Unauthorized use of product pictures bearing the registered trademark logo of others as product promotional pictures on the official website to promote on the Internet, does it infringe on the exclusive rights of registered trademarks enjoyed by others?

1. The meaning of the trademark offer to sell

1. The source of the offer to sell

The offer to sell originates from the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) )" Article 28, after China joined the WTO, in response to the need to integrate the patent system, "promise to sell" was also introduced into Article 11 of the "Patent Law". However, the TRIPS Agreement did not define "promise to sell", so the Supreme People's Court Article 24 of the "Several Provisions on Legal Issues Applicable in the Trial of Patent Dispute Cases" explains: Offering to sell means offering to sell goods by means of advertising, displaying in shop windows, or exhibiting at trade fairs, etc. express. It can be seen from this that a promise to sell is an act of clearly indicating a willingness to sell a certain product to a specific or unspecific relevant public. The original intention of the legislation is to control patent infringing sales behavior in the preparatory stage before implementation, thereby improving the patentee's efficiency in stopping infringement, reducing the cost of stopping infringement, and ultimately effectively safeguarding the patentee's exclusive rights.

2. The meaning of trademark offer to sell

Since offer to sell in the sense of patent law refers to specific behaviors performed for the purpose of sales, such as through advertisements, exhibitions, and public demonstrations , sending price lists, auction announcements, bidding announcements, and reaching sales agreements, etc. to indicate the sale of patented products. These behaviors correspond to the use of trademarks stipulated in Article 48 of the Trademark Law: The use of trademarks as mentioned in this Law refers to the use of trademarks on goods, commodity packaging or containers, and commodity transaction documents, or the use of trademarks. Trademarks are used in advertising, exhibitions and other commercial activities to identify the source of goods. In other words, the use of trademarks is also used to identify the source of goods/services for the purpose of selling goods or providing services.

According to the method of public use, the use of trademarks can be divided into use in sales and circulation, use of advertising media, exhibitions (including exhibitions in stores/online stores and exhibitions at trade fairs) and other commercial activities. use. Among them, the promise of sale of the trademark should include the latter two uses, namely the use of advertising media and commercial activities such as exhibitions. It can be seen that a trademark promise to sell is a subordinate concept of trademark use, which can be defined as: an expression of intention to sell trademarked products through advertising, exhibitions (including exhibitions in stores/online stores and exhibitions at trade fairs) and other commercial activities.

2. Difficulties in the legal application of trademark offer for sale

Trademark offer for sale is a legal term that has only been proposed in recent years. my country’s Trademark Law and related regulations have not yet clearly stipulated it. So in judicial practice, does the promise to sell a trademark constitute an infringement? If the promise to sell constitutes a trademark infringement, which part of Article 57 of the Trademark Law should be applied? There is still controversy.

1. The first view: Promising sale of a trademark constitutes trademark infringement.

In the trademark infringement dispute case between Dongguan Huamei Food Co., Ltd. and Hunan Xiangmei Food Co., Ltd. (2015) Xianggao Fenmin Sanzhongzi No. 47, the Hunan Provincial Higher People’s Court held that: although the plaintiff Huamei Company No actual product was purchased (note that the accused infringing product is the "Liyue Chuanqing" series of mooncakes), but the types of mooncakes that Xiangmei Company entrusted Hongdayuan Company to process and produce include the three types of mooncakes that are the accused infringing products. Xiangmei Company also The accused infringing products were publicized in detail on its website and brochures, including the type, quantity and sales price of the included mooncakes. Therefore, Xiangmei Company not only produced the accused infringing products, but also sold the accused infringing products. In addition, its other two series of mooncakes, "Fugui Nian Nian" and "Thanksgiving Moon" mooncakes, have been sold. The lack of actual sales of the "Li Yue Qing Qing" series of mooncakes is inconsistent with business common sense. Accordingly, it was determined that the defendant had committed trademark infringement in accordance with Article 52 (1) and (2) of the 2001 Trademark Law.

2. The second view: Promising sales of a trademark does not constitute trademark infringement.

In the trademark infringement dispute case between Jilin Changyuan Pipe Industry Co., Ltd. and Beijing Aerospace Caesar International Investment Management Co., Ltd. (2016) Jing 73 Min Zhong No. 934, the second instance of Beijing Intellectual Property Law held that: Jilin Changyuan The use of introductory text on its business website is a trademark use stipulated in Article 48 of the Trademark Law "for use in advertising, exhibitions and other commercial activities to identify the source of goods", which is a trademark use for The act of displaying a product for sales purposes is a promise to sell. Therefore, Article 57(3) of the Trademark Law should be applied to this case. Selling products produced by third parties that falsely use the exclusive rights to the registered trademark of Beijing Aerospace Caesar Company. In response to this situation, Beijing Aerospace Caesar Company (the plaintiff) should bear the burden of proof. Since it cannot submit the physical objects of the accused infringing products and Jilin Changyuan Company insists that it has not actually sold the infringing products, it cannot be determined that Jilin Changyuan Company has sold the infringing products on its official website. The products involved in the case promised to be sold online were products that infringed upon the exclusive rights of the registered trademark of Beijing Aerospace Caesar Company.

According to the above two cases, the Hunan Provincial Higher People’s Court held that the act of offering to sell a trademark constitutes two infringements at the same time: 1. Using a trademark that is the same or similar to its registered trademark on the same product or similar products The infringement act; ② The infringement act of selling goods that infringe the exclusive rights of a registered trademark. The Beijing Intellectual Property Court held that the right holder’s claim that a trademark is offered for sale should be governed by Article 57 (3) of the Trademark Law, that is, the infringement of selling goods that infringe the exclusive right to use a registered trademark, and pointed out that the right holder should The infringer shall bear the burden of proof for actually selling the infringing products, otherwise it cannot be determined that the promise to sell the products involved constitutes an infringement of the exclusive rights of a registered trademark.

3. Identification of infringement of trademark promise to sell

1. The difference between trademark promise to sell and sale

To reasonably resolve the legal characterization of trademark promise to sell, you should first Clarify the difference between trademark offer to sell and sale:

First, the connotations of the two are different. Trademark offer to sell belongs to commercial activities such as advertising or exhibitions, and it can be an offer advertising behavior that meets the conditions for the conclusion of a contract. , it can also be the act of advertising an offer and invitation to the unspecified relevant public, or it can be the act of displaying goods in a non-contractual sense. The sales act is a contractual act in which the buyer delivers the price and the seller delivers the subject matter.

Secondly, the delivery conditions of the two are different. A trademark promise to sell does not require the delivery of the subject matter as a constituent element, while the sale should require the delivery of the subject matter (including intangible assets) as a constituent element.

Thirdly, the degree of damage to the exclusive rights of trademarks is different between the two. The trademark offer for sale is in the preparation stage of sales and is a display and advertising behavior based on sales purposes, which will cause or may cause the relevant public to have doubts about the goods. An impression or idea of ??confusing origin. The sales of trademarked products have already resulted in trading behavior, which has objectively caused confusion to the relevant public about the source of the goods, and has divided commercial transaction opportunities that should belong to the registered trademark rights holders. The extent of the damage is far greater than the promised sales of the trademark.

2. Legal application of trademark offer for sale

According to the above explanation, trademark offer for sale is actually for the purpose of sales, advertising and exhibition of trademarked products in the field of commercial circulation. First of all, its behavior is objectively just an expression of intention to sell trademarked products to a specific or unspecific relevant public, and is not the actual delivery of goods. Secondly, subjectively, they hope to obtain trading opportunities through commercial activities such as exhibitions and advertisements. Thirdly, the promise of sale of a trademark is a subordinate concept of trademark use, which belongs to the scope of advertising and exhibition use. It is different from the transaction link of trademark sales and use. Actual sales should not be regarded as a component of the promise of sale. Finally, if the actual sales of a trademark for sale are used as the basis for determining infringement, it will allow and encourage operators who attempt to "free ride" and copy famous brands to use other people's registered trademarks (usually well-known brands) through advertising and exhibitions other than sales. or Zhibajie Intellectual Property Brand), infringing upon the legitimate rights and interests of the exclusive right holders of registered trademarks, and ultimately disrupting the market economic order of fair competition.

Based on this, the author believes that whether a trademark promised to be sold constitutes infringement should be comprehensively judged based on the products promised to be sold and the use of the trademark:

First, the alleged infringer is not registered If the trademark owner authorizes and sells products with the same trademark on the same goods without authorization, it falls under Article 57, Item (1) of the Trademark Law. "Infringement of the use of a trademark that is identical to its registered trademark."

Second, the alleged infringer promises to sell similar trademarked products on the same goods without the authorization of the registered trademark owner, or uses the same or similar trademarked products on similar goods to promise to sell, which can easily lead to If there is confusion, it is an infringement act stipulated in Article 57(2) of the Trademark Law.

To sum up, a trademark offer for sale is a subordinate concept of trademark use. Although there are some conflicts with the provisions of Article 48 of the Trademark Law, the trademark offer for sale has legal connotations, constituent elements and trademark infringement. The consequences of damage are different from those of the sale and use of a trademark. In judicial practice, it has positive legal significance for the characterization of trademark infringement and the discretionary determination of damages.