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With the recent amendments to the Intellectual Property Case Adjudication Act, the Trademark Act, and other intellectual property laws, these developments have greatly assisted in establishing Taiwan as a user-friendly destination for intellectual property litigation.

The following sources contain statistical databases regarding cases overseen by the Intellectual Property Commercial Court (IPCC) of Taiwan:

1. 1. The official website of the Judicial Yuan of Taiwan;
   2. The official website of the IPCC; and
   3. Analysis of Trial Performance Indicators for Various Cases Received by the Intellectual Property Court since its Establishment 10 Years Ago and Analysis of Trial Practices of the Related Litigation System (2008-2017).

IP litigation trends

Litigation can be completed within a year. On average, first-instance trials held by the IPCC (including civil, criminal and administrative) are completed within a year, with the average completion time for a trial in the first quarter of 2025 at 265 days. However, the average duration of a trial is slightly increasing on a year-on-year basis.

In terms of the type of litigation between the third quarter of 2008 and the first quarter of 2025, civil cases take the longest to complete, with an average of 213 days in the first instance and 292 days in the second instance. In addition, the average duration of administrative cases in the first instance is 174 days, while the average duration for criminal cases is 189 days at the first instance and 143 days at the second instance, respectively.

In terms of the subject of litigation between the third quarter of 2008 and the first quarter of 2025, trade secrets cases have the longest average trial duration at nearly a year, followed closely by patent cases with an average of eight to nine months.

Original judgments are usually maintained. The chances of maintaining the original judgment in first and second trial appeals are very high, ranging from about 88% to 96% per year between 2013 and 2024, indicating the importance of the first trial judgment and the need to sufficiently prepare for it.

Success rates of IP litigation cases in Taiwan. According to the Analysis of Trial Performance Indicators for Various Cases Received by the Intellectual Property Court since its Establishment 10 Years Ago and Analysis of Trial Practices of the Related Litigation System (2008-2017), the success rates of different types of IP litigation cases in Taiwan between 2008 and 2017 are as follows:

1. 1. Civil cases. The plaintiffs’ average success rate in first instance civil litigation at the IPCC was 34.03%, while the success rate at the district courts was 44.43%. In terms of the subject of litigation, the plaintiffs’ success rate at the IPCC was 53.6% for trademark cases and 20.78% for patent cases.
   2. Administrative cases. The Intellectual Property Office is typically one of the parties to a first instance administrative litigation case before the IPCC, where the plaintiffs’ average success rate was 21.22%, calculated from the establishment of the court.
   3. Foreign-related cases. Cases with foreign plaintiffs usually have a higher success rate than the overall average. Foreign plaintiffs have a 54.44% success rate in first instance civil cases, a 79.25% success rate in trademark cases, and a 32.18% success rate in patent cases. In the first instance of administrative litigation, foreign plaintiffs have a success rate of 27.29%, with trademark cases seeing the highest success rate, at 27.97%.

According to the official website of the IPCC, it is also notable that the probability that an invalidity defence in a patent case would be accepted by the court was as high as 49.33% between the third quarter of 2008 and the first quarter of 2025.

Preparing for IP litigation

As Korean companies are likely to engage in IP litigation as an IP owner, the following provides an overview of the preparation for IP litigation in Taiwan.

Investigation and verification of suspected infringement. An IP owner shall bear the burden of proof in a dispute related to its IP rights. Before initiating any legal action against an alleged infringer, it is normal to conduct private investigations to identify the infringing acts and collect evidence concerning the alleged infringing acts. The injured can also consider filing a petition for evidence preservation to collect evidence of infringement. As such, evidence may be preserved through the compulsory execution force of the court.

Assessment of the right. It is quite likely that an alleged infringer will file a cancellation action with the Intellectual Property Office against the asserted trademarks or patents after any enforcement action is taken, or make trademark or patent validity challenges before the court hearing the infringement case concerned. In that case, an assessment of trademark or patent validity is required. To verify whether an IP right has been infringed, we highly recommend conducting a necessary assessment and preparing an assessment report first. Under current practice, a plaintiff always attaches the assessment report prepared by a law firm or a third-party expert or an institution to support their complaint filed with the court.

Cease and desist letter. While the issuance of a cease and desist letter is not a prerequisite to filing a lawsuit, it may help to prove an intentional infringement if the alleged infringer continues to infringe after the letter is issued. However, the injured may choose to issue a letter after the necessary investigation is conducted and the evidence is collected. Otherwise, a letter may alert the infringer and make the investigation and evidence collection very difficult. It is important for the injured to make sure that issuing such a letter shall not create an unfair competition issue.

Security bond payment. If the plaintiff is a foreign company that has not been recognised in Taiwan, the court may, under the defendant’s motion, order it to pay a security bond for the court fees for the second-instance and Supreme Court levels, and the attorney fees for the second-instance and the Supreme Court level.

Key observations

Rights enforcement. Statistics from the IPCC indicate a high probability of a patent being deemed invalid. Korean companies are thus advised to assess whether an IP right is strong enough to go through the whole proceedings before initiating litigation in Taiwan.

Specifically, the injured party should first confirm the ownership and validity of the right in question. It is advisable to select an IP with strong validity, and one that is easy to prove infringement and damages for. The amount of damages should also be calculated to determine the cost-effectiveness of litigation.

Preparation for first-instance trial. Statistics from the IPCC indicate that higher-instance courts typically uphold first-instance judgments, meaning few cases are reversed at the higher-instance level. Hence, the first-instance trial is crucial, and the rights holder should be fully prepared.

Trademarks and design patents are recommended. Compared to copyright and patents, trademark holders can have the highest success rate at the IPCC. Unlike copyright and patents, trademarks can be renewed indefinitely, as long as they are in use and renewal fees are paid. Trademarks are easier to register with customs and online platforms for enforcement against counterfeiting.

Compared to copyright and patents, trademark holders can have the highest success rate at the court; compared to invention patents and utility model patents, design patents are easy to obtain, prove infringement for and win. Korean companies are thus advised to apply for more trademarks and design patents to enhance the soundness of their IP rights.

Announcement of rights enforcement. Businesses may wish to make a public announcement or notify their clients of their rights enforcement. However, Korean companies should be aware of the risk of violating the Taiwanese Fair Trade Act, making sure that their announcement or notification is neutral and based on sufficient evidence.

Otherwise, there is a risk for the counterparty arguing that such an announcement constitutes unfair conduct capable of affecting trading orders under the Taiwanese Fair Trade Act.

Importance of due diligence. When investing in an IP-related company in Taiwan, Korean companies should conduct thorough due diligence of the target. The items suggested to be confirmed include the following:

1. 1. The IP owned by, used by, or licensed to the target, including those in the process of application (special attention should be paid to ownership rights in cases where the rights were developed by employees, or where they were jointly developed or commissioned by external parties);
   2. Licensing or assignment agreements concerning the IP to or from the target; and
   3. Any disputes related to the target’s IP and any claim against the target for infringement of another’s IP.

LEE AND LI, ATTORNEYS-AT-LAW
8F, No. 555, Section 4
Zhongxiao E Rd
Taipei 11072
Taiwan, ROC
Tel: +886 2 2763 8000
Fax: +886 2 2766 5566
Email: attorneys@leeandli.com