Which trademark rights have been exhausted by the trademark owner or its licensee? In this regard, there are the doctrine of exhaustion of the right to use, the doctrine of exhaustion of the right to prohibit, the doctrine of exhaustion of the right to sell and the doctrine of implied license to use.

(1) The theory of exhaustion of the right to use.

This theory holds that the owner of a registered trademark legally puts his goods into circulation, and after obtaining consideration from the buyer, the right to use the trademark expressed on the goods will be extinguished. Therefore, no matter how the buyer continues to circulate the goods, it will not damage the trademark rights of the owner of the registered trademark. Disadvantages of this view:

First, as a trademark, consumers often recognize the goods identified by a certain trademark and establish loyalty to a certain trademark (brand). And the goods attached to the trademark have been used for a long time. Therefore, many businesses spend a lot of money to promote a certain trademark. If according to the theory of exhaustion of the right to use, after the trademarked goods are sold, the trademark owner's right to use is exhausted, and the buyer can dispose of the trademark at will when selling it again. If the trademark is torn off, then the trademark owner or licensee will be Failure to make its trademark known to the final consumers of its products will make the trademark owner's efforts to enhance the reputation of the trademark in vain. This is obviously unfair to the trademark owner.

Second, if according to this theory, the trademark owner’s right to use is exhausted, the buyer can also replace the product with another trademark and continue to circulate it, which is the so-called “reverse counterfeiting” behavior. This behavior is expressly prohibited by law. Article 52 of the "Trademark Law" stipulates that "without the consent of the trademark registrant, changing the registered trademark and putting the goods with the changed trademark into the market" is an act that infringes the exclusive right to use the registered trademark. There are also typical cases in this regard in practice. For example, the Maple Leaf and Crocodile trademark dispute occurred in Beijing in 1994. Tongyi Company, an authorized distributor of Singapore Crocodile Company in Beijing Parkson Shopping Center, purchased "Maple Leaf" brand clothing produced by Beijing Garment Factory, tore off the "Maple Leaf" registered trademark logo, replaced it with the Crocodile trademark and sold it at a high price. The Beijing Garment Factory responded to this Tongyi Company and other defendants filed an infringement lawsuit. The case ended with the defendant infringing the registered trademark rights of the "Maple Leaf" trademark. This also proves the error of the theory of exhaustion of rights of use.

Third, the function of a trademark is to distinguish the producer of the goods, which is closely related to the after-sales service of the goods. If quality problems occur when consumers use goods with trademark rights, they can find the manufacturer of the goods through the trademark, making it easier to repair and replace the goods. According to the theory of exhaustion of use rights, after the goods with trademark rights are sold, the intermediary's behavior of disposing of the original trademark at will prevents consumers from finding the source of the goods, which is not conducive to the after-sales service of the goods. Especially for some products with high technological content, apart from the producers, middlemen generally do not have the ability to repair them. Therefore, from this perspective alone, the theory of exhaustion of rights is seriously harmful to the protection of consumer rights.

Fourth, the laws of most countries have explicit provisions or implicit permissions. When the quality of the goods with trademark rights changes during the sale process, continuing to sell them will be harmful to the reputation of the trademark. , the trademark owner can stop the continued sale of the trademarked goods based on the exclusive right to use the two trademarks. For example, Article 13 of the European Union Trademark Regulations stipulates that "the owner of a ***tongti trademark has no right to prohibit the use of *** on goods marked with the trademark that have been placed on the ***tai market by him or with his consent. Same trademark, unless the trademark owner has legitimate reasons to object to the continued sale of the goods, especially if the quality of the goods has changed or been damaged after being put on the market. "Also as Article 23, Paragraph 3 of the current Taiwan Trademark Law stipulates, "Attachment. If goods with a trademark are traded in the market by the trademark owner or someone with his consent, the trademark owner shall not claim trademark rights for the goods. However, in order to prevent the goods from deteriorating or being damaged or for other legitimate reasons, This is not the case.” Based on the meaning of the right to use mentioned above, it is obvious that the basis for the trademark owner to implement this sales ban is the right to use the trademark. Therefore, the doctrine of exhaustion of the right to use is contrary to this.

It can be seen from the above discussion that although the theory of exhaustion of right to use can solve the legality problem of the buyer after the sale of trademarked goods, it does not protect the trademark owners, consumers and other legal entities. rights are disadvantageous and can easily lead to market chaos and unfair competition. Therefore, after the trademarked goods are sold for the first time, the trademark owner’s right to use the registered trademark has not been exhausted.

(2) The theory of exhaustion of the right to prohibit.

This theory holds that if a validly registered trademark is affixed to goods with the permission of the trademark owner, further resale or distribution of the goods, or if the same trademark is attached again, does not require permission again ( The blueprint for this view is the provisions of Article 13 of the European Union Trademark Regulations). After the goods are sold, the trademark owner has no right to prohibit third parties from using the trademark for the goods unless there are legitimate reasons. This doctrine not only helps protect the rights of buyers, but is also harmful to the rights and interests of trademark owners and consumers. However, it must be emphasized that the exhaustion of the right of prohibition here only exists on the goods sold by the trademark owner, which does not mean that middlemen have the right to use the registered trademark of the trademark owner on the goods they produce.

(3) The theory of exhaustion of sales rights.

Some scholars see from the reasons for the exhaustion of trademark rights theory that the focus of the problem lies in the fact that whether the buyer enjoys the right to resell. Therefore, it can be deduced that the trademark owner has exhausted the right to sell when selling trademarked goods. The unreasonable aspects of this theory:

First, the object of the right to sell is the trademarked goods, not the trademark. However, as mentioned above, the rights protected by trademark rights are the rights generated based on trademarks, that is, trademark rights, but the rights generated by goods based on trademark rights are not protected. Therefore, trademark rights do not belong to trademark rights, let alone the exhaustion of trademark rights.

Secondly, goods with trademark rights are movables, and the rights generated based on them naturally belong to the category of property rights. When the buyer purchases goods from the trademark owner, with the transfer of ownership of the trademarked goods, the trademark owner's right to sell the trademarked goods will naturally be extinguished. This has nothing to do with the trademark owner's trademark rights. Therefore, The issue of exhaustion of trademark rights cannot be explained by the elimination of the right to sell goods with trademark rights.

(4) Implied license (authorization) of trademark use.

Some scholars use the implicit license to use trademarks to explain the theory of exhaustion of trademark rights, believing that "in the process of vertical resale of goods from manufacturers, sellers, retailers to consumers, there are already The use of a trademark is implicitly authorized, and at the time of resale, the exclusive right to use the trademark has been exhausted, and subsequent use of the trademark is not subject to the exclusive right but is illegal. "Implied authorization or implied permission to use is illegal. It refers to the substantive licensed use behavior performed by the licensor and the licensee without signing a license contract, and its foothold is the licensed use. It is incorrect to understand the exhaustion theory of trademark rights in terms of licensed use. Reflected in:

First, the licensed use of a trademark means that the trademark owner allows the licensee to use the trademark owner's registered trademark on the goods manufactured by the licensee. The trademark exhaustion theory is aimed at the goods manufactured by the trademark owner. The objects of the two are different.

Second, Article 40, Paragraph 1, of my country’s Trademark Law stipulates that “the licensor shall supervise the quality of the goods on which the licensee uses its registered trademark.” In practice, due to trademark rights Goods may be resold many times after being sold by the trademark owner, and it is very difficult for the trademark owner to supervise the resellers to supervise the trademarked goods. In licensed use, such multiple sublicensing is not allowed.

Third, Article 40, Paragraph 2 of my country’s Trademark Law stipulates that if someone is licensed to use another person’s registered trademark, the name of the licensee and the place of origin of the goods must be marked on the goods using the registered trademark. . After the goods with trademark rights are sold, the buyer often resells the goods with trademark rights by keeping the goods as they are, often without adding his or her name or place of origin on the goods. Therefore, it is not feasible to explain the exhaustion theory of trademark rights based on the implied license to use the trademark.

To sum up, it is unscientific and unreasonable to use the general term "exhaustion of trademark rights". It is also easy for people to misunderstand and mistakenly think that the trademark owner has exhausted all trademark rights.

In essence, in order to balance the rights of both the trademark owner and the buyer, after the trademarked goods are sold, the trademark owner has exhausted only the right of prohibition in the exclusive right to use the trademark, that is, the trademark rights have been partially exhausted. We must have a clear understanding of this to make clear provisions in the law to avoid disputes arising from it in practice.

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