On August 30, 2023, the New Intellectual Property Case Adjudication Act came into effect. Although numerous clauses focus on patents and trade secrets cases, certain significant amendments still have an impact on the enforcement of trademark cases. Those amendments are summarized as follows:

Mandatory Legal Representation in Trademark Civil Litigation

In the following situation, the parties are required to appoint an attorney as their advocate in a trademark civil litigation.

(1)   In the court of first instance, when the value of the claim exceeds NTD1,500,000 currently. Additionally, if the claim to stop the infringer's trademark use is requested, appointing an attorney as their advocate is also mandatory since the value of the claim will be deemed as NTD1,650,000 per Article 77-12 of the Code of Civil Procedure.

(2)   At the court of the second instance.

(3)   At the court of the third instance.

(4)   Proceeding for Retrial.

Additionally, before the action has been initiated, in a motion for preservation of evidence or injunction, the petitioner shall also appoint an attorney as its advocate.

Special Exclusive jurisdiction

The Intellectual Property Court is the exclusive jurisdiction for the first instance of a trademark civil case. However, a court could also obtain jurisdiction through consensual jurisdiction and responding jurisdiction.

Notification of litigation

If the trademark rights are exclusively authorized, and the trademark owner or exclusive licensee has a civil lawsuit with a third party regarding the trademark rights and interests of the exclusive authorization, the trademark owner or exclusive licensee shall notify the other so that the other party can intervene in the action.

Notification between IP Court and TIPO

When a party claims or defends that trademark right shall be canceled or revoked, the IP Court shall decide based on the merit of the case. As the party is permitted to simultaneously file opposition, invalidation, or revocation applications before TIPO to cancel that trademark, the decision made by the IP Court and TIPO may be discrepant. Thus, the new clause requests the IP Court notify TIPO when a party claims or defends that trademark right shall be canceled or revoked. TIPO can also request the court provide necessary documents or files.

Retrial Restriction in Trademark Civil Case

When a party claims or defends that trademark right shall be canceled or revoked before the Court, and the judgment finally indicates that the trademark is valid, but afterward TIPO decides the trademark is invalid. The new clause stipulates that in this situation, the party cannot file a retrial per Article 496-1-11 of the Code of Civil Procedure.

However, this clause is only applied to a civil case rather than a criminal case. Based on the protection of the right to personal freedom in Article 8 of the Constitution, it should be allowed to apply for a retrial in the interests of the person sentenced under Article 420 of the Criminal Procedure Law.

A foreign company intending to file civil litigation against trademark infringement in Taiwan should pay special attention to the above new regulations. Otherwise, the initiation of the action may probably be rejected procedurally.