WORLD TRADE
ORGANIZATIONIP/C/W/367/Add.1
18 October 2002
(02-5690)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW OF LEGISLATION
Follow-up questions by the European Communities and their member States
Addendum
By means of a communication from the Permanent Delegation of the European Commission,
dated 11 October 2002, the Secretariat has received a copy of the following follow-up questions that
the European Communities and their member States have communicated to the Separate CustomsTerritory of Taiwan, Penghu, Kinmen and Matsu.  These questions supplement those posed by the
European Communities and their member States in document IP/C/W/367.
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CHINESE TAIPEI
A. T
RADEMARKS AND GEOGRAPHICAL INDICATIONS
1. Under Chinese Taipei Trademark Law geographical indications (GIs) are protected as
"certification marks" under Article 73 of the Trademark Law. Article 16 TRIPS forbids the use ofidentical or similar marks for identical or similar 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 theprotection of a GI dependant of the likelihood of c onfusion test.  Indeed, Article 23.1 TRIPS forbids
the use of translations or the use of "kind", "type", "style", "imitation" as such, without any test of
confusion.
2. Subparagraph 6, Article 37 and Article 52 of the Trademark Law is in line with Article 22.3
TRIPS in that a trademark application shall be refuse d or invalidated when it 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 wine s 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.
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 registration 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.IP/C/W/367/Add.1
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Please confirm that for the protection granted to well-known mark it is sufficient that confusion is
likely  to occur.
B. COPYRIGHT
4. Please indicate what the criminal prosecution standards are in cases of copyright
infringements.  What are the thresholds to be reached  for initiating criminal investigations?  Is there
need for "intent of commercial ga in" in order to impose criminal actions (which would i.e. allow
infringement by government entities)?  Please specify whether your Copyright law might be modified
in order to include "intend of commercial gain" as a prosecution condition.
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 thePharmaceutical Affairs Law will be amended so as to specifically exclude certain sensitive materials
from disclosure as it is required by Article 39.3 TRI PS?  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.
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 marketing authorisation review rather than results from local clinical trial
tests of the same standard that were submitted by the original application.  Hence, please do confirmthat the "data exclusivity period" is limited to five years only.
D. E
NFORCEMENT
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).  Article 13 of the Regulations stipulate that "where alcohol product islabeled 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 examination 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 consequenc es for the EU exporters there would be, should
such lists not be timely submitted to the competent authority.
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 1,616IPR 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 of imprisonment.  In view of the figures
re.  above please indicate whether Chinese Taipei complies with the provision of Article 61 where it isIP/C/W/367/Add.1
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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).
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