WORLD TRADE
ORGANIZATIONIP/C/W/373/Add.3
22 November 2002
(02-6512)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Responses from Chinese Taipei to follow-up questions posed by the European Community
and its member States and by Japan
Addendum
By means of a communication from the Permanent Mission of the Separate Customs Territory
of Taiwan, Penghu, Kinmen and Matsu, dated 21 November 2002, the Secretariat has received copiesof the following responses to the follow-up questions posed by the European Community and its
member States and Japan, as circulated in document IP/C/W/367/A dd.1 and IP/C/W/362/Add.3
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EUROPEAN COMMUNITY AND ITS MEMBER STATES
A. TRADEMARKS AND GEOGRAPHICAL INDICATIONS
1. Under Chinese Taipei Trademark Law geogr aphical indications (GIs) are protected as
"certification marks" under Article 73 of the Trademark Law.  Article 16 TRIPS forbids the use
of identical or similar marks for identical or simi lar goods or services only when this results in a
likelihood of confusion.  We figure out that certification marks are subject to the same
protection that is granted to ordinary trademarks.  Hence under Chinese Taipei Trademark
Law, the protection of a certification mark, which contains or is composed of a GI, is subject to
the test of likelihood of confusion.  Please explain how this is compatible with Article 23.1
TRIPS which does not make the protection of a GI dependant of the likelihood of confusion test.Indeed, Article 23.1 TRIPS forbids the use of tran slations or the use of "kind", "type", "style",
"imitation" as such, without any test of confusion.
General protection of geographical indications on all products as required under Article 22 of
the TRIPS Agreement is implemented under Article 73 of the Trademark Law via the protection of“certification marks.”
The enlarged protection of geographical indications on wines and spirits as required Article
23 of the TRIPS Agreement is implemented under relevant provisions of the “Tobacco and Alcohol
Administrative Law” and “Regulation Governing th e Labeling of the Alcohol Products,” as notified
respectively in documents IP/N/1/TPKM/E/1 and IP/N/1/TPKM/G/1.  The language of Article 23.1 of
the TRIPS Agreement is incorporated in to Article 13 of the said Regulation.
2. Subparagraph 6, Article 37 and Article 52 of the Trademark Law is in line with
Article 22.3 TRIPS in that a trademark applicat ion shall be refused or invalidated when itIP/C/W/373/Add.3
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contains or consists of a GI that is likely to  mislead the public.  Article 23.2 TRIPS provides in
an enlarged protection for wines and spirits.  Trademark applications for wines or spirits
containing or consisting of GIs not having such origin, shall be refused regardless of whether
they are misleading or not.  Please indicate where the TRIPS provision of Article 23.2 has been
implemented in your law.
See above.  In addition, trademark application bearing GIs of wines and spirits will be
rejected.
3. In reply to EC question 12, Chinese Taipei mentions that Subparagraph 7, Article 37 of
the Trademark Law is in conformity with Article 16.3 TRIPS.  Subparagraph 7, Article 37
states "No application may be filed for registrat ion of a trademark design which is identical or
similar to another's famous mark, thus causing the public to confuse or misidentify it".Article 6 bis Paris Convention and Article 16.3 TRIPS refer to liable  to create confusion and
likely  to be damaged.  Please confirm that for the protection granted to well-known mark it is
sufficient that confusion is likely  to occur.
Pursuant to Paragraph 7, Article 37 of the Trad emark Law, trademark applications that are
likely to cause confusion in relation to other registered identical or similar well-known trademarks or
certification marks shall be rejected or invalidated .  The said provision does not require the condition
of likely to be damaged.  To this effect, the Trademark Law provides a higher level of protection on
well-known trademarks than what is regulated under Article 6 bis of the Paris Convention.
B. COPYRIGHT
4. Please indicate what the criminal prosecu tion standards are in cases of copyright
infringements.  What are the thresholds to be re ached for initiating criminal investigations?  Is
there need for "intent of commercial gain" in or der to impose criminal actions (which would i.e.
allow infringement by government entities)?  Please specify whether your Copyright law mightbe modified in order to include "intend of commercial gain" as a prosecution condition.
Charter 7 of the Copyright Law (Articles 94 to 101) stipulated the thresholds of criminal
offences.  Currently, “Intention of commercial gain” is not relevant for pursuing criminal actions
against copyright piracy.  Under the Criminal Procedure Law, public prosecutors are vested with the
authority to initiate criminal investigation including but not lim ited to copyright infringement.
Amendment is under consideration, in which all “intent-to-profit” piracy is subject to criminal
punishment, and copyright infringement without such intention would be subject to criminal
punishment only when it reaches commercial scal e as stipulated under Article 61 of the TRIPS
Agreement.
C. PROTECTION OF UNDISCLOSED INFORMATION
5. From the Attachment B of Chinese Taipei's replies, we understand that the actual
legislation provides that in principle information held or kept by administrative bodies should
be disclosed  unless restrictions apply (one of such restrictions being "trade secrets").  Please
indicate whether the Pharmaceutical Affairs Law will be amended so as to specifically excludecertain sensitive materials from disclosure as it is required by Article 39.3 TRIPS?  If so, please
specify what governmental body will have the discretion to determine which data should be
disclosed and which not.  Also, please specify which criteria would determine what data can be
disclosed or not.IP/C/W/373/Add.3
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The pharmaceutical regulation is  not, as EC described, “in principle information held or kept
by administrative bodies should be disclosed unless restrictions apply”.  Instead, information
submitted to Department of Health, in principle, should not be disclosed.  If we adopt a law, in the
future, requiring the disclosure of information submitted, the Pharmaceutical Affairs Laws would be
amended in parallel to protect the submitted information against such disclosure.
6. In reply to EC question 30 under II it is mentioned that the period of data exclusivity
(non-reliance by the marketing authority on the data filed by the first applicant to approve
subsequent applications by generic manufacturers) is of seven years.  However, Attachment B
stipulates that five years after the new drug license is granted, a generic drug applicant needs
only to submit bioequivalence data for the mark eting authorisation review rather than results
from local clinical trial tests of the same standard that were submitted by the originalapplication.  Hence, please do confirm that the "data exclusivity period" is limited to five years
only.
The definition of “pharmaceutical data exclusivity period” may be different amongst in
different Members.  It is confirmed that a full “pharmaceutical data exclusivity period” is provided for5 years; while a much more relaxed protection is provided with additional 2 years.  Furthermore, it is
provided 10 years for orphan drug. (See Attachment A)
D. ENFORCEMENT
7. The Tobacco and Alcohol Administration Law (TAAL) and the Regulations governing
the Labeling of the Alcoholic Products came in effect on 1 January 2002 (with a transitional
period of 18 months for their application).  Ar ticle 13 of the Regulations stipulate that "where
alcohol product is labelled with geographical indication, a certificate of the geographical
indication issued by the government of the country of origin or a chamber of commerce
authorized by such government shall be submitted for examinat ion by the central competent
authority before the alcohol product is declared to  custom or released from factory".  To that
end Chinese Taipei has requested the European Communities to provide a list of names of the
government authorities or chambers of commerce in the EU member States which will issue the
required certificate.  The relevant lists are forthcoming, however please indicate what negative
consequences for the EU exporters there would be, should such lists not be timely submitted to
the competent authority.
There are no negative consequences.  However, if exporters do not provide required
certificate before declaring for customs clearance, and if the labeling of geographical indication is
questioned in the future, the verification process will take a longer time.
8. The EU industry is particularly concerned by the ineffective enforcement efforts vis-à-
vis persistent manufacturing and exportation of pirated software, video games and other optical
media (especially compact disc piracies).  From  the statistics received in Attachment D, it
appears that for the year 2001 of the IPR cases received (3,426) only 1,197 were prosecuted.  For
2001, of the 1,616 IPR cases where final judgments were rendered only 680 cases lead to a
sentence of 6 months or less and no more than 6 cases to a sentence between 2 and 3 years ofimprisonment.  In view of the figures re.  above  please indicate whether Chinese Taipei complies
with the provision of Article 61 where it is stated that "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" (emphasis added).
The cited data represent the number of cases that have been investigated and prosecuted in
accordance with the Criminal Code of Procedure.  Wi th reference to statistics of the top table, 521IP/C/W/373/Add.3
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cases in which the suspects were determined to be guilty by the prosecutors and had been sent for
simple court decisions should also be part of the effective execution.  There are only 847 cases that
have been revoked, perhaps due to case dismissal by the public prosecutors, or due to improper
prosecuting procedure.  The statistics also reveals that there are some 762 cases under “other cases”
which might reflect the instances where out-of-court settlements were reached and the right holderceases to complaint.  An accusation of ineffective protection simply based upon the number of cases
received and prosecuted is by no mean justified.
JAPAN
1. Concerning Response 1, please explain why two-years grace period stipulated in Article
106ter of the Copyright Law is consistent with Article 18.3 of the Berne Convention.
Furthermore, please provide us detailed explanation what behaviour is regarded as
“exploitation”. Considering that there seems to be no right of distribution in the Copyright
Law, please explain whether selling or distributing works would be regarded as “exploitation”under the Copyright Law, and please give us explanation how long these acts would legitimately
continue, especially, even after 2 year-moratorium has expired.
The moratorium is in compliance with Article 18.3 of the Berne Convention that empowers
the respective countries, in the absence of any provisions contained in special conventions or to be
concluded between countries, to determine the conditions of its application.  The two-year graceperiod of Article 106 ter under the Copyright Law would reasonably suffice the requirement.
The “exploitation” as stipulated in the said Article refers to the exercise of all types of rights
stipulated under Articles 22 to 29 of the same Law.  A specific user who meets the requirement as
stipulated under Subparagraph 2 of Article 106 ter is allowed to use a specific work within the two-
year moratorium according to their original plans.
Since there is no right of distribution in the Copyright Law, all works legally reproduced
within the 2-year moratorium can be sold after the expiry of the moratorium.
2. Concerning Response 2, it refers to the rental  right of authors of cinematographic works
(Article 29) and the exhaustion of the right (Article 60). Because so-called video-rental in rerum
natura  inevitably consist by lending copies of cinematographic works, it is understood that the
authors cannot enjoy their rental right virtuall y with regard to video-rental (Article 60).
Regarding this point, Response 2 states that Ch inese Taipei meets Impairment Test stipulated in
Article 11 of the TRIPS Agreement because video- rental has not “led to widespread copying of
such works which is materially impairing the ex clusive right of reduction ”conferred on authors
and their successors in title. Please give us detailed explanation why such explanation can be
made, even without the information regarding the number of video-rental shops.
It is to our understanding that all videos offered in the video-rental shops are legitimate ones
and, due to the low rental cost, customers would not need to make illegal copies out of the rented
videos.  Since the application of the first sale doctrine to cinematographic works has not “led to
widespread copying of such works” nor “materially impairing the exclusive right of reproduction
conferred,” it is therefore in full conformity of Article 11 of the TRIPS Agreement.
3. Concerning Response 4 which states “[a]lthough broadcasting organizations are not
directly protected under the Copyright Law, any programs broadcast by those organizations
are protected as long as such programs satisf y the definition of works as provided for inIP/C/W/373/Add.3
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Paragraph 1, Article 5 of the same law”, such explanation seems to refer to the last sentence of
Article 14.3 of the TRIPS Agreement. However, because the exclusive right of authorizing
public broadcasting under Article 24 of the Copyright Law is not granted to the case that a
performance is publicly broadcasted “after such  performance has been reproduced or publicly
broadcasted”, it is understood that the authors of the program (a work) broadcast are notgranted the right of rebroadcasting. As a result, isn’t is concluded that such provision violates
the last sentence of Article 14.3 of the TRIPS Ag reement and Article 11bis  (1) (1) of the Berne
Convention? Even if it is not regarded to violate these treaties, is the fair compensation paid for
the right holder? Article 11bis (2 ) of the Berne Convention stipul ates that the conditions which
are determined by the countries of the Union as matter for legislation “shall not in any
circumstances be prejudicial to the” author’s “right to obtain equitable remuneration which, in
the absence of agreement, shall be fixed by co mpetent authority”. Furthermore, if a government
limits or excepts the exclusive right provided in  Article 11bis (1) of the Convention, it should
establish due procedure, such as fixing the leve l of compensation to right holders or setting up
tribunal to arbitrate between broadcasting organizations and right holders over the payment of
remuneration. Please explain how Article 11bis (2) of the Berne Convention is implemented.
The performance, before fixation, is a protected subject matter under Article 7 bis of the
Copyright Law.  However, as soon as the performa nce is fixed onto another type of media, its
copyright would cease to exist and a new form of subject matter, e.g. audio-visual works or sound
recordings, emerges.  Accordingly, when the performance is reproduced and broadcast to the public,
the performer does not enjoy the right of rebroadcasting.  It would be the right holder of the broadcast
program who enjoys the right of rebroadcasting.
Although the broadcasting organizations are not directly protected under the Copyright Law,
the program broadcast is subject to copyright protection under relevant provisions of the Copyright
Law.  We believe this is in full conformity with Article 14.3 of the TRIPS Agreement.
4. Concerning Response 8, regarding the last sentence of Article 26 of the Copyright Law,
an exclusive right is not granted to the case that “public performances by means ofloudspeakers or other equipment after the performance has been reproduced or publicly
broadcast”. On the other hand, Article 11(1)(i) of  the Berne Convention stipulates that authors
shall enjoy the exclusive right of authorizing th e public performance of their works, “including
such public performance by any means or process”, including public performance by sound or
visual recordings. Please explain the reason why the last sentence of Article 26 of the Copyright
Law is consistent with Article 11(i) of the Berne Convention.
The performance, before fixation, is a protected subject matter under Article 7 bis of the
Copyright Law.  The author of the performance enjoys full right of public performance, including
performing by means of loudspeakers or other equipment, in accordance with Article 26 of the
Copyright Law.  However, as soon as the performa nce is fixed onto another type of media, its
copyright would cease to exist and a new form of subject matter, e.g. audio-visual works or sound
recordings, emerges.  Accordingly, when the performance is reproduced and broadcast to the public,the performer does not enjoy the right of rebroadcasting in accordance with Paragraph 2, Article 26 of
the Copyright Law. However, the authors of audio- visual works or sound recordings shall enjoy the
related exclusive rights “including such public performance by any means or process”, including
public performance by sound or visual recordings.  We believe the said provision is in full conformity
with Article 11 (i) of the Berne Convention.
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ATTACHMENT  A
Rare Disease Prevention, Control and Orphan Drug Act
Article 16
The health authority, in reviewing the application and test data of the orphan medicinal
product registration for rare disease, may require the applicant to proceed with the domestic clinical
trials.  Under such circumstances, the authority shall make public disclosure of the content and result
of the clinical trials in an appropriate manner.
Article 17
When the marketing authorization of an orphan medicinal product has been approved, the
license will be valid for 10 years.  During this valid period, the authority shall not accept another
application in respect of a similar medicinal product.
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