Date:17 August 2023

【Volume 116】

On May 3, 2023, the Taiwan Fair Trade Commission (FTC) adopted a decision of fining several companies, including Song Yang Technology Co., Ltd., for selling “eco-friendly indoor slippers” on various e-commerce platforms and in physical stores.

These companies displayed their product advertisements with photos and claimed “Patent number: D144859” on the products. However, as the patent right had already been revoked by the Taiwan Intellectual Property Office (TIPO), the advertisement was inconsistent with the facts and violated Article 21 (1) of the Fair Trade Act. Hence, Song Yang Technology Co., Ltd. and Test Rite International Co., Ltd. (HOLA) were fined NT$200,000 and NT$80,000 respectively. In addition, other several e-commerce platforms have also been warned for their illegal online advertisements.¹

The disputed goods

According to provisions in Article 98 of the Taiwan Patent Act, “The patent certificate number shall be marked on the patented article. If such marking cannot be fixed on the patented article, the patentee may make such marking on the labels or packaging, or make such marking in a distinct way sufficient to draw people’s attention. Where no patent marking is made, evidence shall be produced when claiming damages to prove that the infringer knows or has a reason to know that the said article is under patent protection.” Therefore, patent marking is not mandatory but can reduce the burden of proof of patentees when claiming damages and may help to claim double damages for willful infringement.

Additionally, Article 21 (1) of the Taiwan Fair Trade Act stipulates that “No enterprise shall make or use false or misleading representations or symbols on the matter that is relevant to goods and is sufficient to affect trading decisions on goods or in advertisements, or in any other way make it known to the public.” According to Article 42 (1) of the Taiwan Fair Trade Act, violators will be ordered to cease therefrom, rectify its conduct within the time prescribed in the order; in addition, it may assess upon such enterprise an administrative penalty of no less than fifty thousand and no more than twenty-five million New Taiwan Dollars. Also, if a violator infringes upon the rights and interests of another, the patent owner can also claim damages based on the provisions in Article 30 of the Taiwan Fair Trade Act.

Therefore, patentees should pay special attention to the regulations of the Taiwan Fair Trade Act when marking a product with patent information.