these commitments.
209. The representative of Chinese Taipei stated that Chinese Taipei would fully apply the provisions of the Agreement on TRIPS by the date of accession, without recourse to any transitional period. Chinese Taipei would furthermore ensure by the date of accession:
(a) full protection of geographical indications (including against trademarks which contain or consist of such an indication), as well as of well-known marks (including the enhanced protection pursuant to Article 16.2 and 3 of the TRIPS Agreement);
(b) the establishment of a registration system for trademarks which incorporates all conditions as set out in the TRIPS Agreement;
(c) the amendment of Chinese Taipei Copyright Law to comply with Article 14(1) of the TRIPS Agreement;
(d) the extension to all WTO members of advantages currently given on the basis of reciprocity, the elimination of any reciprocity requirements; and in particular,
(e) effective enforcement (including implementation of the special requirements related to border measures).
The Working Party took note of these commitments.
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