The statute of limitations for claiming damages for infringement of intellectual property rights is, in principle, two years, with a maximum of ten years (Paragraph 1, Article 197 of the Civil Code; Paragraph 6, Article 96 of the Patent Act; Paragraph 2, Article 12 of the Trade Secrets Act; Paragraph 4, Article 69 of the Trademark Act; Article 32 of the Fair Trade Act; and Article 89-1 of the Copyright Act, among others). In addition, Paragraph 1, Article 129 of the Civil Code stipulates that the filing of a lawsuit by the right holder may interrupt the running of the statute of limitations. Since Taiwan's civil litigation system does not apply a discovery system similar to that of the United States, it is difficult for a plaintiff (i.e., the right holder) to determine the amount of damages to be claimed in the lawsuit, so it is common for plaintiffs to claim a smaller amount in the complaint, and then supplement and expand the amount of the claim when the court conducts an investigation of the damages during the litigation process. This practice is usually based on Paragraph 4, Article 244 of the Code of Civil Procedure, which states that the plaintiff only needs to indicate in the complaint that the plaintiff is requesting the minimum amount of the entire claim, and the plaintiff can subsequently supplement the statement, within the scope of the cause of action claimed, before the conclusion of the oral argument in the first instance. Since the complaint has already indicated the minimum amount of the “entire claim,” the statute of limitations for the “entire claim” has already been interrupted at the time of the filing of the lawsuit, and even if the plaintiff supplements the statement with the amount of the request before the conclusion of the oral argument in the first instance, the increased amount will not be subject to the statute of limitations.

 

The above-mentioned Paragraph 4, Article 244 of the Code of Civil Procedure stipulates that the plaintiff may supplement the statement of damages "before the conclusion of the oral argument in the first instance." If the plaintiff fails to supplement the statement in the first trial and then supplements the statement before the conclusion of the oral argument in the second instance, is such provision still applicable? Recently, there has been a dispute in practice. On December 24, 2024, the Supreme Court issued Civil Judgment 113-Tai-Shang-Tzu No. 274, which holds a positive view on this issue.

 

In the first trial of the above-mentioned case, the plaintiff filed a lawsuit in the Intellectual Property and Commercial Court (“IP Court”), seeking a permanent injunction to prevent the defendants' trademark infringement and claimed damages, indicating the minimum amount (NTD 1.5 million) to be requested in accordance with Paragraph 4, Article 244 of the Code of Civil Procedure. The IP Court dismissed the plaintiff's claim in the first trial without investigating the claim for damages because it determined that the lawsuit did not constitute an infringement of trademarks, and as a result, the IP Court did not investigate the claim for damages until the second trial. In the second trial, the plaintiff supplemented and expanded the amount requested before the conclusion of oral arguments in the second instance. The defendants argued that Paragraph 4, Article 244 of the Code of Civil Procedure requires the plaintiff to supplement the amount of damages “before the conclusion of the oral argument in the first instance,” which, according to a strict interpretation of the text, means that the portion of the plaintiff's request added at the beginning of the second trial was no longer subject to the application of Paragraph 4, Article 244 of the Code of Civil Procedure, and that the statute of limitations would be interrupted from the time of the supplementation. Therefore, the defendants contended that the plaintiff's increase in claim during the second trial was time-barred. The court of second instance (111-Min-Ying-Shang-Zi No. 6) agreed with the plaintiff's argument and held that the plaintiff's supplemental request for damages in the second trial was not time-barred. After the defendants appealed to the third instance, the Supreme Court held a preparatory proceeding and an oral argument on this legal issue and finally expressed its opinion in the aforementioned Civil Judgment 113-Tai-Shang-Tzu No. 274.

 

The Supreme Court held that the plaintiff had already indicated the "minimum amount" of the "entire claim" at the time of filing the lawsuit, which was in the nature of the "entire claim," and therefore could not file a separate lawsuit for the portion other than the minimum amount. If the plaintiff makes a supplemental statement in the second trial, because the supplement does not exceed the scope of the entire claim, considering that the nature of the supplemental statement in the second trial is similar to that of the supplemental statement in the first trial, and considering that the plaintiff may not file another suit in the future, the plaintiff shall be permitted to make a supplemental statement in the second trial in accordance with Article 463 of the Code of Civil Procedure by applying Paragraph 4, Article 244 of the same code. Since the plaintiff has stated that its claim is the "entire claim" under Paragraph 4, Article 244 of the Code of Civil Procedure, the statute of limitations is interrupted by the filing of the lawsuit, and it does not matter whether the plaintiff's supplemental statement was made at the first trial or the second trial, so the defendants' defense that the supplemental portion of the second trial is subject to the statute of limitations is not justified. The Supreme Court also mentioned that since the entire claim had been made, the plaintiff could not sue for the remaining balance if it was found to be unrequested in the future.