The Decision

However, the written report cited by the public prosecution to show the accused infringing trademark rights only has a conclusion and does not detail the process of judgment and the basis of the determination. This is insufficient for the court and the parties to test the opinion determined and demonstrated. The agent ad litem, Lawyer Liu, addresses in the preparatory proceedings before this court that Epson’s method for identifying counterfeit goods involves trade secrets, which cannot be disclosed because the trademark owner requires confidentiality.

This court considered that the accused denied the seized goods as an infringement of trademark rights. The written report did not specify the characteristics of the genuine standard and how the seized goods were inconsistent with the authentic. Further, the trademark owner is not willing to have people with the ability to identify genuine come to the court to explain the inspection process. This court has no way of determining whether the seized goods involved the specific characteristics of identifying as infringed goods. It is also difficult to make an unfavorable determination against the accused based solely on the accusations made by the agent ad litem.

Ching-I Lu’s comments

1. During the criminal trial process of infringing trademark rights, the most tough issue is the admissibility of the evidence of the identification report. When the accused denies the seized goods are counterfeit, the authenticity of the seized goods becomes the primary focus.

2. Each luxury business has different anti-counterfeiting methods for its products. Naturally, the authenticity identification method is also a trade secret. Therefore, in the past, in the criminal trial process of trademark infringement, we usually relied on the identification reports issued by these luxury businesses, because only the luxury vendors can identify the authenticity of the seized goods.

3. However, the position of the luxury business owner is opposite to that of the accused. To convict the accused solely by relying on the identification report issued by the luxury business seems to be a major obstacle to the accused’s defense right. Therefore, in recent years, the Supreme Court has made some judgments criticizing the flaws in identification reports, such as the Supreme Court’s Criminal Judgment (111 tai shen No. 1271).

In the decision mentioned in this article, the judgment also decided the accused not guilty because the written report ” only has a conclusion and does not detail the process of judgment and the basis of the determination”, and “the trademark owner is not willing to have people with the ability to identify the genuine come to the court to explain the inspection process.” The seized goods could not even be confiscated.

4. However, the recent Supreme Court Criminal Judgment (112 tai shen No. 3734) still recognized the admissibility of the evidence of the identification report issued by the trademark right holder, and that the expert witness did not need to appear before the court to explain.

From the two previous opinions of the Supreme Court, there seems to be no consensus on the admissibility of the evidence of the identification report issued by the trademark right holder.

5. The new identification system of the Code of Criminal Procedure was implemented on May 15, 2024, and Paragraph 4 of Article 206 stipulates:

“If an identification report is made in writing, the person who conducted the identification should give a verbal explanation before the Court during the trial. However, this does not apply if the party expressly agrees that the written report can be as evidence.”

6. For multinational luxury businesses, the method of identifying genuine is an important trade secret. If disclosed, the impact will expand on global operations. It is understandable why luxury businesses have difficulty explaining the method of identifying the genuine before the Court in a specific case, which will expose their trade secret to high risks. Therefore, it is conceivable that after implementing the new identification system, those luxury business trademark owners may face more challenges in restraining counterfeiting.