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INJUNCTION AND REVERSE INJUNCTION CANNOT COEXIST IN TRADEMARK DISPUTES
Article 61 Paragraph 1 of the Trademark Act provides that the owner of rights in a registered trademark may seek damages from an infringer of the mark, and may enjoin such infringement; where there is a likelihood of infringement, the rights holder may seek to prevent such in-fringement. Article 84 of the Copyright Act, and Article 84 Paragraph 1, Article 108, and Article 129 of the Patent Act contain similar provisions with regard to copyrights, invention patents, utility model patents, and design patents. It is accepted in court practice that if a trademark, patent, or copyright is infringed, the rights holder may seek an injunction from the court to prevent the infringer from continuing the infringement.
But what if a party accused of trademark, patent, or copyright infringement asserts that there is no infringement? May it respond to such an accu-sation by demanding that the rights holder must for the time being tolerate its continuation of the allegedly infringing activities or associated commercial activities, and take no action to prevent, obstruct, or interfere with such activities? The Trademark Act, Patent Act, and Copyright Act contain no express provisions on this point.
In its rulings in two 2002 motions to set aside rulings of the Taiwan High Court (one in a trademark infringement case and the other in a patent infringement case), the Supreme Court cited Article 538 of the Code of Civil Procedure, and held that the alleged infringers could make such demands, and could be granted injunctions to that effect. Based on these opinions of the Supreme Court, the courts are also likely to grant similar injunctions in copyright infringement cases and other intellectual property rights in-fringement cases.
Another controversial issue is whether, after a rights holder has obtained an injunction to pro-hibit an infringer from engaging in allegedly infringing activities, the infringer may take out a reverse injunction against the first injunction, thereby preventing its enforcement. The Su-preme Court, in its ruling on a 2005 motion to set aside a ruling of the Taiwan High Court, held that no such reverse injunction should be granted.
The Supreme Court stated that once an injunc-tion is granted by a ruling of the court, it becomes enforceable immediately, without the need for further confirmation; the only remedies against such an injunction are a motion to set aside the injunction. For as long as the injunction remains effective, a party may not seek another injunction with a content that runs counter to that of the first, to obstruct the enforcement of the first injunction. Therefore, an injunction and a reverse injunction against it may not coexist.