WORLD TRADE
ORGANIZATIONIP/C/W/373
9 September 2002
(02-4721)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Chinese Taipei to the questions posed by Japan
By means of a communication from the Permanent Mission of the Separate Customs Territory
of Taiwan, Penghu, Kinmen and Matsu, dated 21 August 2002, the Secretariat has received thefollowing responses to questions posed by Japan as circulated in document IP/C/W/362.
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A. C
OPYRIGHT
1. Please explain exceptions or exemptions of  the National Treatment and Most-Favoured-
Nation Treatment under the Copyright and Neighbouring Rights Law, of your country, if any,
as permitted in Articles 3 and 4 of the TRIPS Agreement.
There is no exception or exemption of the National Treatment and Most-Favoured-Nation
(MFN) Treatment under the Copyright Law as permitted in Articles 3 and 4 of the TRIPS Agreement.
There is no sui generis  Neighbouring Rights Law.  Related rights, as defined under Article 14
of the TRIPS Agreement, are covered under the Copyright Law.
2. Please indicate whether a compulsory licence would be granted to a person who does not
make any efforts to obtain authorization from th e right holder prior to use of a musical work, if
six months have passed since the selling of su ch musical work, under Article 69 of the Copyright
Act.  Please explain whether such procedures are consistent with Article 13 of the TRIPS
Agreement, which provides limitations or exceptions to exclusive rights to certain special cases
which do not conflict with a normal exploitation of the work and do not unreasonably prejudice
the legitimate interests of the right holder.
Pursuant to Article 69 of the Copyright Law, the compulsory licensing application for the
musical work can be filed, if six months have passed since the selling of such recorded musical work.
There is no prerequisite for applicants to make efforts to obtain authorization from the right holder.
To implement that particular Article, taking into account the benefits of the right holders, the
criteria for awarding compensation as stipulated under "Regulations Governing Application for
Approval of Compulsory License of Musical Work s and Royalties for Use Thereof" ("the Regulation"
as first promulgated in June, 1992) was revised in 1998.  There were many applications made under
the Regulation thereafter.
To safeguard the legitimate interests of the right holders, the Regulation was again revised in
2000 to increase the compensation awarded to the right holders.  Since the revision in 2000 was in
place, there has been only one compulsory license granted.  By providing reasonable compensation,IP/C/W/373
Page 2
this Article would not unreasonably prejudice the legitimate interests of the right holder, thus it is in
full conformity with Article 13 of the TRIPS Agreement.
3. Article 89 bis of the Copyright Act provides two years limitation of the right to request
compensation for infringement, th at is, the right to request comp ensation for infringement shall
be extinguished if not exercised within two year s from the time the person having the right to
make the request knows of the loss and the identity  of the obligor.  Please explain whether such
limitation is consistent with Article 41.2 of the TRIPS Agreement, which provides procedures
concerning the enforcement of intellectual prop erty rights shall not entail unreasonable time
limits.
Article 89 bis of the Copyright Law is essentially formulated in accordance with Paragraph 1
of Article 197 of the Civil Code.  All claims on torts for damages can be made up to two years afterthe complainant knows of the loss and the identity of the obligor and, in any cases, within ten years
after the infringement takes place.  Even if Article 89 bis of the Copyright Law were stroked out, the
rules would remain the same under the application of Paragraph 1, Article 197 of the Civil Code.
Taking into account Article 41.5 of the TRIPS Agreement, the Article 89 bis of the Copyright
Law does not entail unreasonable time limits;  it is consistent with Article 41.2 of the TRIPS
Agreement.
4. Please explain the specific case or modality about "a person has made significant
investment for the exploitation of works" under Article 106 ter of the Copyright Act.  In
particular, please provide the criteria to decide whether a person has made significant
investment for the exploitation of works.
Article 106 ter of the Copyright Law provides that if a person, who has begun or made prior
significant investment for the exploitation of works protected in accordance with Article 106 bis, may
continue to exploit such works during the two years period after the entry into force of the TRIPSAgreement in our territory.
So far, there is no established criteria made by the administrative authority.  Whenever there
is a dispute over significant investment for the exploitation of works, it shall be determined by the
court on individual merits.
5. In accordance with Article 106 ter of the Copyright Law, the reproduction and
adaptation occurred prior to the effective da te on which the WTO Agreement takes effect in
Chinese Taipei can be used (not subject to the right excising) for two more years after the
aforementioned effective date.  Please explain th e reason of two years and the relation with the
TRIPS Agreement.  In addition, please explain what the "plate" of Article 79 of your Copyright
Law is, and please explain if interim measures of two years are applied to the "plate".
Article 106 ter of the Copyright Law is formulated in accordance with Article 70 of the TRIPS
Agreement which requires applying principle of retroactive protection set forth by Article 18 of the
Berne Convention.  The grace period, which generally lasts one or two years without compensation,
for reliance party is permitted under Article 18.3 of the Berne Convention.
The definition of "plate" rights is stipulated in Article 79 of the Copyright Law:  "For a
literary and artistic work that has no economic rights or for which the economic rights have expired, a
plate maker who arranges and prints the said literary work, or in the case of an artistic work, a plate
maker who photocopies, prints or uses a similar method of reproduction and first publishes such
reproduction based on such original artistic work, and duly registers in accordance with this Law,shall have the exclusive right to photocopy, print or use similar methods of reproduction based on the
plate."IP/C/W/373
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The "plate right" is not a copyright per se .  The "plate right" is accorded for the purpose of
encouraging the sharing of private collections of ancient literary and artistic works.   A limited
protection for ten years can only be obtained through registration.  Since the inception of this system
in 1964, there has been less than 190 plate rights granted.
The interim period of two years does not apply to the "plate right."
6. Regarding the protection of database relating to Article 10.2 of the TRIPS Agreement,
please cite the relevant provisions of your Copyright Law.
The copyright protection for the compilation of data or other materials, as required under
Article 10.2 of the TRIPS Agreement, is stipul ated under Article 7 of the Copyright Law.
B. TRADEMARKS
7. Regarding "well-known trademarks", please explain how legislation including your
Trademark Law and your Fair Trade Law implem ents Articles 16.2 and 16.3 of the TRIPS
Agreement.
The Trademark Law and the Fair Trade Law provide adequate and effective protection on
both registered and non-registered well-known trademarks.
1. Implementing Article 16.2 of the TRIPS Agreement
(1) Pursuant to Articles 61 and 62 of the Trademark Law, the owner of the registered
trademark, including well-known trademark, shall have the exclusive right to prevent
all others from using identical or similar signs for goods which are identical or similar
to those in respect of which the trademark is registered.  Subparagraph (7), Article 37
of the Trademark Law accords further protection for non-registered well-known
trademarks against the registration of other marks.  (Please refer to Article 31.1 of theEnforcement Rules of Trademark Law for the criteria to determine well-known
trademarks and service marks.)  In conformity with Article 16.2 of the TRIPS
Agreement, Article 77 of the Trademark Law extends the scope of the trademark
protection, mutatis mutandis , to services.
(2) Pursuant to Article 20 of the Fair Trade Law, all types of famous symbols, including
well-known trademarks or services marks, registered or not, are eligible for protectionagainst the use of identical or similar signs on goods or services which would cause
confusion.
2. Implementing Article 16.3 of the TRIPS Agreement
(1) In accordance with sub-paragraph (7), Article 37 of the Trademark Law, goods and
services, which are not similar to those in respect of which a well-known trademark is
registered, shall be excluded from registration of their trademarks and service marks.
In addition, non-registered well-known trademarks and service marks are entitled to
enjoying the same level of protection despite the fact that it is not so required under
Article 16.3 of the TRIPS Agreement.
(2) Article 24 of the Fair Trade Law also provides that no enterprise shall otherwise have
any deceptive or obviously unfair conduct that is able to affect trading order.   
Regardless of similar or not similar goods or services, protections for well-knownIP/C/W/373
Page 4
trademarks and service marks are provided against deceptive or obviously unfair
conducts which are likely to damage the interests of trademark owner.
C. GEOGRAPHICAL INDICATIONS
8. Please explain how legislation of Chinese Ta ipei implements Articles 22.2 and 23.1 of the
TRIPS Agreement, regarding the Geographical Indications.
1. Implementing Article 22.2 of the TRIPS Agreement
(1) The geographical indications to all goods and services are protected as
"certification marks" under Article 73 of the Trademark Law.
(2) For any use of geographical indications that constitutes unfair competition,
Article 21 of the Fair Trade Law, in conformity with Article 10 bis of the Paris
Convention, provides that enterprises shall not make false or misleading
representations either on their products or in the advertisements of their products.
In addition, they shall not sell, transport, export or import goods bearing false or
misleading representations.
(3) Article 21.3 of the Fair Trade Law extends the scope of the aforementioned
protection to services.
2. Implementing Article 23.1 of the TRIPS Agreement:
(1) Pursuant to Article 33.2 of the Tobacco and Alcohol Administration Law, producers
or importers may choose to label geographical indications on their alcohol products,
but the labeling shall not constitute false or misleading representation.
(2) The language of Article 23.1 of the TRIPS Agreement is incorporated into Article 13
of the Regulation Governing the Labeling of the Alcohol Products.
D. PATENT
9. Priority claim under the Patent Cooperation Treaty:  Most-Favoured-Nation
Treatment:  Chinese Taipei is not a member of the Patent Cooperation Treaty (PCT).
Therefore in Chinese Taipei, as we understand, ap plicants are not basically allowed to claim a
priority based on a PCT international application.  Before joining the World Trade
Organization (WTO), Chinese Taipei had been adopting the examination guidelines under
which only those applicants who firstly file a PCT application with Australia had been allowedto claim such a priority.  With the accession to the WTO, however, examination guidelines of
Chinese Taipei are supposed to have been revised in accordance with Article 4 of the TRIPS
Agreement providing the Most-Favoured-Nation Treatment.  Has Chinese Taipei made the
necessary amendments to the examination guidelin es in accordance with Article 4 of the TRIPS
Agreement?
As The Separate Customs Territory of Taiwan , Penghu, Kinmen and Matsu is not a signatory
to both Paris Convention and Patent Cooperati on Treaty (PCT) under the aegis of the World
Intellectual Property Organization (WIPO), and has not made any bilateral agreement with the PCT
relating to mutual recognition on priority rights.  Under such circumstances, our nationals cannot file
patent applications with PCT.  Therefore, we are unable to recognize priority rights claimed solely onthe basis of the PCT applications.IP/C/W/373
Page 5
10. The provision of the Article 27.3(b) of the TRIPS Agreement provides that "Members
shall provide for the protection of plant vari eties either by patents or by an effective sui generis
system or by any combination thereof" please  explain how legislation of Chinese Taipei,
including plant seed law, provides for such kind of plant.
Pursuant to Article 4 of the Plant Seed Law, a total of 88 new plant varieties are declared by
the authority to be eligible for the 15-year period of exclusive variety right under Article 19 of the
same Law.
To further protect the right of the breeders, amendments are now under consideration to
provide similar protection as those established und er UPOV 1991, such as a 20-year protection for
plant varieties in general, and a 25-year protection for trees and vines in particular.
In addition, while excluding from patentability new varieties of animals and plants,
Article 21.1 of the Patent Law also grants process patent to the cultivation and the growth process of
new plant varieties.
11. "Offering for sale" relating to the effect of a patent:  Article 28 of the TRIPS Agreement
provides that a patent shall confer on its owner the exclusive right, where the subject matter of
the patent is a product, to prevent third parties from "offering for sale" that product, and
where the subject matter of the patent is a process, from "offering for sale" at least the product
obtained directly by that process.  Under the cu rrent Patent law, however, a patent does not
confer on its owner such exclusive rights regarding  "offering for sale."  It seems to us that the
level of patent protection under the Patent law is lower than that is to be conferred under the
TRIPS Agreement.  Please give us an explanatio n about this and how legislation provide for the
"offering for sale" relating to the effect of a patent.
Article 56 of the Patent Law provides that "the patentee of a patented article shall have the
exclusive right to preclude others from manufacturing, selling, using or importing for above purposesthe patented article without his or her prior consent."  The language "selling" referred to in that Article
is understood to include "offering for sale" as stipulated in Article 28.1(a) of the TRIPS Agreement.
That interpretation corresponds with the Decision made in 2001(Criminal Judgment No. 90 San Yi
Tgu 279) issued by the Taiwan High Court, wh ich ruled that the purchase for the purposes of
subsequent selling should be regarded as part of "sell" as stipulated under Article 56.
To codify the above-mentioned interpretation, a draft amendment to Article 56 which inserts
the language "offering for sale" is currently under legislative review.
12. Please explain how examination is conducted in order to study to grant the license base
"on its individual merits" in the Article 31(a) of the TRIPS Agreement concerning compulsory
licenses.
Articles 78 and 80 of the Patent Law essentially reflect the substance as embodied in
Article 31 of the TRIPS Agreement.  The granting of compulsory licence shall be made on a case-by-
case basis and on its own merits.  Since the amendment to the compulsory licensing under Section 5,
Chapter 2 of the Patent Law entered into force in 1994, there has no single examination ever been
conducted, and no compulsory licence been granted as a result.  The applicability of the criteria, asstipulated in Articles 78 and 80 of the Patent Law, will be subject to the practice, if any, of future
examinations.
E. U
NDISCLOSED INFORMATION
13. Please provide the relevant legislation and/or provisions for implementing Article 39.3
of the TRIPS Agreement.IP/C/W/373
Page 6
Article 9 of the Trade Secret Law provides that government officials shall keep the secrecy of
information provided as trade secret.  When the test and other data submitted are claimed as trade
secret by the providers, the information shall be eligible for the protection accordingly.  In addition to
civil liabilities provided for under the Trade Secret Law, Article 4 of the Civil Servant Law and
Articles 316 to 318 ter of the Criminal Law also provide criminal punishments for unlawful disclosure
of the secrets.
F. ENFORCEMENT
14. Please explain the relation of the jurisdicti on based on Article 1 and Article 15 of the
Code of Civil Procedure.  In particular, can the plaintiff bring an action to the court where the
defendant domiciles and/or the court where a to rtuous act is committed provided that the
requirements prescribed in Articles 1 and/or 15 are fulfilled respectively?
In accordance with Articles 1 and 15 of the Code of Civil Procedures, a plaintiff can bring a
civil action either to the court having the jurisdiction over the territory where the defendant domiciles,
or to the court having the jurisdiction over the territory where the tortuous act takes place.
15. Please provide the reason or criteria in whic h the court orders the party to be present,
although the party is not required to appear  in person before the court where a legal
representative is present, under Article 203-I of the Code of Civil Procedure.  In particular,
please explain whether such order would make some kind of difficulties to the foreign party in
order to proceed the acti on in Chinese Taipei.
Pursuant to Subparagraph 1, Article 203 of the Code of Civil Procedures, the court may
request the presence of the party, despite of the presence of the statutory agents, in order to elucidate
or ascertain the relations involved in the action.  That request is not mandatory.  If the party fails to
appear in person as requested, the court should nevertheless make its judgment based on all the
evidence and information presented by the parties.
16. Please explain the scope and exception of wr itten evidence, which lies within a party's
control and may be ordered to submit by the court in accordance with Article 342, 343 and 345
of the Code of Civil Procedure.  In particular, please indicate whether the trade secret contained
in the document would justify rejecting the order by the court.
Article 344 of the Code of Civil Procedures, as amended in February 2000, stipulates that:
"Either party is obligated to submit the following document(s):I. Documents which have been referred to in  the preliminary pleading or in the course
of oral proceedings;
II. Documents which the other party may by law apply to inspect to or take delivery of;III. Documents made for the benefit of the other party;IV. Commercial account books;
V. The document is made for the matter(s) related to the case.
If the content of the document listed in the items 5 of prior section is related to the privacy or
trade secret of plaintiff, defendant or third party, and if the document disclosed publicly may cause
serious damage to the plaintiff, defendant or the third party, the related party may refuse to submit.IP/C/W/373
Page 7
However, for the decision of whether the related pa rty may refuse to submit the document, the Court,
when it considers necessary, may order the party to submit the document in a non-public manner."
17. (i) Please provide the remedies which the ju dicial authorities order regarding each
intellectual property rights provided in the TRIPS Agreement, including injunctions, damages,expenses, destruction or disposal of infringing goods, materials or implements for their
production.  Please explain the criteria and the way of calculation to decide the amount of the
damages which judicial authorities order to  the infringer to pay to the right holder.
For the remedies that the judicial authorities can employ regarding IPR infringements such as
injunctions, damages and expenses, please refer to paragraph 3 of the Checklist of Issues on
Enforcement (IP/N/6/TPKM/1).
For destruction and disposal of infringing goods, materials or implements for their
production, please refer to Article 88 bis of the Copyright Law, paragraph 3, Article 61 of the
Trademark Law and paragraph 3, Article 88 of the Patent Law.  Those provisions are in conformity
with Article 46 of the TRIPS Agreement.
For the criteria and the way of calculation to determine the amount of damages by the courts,
please refer to Article 88 of the Copyright Law, Article 66 of the Trademark Law and Article 89 of
the Patent Law.  Those provisions are in full conformity with Article 45 of the TRIPS Agreement.
(ii) In accordance with Article 41.1 of the TRIPS Agreement, Members shall ensure
that enforcement procedures as specified in Part III of the TRIPS Agreement are available
under their laws so as to permit "effective action" against any act of infringement of intellectual
property rights.  However, with the revision of  the Chinese Taipei's Patent Law in 2001, all the
criminal penalty provisions against invention patents infringements were deleted.  In addition to
invention patents, other patents will be deleted from the Patent Law.  Under these conditions,please explain in detail how "effective action" against infringement will be implemented.
Pursuant to Article 61 of the TRIPS Agreement, criminal procedures and penalties are
required to be applied to cases of willful trademark counterfeiting or copyright piracy on a
commercial scale.  There is no such requirement regarding patent infringements.
The Patent Law imposes no criminal penalties against infringements of invention patent.
However, the courts are now empowered to impos e three times of damages as punitive compensation
on the defendants pursuant to Article 89 of the Patent  Law.  In addition, our civil proceedings already
provide effective remedies against patent infringements.  For details, please refer to the reply with
regard to the following question.
(iii) Generally, the burden of proof of infringe ment rests with the right holder.  In the
cases of infringements of intellectual property, however, it is often more difficult to prove that
an act of infringement took place as compared wi th other tort claims.  Nevertheless, at the time
of the revision, any provisions to reduce the burden of proof on right holders were not
incorporated.  Thus, this might place an inordina te burden on right holders if they are required
to prove that an act of intellectual property right infringement occurred.  Article 41 of the
TRIPS Agreement stipulates that "Procedures concerning the enforcement of intellectual
property rights" "shall not be unnecessarily complicated or costly…" Such possible inordinate
burden as mentioned above can be considered as falling under the conditions mentioned in this
Article.  Please give us an explanation about what measures Chinese Taipei has taken to secureconsistency with Article 41 of the TRIPS Agreement.
To deal with the difficulties faced by plaintiffs regarding burden of proof in particular types
of civil claims, the Code of Civil Procedures was amended in 2000 to provide adequate and effectiveIP/C/W/373
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procedures regarding "burden of proof".  For example, Article 282 bis stipulates that "if one party
intentionally extinguishes or conceals evidence or obstructs the use of the same in an attempt to
impede the use thereof by the other party, the court may consider the circumstances and determine
that the allegation of the other party with respect to such evidence or the fact yet to be proved by the
other party based on such evidence is true.  In the situation under the proceeding Paragraph, theparties shall be offered a chance to debate before a judgment is rendered."  Reference should also be
made to Articles 277, 288, 342 to 349, 368 to 376 ter, 522, 532 and 538.  The above-mentioned
articles can ensure the adequate enforcement of intellectual property rights as required under
Article 41 of the TRIPS Agreement.
18. Please indicate titles of laws and regulations and their provisions in which the
suspension of the release of counterfeit tradem ark or pirated copyright goods is prescribed, as
stipulated in Article 51 of the TRIPS Agreement.
1. For suspension of release of counterfeit trademark goods:
Pursuant to Article 61 of the Customs Law and Article 17 of the Trade Law, a Public Notice
No. 90105656 was promulgated on September 13, 2001, which provides the mechanism for
trademark holders to temporarily prevent the release of the counterfeiting goods from the
Customs.
2. For suspension of release of pirated copyright goods:
Pursuant to Articles 90 bis and 90 ter of the Copyright Law, the "Implementation Rules and
Regulations for Suspension of Release of Good s on Copyright or Plate Rights Infringement by
Customs Authorities" was promulgated on June 8, 1998, which provides the mechanism for
copyright holders to temporarily prevent the release of goods, which are accused of piracy,from the Customs.
19. Please explain the kind and amounts of criminal penalties including imprisonment and
monetary fines regarding intellectual property ri ghts, citing the relevant provisions of Chinese
Taipei's law.  In particular, are the crimes pr osecuted only when the injured party has made a
formal complaint?  If so, please provide the p eriod of complaint and the requirements.  Please
explain whether penalties are consistent with Article 61 of the TRIPS Agreement, whichrequires remedies available shall include imprisonment and/or monetary fines sufficient to
provide a deterrent, consistently with the level of penalties applied for crimes of a
corresponding gravity.
With respect to IPR infringements cases, the Copyright Law (Articles 91 to 96), the
Trademark Law (Articles 62 to 65), the Patent Law (Articles 125, 126, 128 and 129), the Fair TradeLaw (Articles 35 and 36) and the Plant Seed Law (Article 41) all provide criminal punishments.
Please refer to Paragraph 21 of the Checklist of Issues on Enforcement (IP/N/6/TPKM/1).
Provisions which stipulate that prosecutions will be initiated only when the injured party has
made formal complaint include:  Articles 91, 92, 93, 95(excluding Subparagraph 1), and 96 of theCopyright Law, Articles 125, 126, 128 and 129 of the Patent Law and Article 41 of the Plant Seed
Law.  According to Article 237 of the Code of Criminal Procedures, if a case may be initiated upon
complaint, such complaint must be filed within si x months from the day a person entitled to complain
was informed of the identity of the offender.
20. Regarding the border measures, please give us information as to the practice of
operation and relevant data of "The Trademark Export Monitoring System".IP/C/W/373
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I. For enforcing the special monitoring of the trademarks on the export commodities,
Board of Foreign Trade (BOFT) and Directorate General of Customs (DGOC) jointly
set up a Trademark Export Monitoring System to accept the application for trademark
recordation to be filed by the trademark owners or authorized trademark
representatives and collect the recordation fees.
II. If the Customs finds out that the export commodities themselves or their inner or
outer packages or containers bear a trademark or any marks, labels, signs, stamps, the
contraction of the importer's name, or other words identical with or similar to a
recorded trademark which belongs to the same commodity group by the checking
through the Trademark Export Monitoring System, the following measures shall be
taken.
A. Where such markings are identical with a recorded trademark and the
exporter is not on the trademark owner's list of manufacturers/ companies
permitted to use the registered trademark, the Customs may request the
exporter to provide the legal documents  from the trademark owner assigning
or authorizing the exporter to use the registered trademark, or other
documents capable of proving no trademark counterfeiting has been
involved, so that the Customs can check and release the commodities.
B. Where such markings are similar to a recorded trademark, the Customs may,
depending on whether the similarity is likely to cause confusion, make the
same request as stated in the preceding paragraph or request the exporter to
sign an affidavit for no involvement of trademark counterfeiting before the
Customs' release of the commodities, and then the Customs will send a letter
to the authorities concerned for verification afterwards.
G. TOBACCO AND ALCOHOL ADMINISTRATION LAW
21. Please discuss consistency of provision and/or practice of restrictions under the Law
Governing the Prevention of Toba cco Hazards, which is referred in Article 32 of the Tobacco
and Alcohol Administration Law, with the TRIPS Agreement, especially in terms of protection
of trademark and so forth.
The Tobacco Hazards Prevention Act, which is referred to in Article 32 of the Tobacco and
Alcohol Administration Law specifically governs subparagraphs 5 and 6 as regards the labeling on the
content level of nicotine and tar as well as the notion of health warning.  The restriction does not
apply to Subparagraph 1 of the same Article regarding the usage of the brand names on the packaged
tobacco products.
Those provisions are in conformity with the trademark protection required under the TRIPS
Agreement.
Special attention has been paid to the draftin g progress of the "The Framework Convention on
Tobacco Control" taking place under the framework of the World Health Organization.  Ourfuture legislation might be directed towards new direction in light of the result of that
international arrangement.
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