Litigation of trademark infringement

1. Trademark infringement

In practice, there are 14 kinds of trademark infringement:

Article 52 of the trademark law: any one of the following ACTS shall be an infringement on the right to exclusive use of a registered trademark:

(1) using a trademark that is identical with or similar to the registered trademark on the same kind of commodities or similar commodities without the permission of the trademark registrant;

(2) selling commodities that infringe upon the right to exclusive use of a registered trademark;

(3) forging or manufacturing without authorization the marks of a registered trademark of another person, or selling the marks of a registered trademark forged or manufactured without authorization;

(4) changing a registered trademark of a trademark registrant and putting the goods with that trademark change back on the market without the consent of the trademark registrant;

(5) causing other damage to the exclusive right to use a registered trademark of another person.

Article 13 of the trademark law: where an application for registration of a trademark on an identical or similar commodity is for the copying, copying or translation of a well-known trademark of another person that has not been registered in China and is likely to cause confusion, the trademark shall not be registered and shall be prohibited from use.

Where an application for registration of a trademark on a different or dissimilar commodity is made to copy, copy or translate a well-known trademark registered in China by another person, thus misleading the public and possibly harming the interests of the registrant of that well-known trademark, the trademark shall not be registered and shall be prohibited from use.

Article 15 of the trademark law: without authorization, an agent or representative shall register the trademark of the principal or the represented in its own name. If the principal or the represented raises an objection, the trademark shall not be registered and shall be prohibited from use.

Article 50 of the regulations for the implementation of the trademark law: an act that infringes upon the right to exclusive use of a registered trademark as mentioned in item (5) of article 52 of the trademark law shall be one of the following:

(1) misleading the public by using a mark identical with or similar to the registered trademark of another person in the name of a commodity or in the decoration of a commodity on the same kind of commodity or similar commodity;

(2) intentionally providing convenient conditions for warehousing, transportation, mailing, concealment, etc., for an act that infringes upon the right to exclusive use of a registered trademark of another person.

Article 1 of the interpretation of the Supreme Court on several issues concerning the application of law in the trial of trademark civil dispute cases (interpretation [2002]32) :

(1) using the words identical with or similar to the registered trademark of another person as the prominent use of the enterprise's name on the same or similar commodities, which is likely to mislead the relevant public;

(2) copying, imitating or translating a well-known trademark registered by another person or its main part to be used as a trademark on different or dissimilar commodities, misleading the public and causing possible damage to the interests of the registrant of that well-known trademark;

(3) registering the same or similar words as others' registered trademarks as domain names, and conducting e-commerce of relevant commodity transactions through such domain names, which may easily lead to misrecognition by the relevant public.

2. Scope of protection of the right to exclusive use of trademark

Article 51 of the trademark law: the right to exclusive use of a registered trademark shall be limited to the trademark that has been approved for registration and the commodity that has been approved for use.

3. Trademark infringement judgment

Interpretation of the Supreme Court on several issues concerning the application of law in the trial of trademark civil dispute cases (interpretation [2002] no.32)

Article 9 the trademark provided for in paragraph (1) of article 52 of the trademark law is the same, which means that the trademark accused of infringement is compared with the registered trademark of the plaintiff, and there is basically no visual difference between the two. Article 52 of the trademark law of the first paragraph (a) the trademark approximation, is refers to the accused of infringement of trademark compared with the plaintiff's registered trademark, the glyph, pronunciation and meaning of the text or graphic composition and color, or the combination of whole structure similar to that of all the elements or the stereo shape, color combination, easy to make the relevant public to mistake the source of the goods or think of its source and the plaintiff's registered trademark commodities have a specific contact.

Article 10 the people's court shall, in accordance with the provisions of paragraph 1 of article 52 of the trademark law, determine whether a trademark is the same or similar in accordance with the following principles:

(1) take the general attention of the relevant public as the standard;

(2) a comparison shall be made between the whole trademark and the main parts of the trademark, and the comparison shall be made separately under the condition of object isolation;

(3) in judging whether a trademark is similar, consideration shall be given to the salience and popularity of the registered trademark for which protection is requested.

Article 11 the similar commodities mentioned in article 52, paragraph (1) of the trademark law refer to those commodities which have the same functions, purposes, production departments, sales channels, objects of consumption, etc., or which are generally considered by the relevant public to have specific connections and are likely to cause confusion. Similar services refer to the services that have the same purpose, content, method and object of the services, or that are generally considered by the relevant public to have specific connections and are likely to cause confusion. Similar goods and services refer to the specific connection between goods and services, which is easy to confuse the relevant public.

4. Trademark infringement defense

· subject defense

· defense of rights defects

· withdraw three defenses

· trademark dispute defense

· non-defendant production defense

· the defense of different or similar trademarks

· different commodities and similar defenses

· fair use defense

· no ongoing infringement defense

· no profit defense

· plaintiff has no sales defense

Article 49 in the regulations for the implementation of the trademark law, where a registered trademark contains the general name, figure or model of the commodity, or directly represents the quality, main raw material, function, use, weight, quantity or other characteristics of the commodity, or contains a place name, the holder of the exclusive right to use the registered trademark shall have no right to prohibit others from using the trademark in a proper way.

Trademark contract litigation

1. Trademark ownership litigation

Trademark ownership litigation mainly occurs in three aspects: trademark transfer, trademark ownership and trademark inheritance. An application for the transfer of trademark right shall also be filed in accordance with the trademark law because of the succession of a trademark. In practice, ownership disputes arising from trademark transfer mainly include the following three situations:

(1) ownership disputes arising from the invalidation or revocation of the trademark transfer contract

(2) ownership disputes arising from unauthorized transfer of ownership by external parties (including agents) without consent

(3) disputes arising from unauthorized transfer of company insiders (including legal representatives, directors and shareholders)

2. Trademark transfer contract litigation

The ordinary trademark transfer contract is subject to the adjustment of the contract law, but the transfer shall take effect after being registered and announced in accordance with article 39 of the trademark law.

In practice, when handling trademark transfer contract disputes, lawyers shall apply for trademark preservation as early as possible so as to avoid trademark being transferred, cancelled, permitted to be used by others or pledged in the process of litigation.

In addition, a civil action against the invalidation of a contract for the transfer of a trademark may also be filed with the trademark office of the state administration for industry and commerce as the defendant, requesting the people's court to order the defendant to revoke the administrative act of approving the transfer.

3, trademark licensing contract litigation

Trademark licensing contracts are also regulated by the contract law. Although article 40 of the trademark law stipulates that trademark licensing contracts shall be filed with the trademark office for the record, the absence of filing shall not affect the validity of the licensing contracts.

Article 19 of the Supreme Court's interpretation of certain issues concerning the application of law in the trial of trademark civil dispute cases (interpretation [2002] no. 32)

If the trademark owner transfers a registered trademark after the signing of a trademark license contract, the principle of "sale without breaking lease" shall apply, and the licensee may continue to use the trademark during the period agreed in the license contract.

4. Trademark pledge contract litigation

Article 79 of the guaranty law: if the property right in the exclusive use of trademark, patent right and copyright that can be transferred according to law is pledged, the pledgor and the pledgee shall conclude a written contract and register the pledge with their administrative department. The pledge contract shall become effective as of the date of registration.

If the trademark pledge contract is not registered by pledge, the trademark holder shall be liable for the negligence in concluding the contract if the pledge contract is not effective.

Article 80 of the guaranty law: after the rights stipulated in article 79 of this law are pledged, the pledgor may not transfer or license others to use them, but may transfer or license others to use them if the pledgor and the pledgee agree through consultation. The transfer fee or license fee obtained by the pledgor shall be used to pay off the obligatory right secured by the pledgee in advance or be deposited with the third party agreed with the pledgee.

Where the pledgor transfers or permits others to use the trademark rights already pledged without consent, the transfer or licensing shall be deemed invalid. If losses are caused to the pledgee, the pledgee shall bear civil liability. At this time, the pledgee can choose to breach of contract or infringement (infringement of the pledgee's real right for security) for litigation.

Trademark administrative litigation

1. Trademark right confirmation lawsuit (with the trademark review and adjudication board as the defendant)

Article 32 of the trademark law: the trademark office shall notify the applicant for trademark registration in writing of the rejection of the application and the refusal to publish the trademark. The trademark review and adjudication board shall make a decision and notify the applicant in writing. If a party is not satisfied with the decision of the trademark review and adjudication board, it may bring a suit before a people's court within 30 days from the date of receipt of the notification.

Article 33 of the trademark law: if an opposition is filed against a trademark that has been preliminarily examined and approved and has been publicly announced, the trademark office shall hear the statement of facts and reasons by the opponent and the person against whom the opposition is filed, and make a ruling after investigation and verification. If a party is not satisfied with the decision, he may, within 15 days from the date of receipt of the notification, apply to the trademark review and adjudication board for a reexamination. If a party is not satisfied with the ruling of the trademark review and adjudication board, it may bring a suit before a people's court within 30 days from the date of receipt of the notification. The people's court shall notify the other party to the trademark reexamination proceedings to participate in the proceedings as the third party.

Article 43 of the trademark law: after the trademark review and adjudication board has made an order to maintain or cancel a registered trademark, it shall notify the parties concerned in writing. If a party is not satisfied with the ruling of the trademark review and adjudication board, it may bring a suit before a people's court within 30 days from the date of receipt of the notification. The people's court shall notify the other party to the trademark adjudication procedure to participate in the litigation as the third party.

2. Litigation arising from the specific administrative act of the authority confirming the right (with the state trademark office as the defendant)

Since the trademark office of the state administration for industry and commerce has not formulated the administrative review procedure like the state intellectual property office, it has not clearly defined which administrative ACTS can be sued or not. Therefore, only in accordance with article 2 of the administrative procedure law, if the administrative counterpart considers that the specific administrative act of the administrative organ infringes upon its legitimate rights and interests, it can file a lawsuit.

In practice, there are two main types of administrative litigation caused by specific administrative ACTS of trademark confirmation authorities:

(1) the specific administrative act taken by the trademark office in the process of trademark transfer, change, license filing, pledge registration and other procedures infringes upon the legitimate rights and interests of the other party.

(2) in the course of trademark administration, the trademark office infringes upon the lawful rights and interests of the specific counterpart by making administrative ACTS such as approval, instruction or reply to an administrative organ at a lower level.

"Jinhua ham" case: the trademark owner of "jinhua ham" filed an administrative lawsuit against the "jinhua featured ham" which was deemed as legitimate use after the approval of the zhejiang administration for industry and commerce.

Litigation arising from the law enforcement decision of the local trademark administration authority

It is mainly the administrative litigation caused by the administrative penalties made by the local administrative departments for industry and commerce at all levels against the trademark law enforcement activities.

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