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[Taiwan] Issuing Warning Letters to Competitors: Precautions to Avoid Legal Risks

[ November 22, 2024 ] >Back
When a rights holder believes their patent, trademark, or copyright has been infringed, they may choose to issue a warning letter to the competitor. However, issuing such a letter improperly can cause undue harm, particularly if it involves the competitor or their business partners. This could lead to scrutiny by the Fair Trade Commission, as outlined in the "Fair Trade Commission Disposal Directions (Guidelines) on the Reviewing of Cases Involving Enterprises Issuing Warning Letters for Infringement on Copyright, Trademark, and Patent Rights".

A. Scope of Warning Letter Regulations
 
  • Applicable Targets: Warning letters may involve any trading partners or relevant individuals associated with your competitor.
  • Formats: The warning letter may be issued in various forms, such as formal warning letters, lawyer’s letters, public notices, or advertising notices.

 
The format is not limited to written documents named "warning letter" or "lawyer’s letter." Any communication, such as an internet post, a magazine announcement, an advertising notice, or an email that adequately informs the recipient, can be considered a warning letter.

B. Preliminary Procedures Before Issuing Warning Letters
 
1. With Recognition of Infringement by Courts or Authorities:
  • Obtain a court decision affirming infringement of copyright, trademark, or patent rights.
  • Accept mediation or arbitration results that confirm the existence of infringement.
  • Obtaining an infringement analysis report by a professional institution, and notify the potential infringer (such as the manufacturer, importer, or agent) in advance or concurrently before requesting the removal of the infringement.
2. Without Recognition of Infringement by Courts or Authorities:
  • Notify the alleged infringer in advance before seeking additional remedies.
  • Outline the rights being infringed and their scope, as well as the potential impact on the rights holder.

C. Common Improper Warning Letter Practices
 
  • No Preliminary Procedure: Issuing a letter without aforementioned necessary preliminary steps.
  • Insufficient Content: Failing to provide enough details regarding the rights and alleged infringement.
  • Unfounded Claims: Issuing a warning letter despite lacking a proper understanding of the intellectual property.
  • Ownership Transfer Not Completed: Issuing a letter without properly registering ownership of the rights.
     
♦ Legal Responsibilities for Improper Warning Letters
Failure to follow proper procedures when issuing a warning letter may constitute a violation of Article 25 of the Fair-Trade Act. This could result in fines ranging from NT$50,000 to NT$25,000,000, depending on the circumstances. Continued non-compliance could lead to additional fines.

D. Recommended Practices for Issuing Warning Letters
 
1. Obtain Recognition of Infringement from courts or authorities before proceeding.
2. Notify Competitors in advance, allowing them to address the dispute.
3. Detail the Scope of Rights: Clearly state the content and scope of your rights and how they have been infringed in the warning letter.
 



♦ Note for Utility Model Patent Holders: Since utility models are only subject to formality examination, when issuing a warning letter for a utility model patent, it is necessary to attach a professional infringement analysis report along with a technical evaluation report for a utility model patent to enhance its credibility.


Source: https://www.tipo.gov.tw/tw/cp-56-935795-b85b6-1.html