Trademark owner A first signed an exclusive license contract with Party B, then Party A transferred the trademark to uninformed Party C, and then Party B signed an exclusive license contract with uninformed Party D.. At this time, how to determine the ownership of exclusive use license? Can B sue D to stop the infringement and compensate the economic losses? According to the second paragraph of Article 19 of the Supreme People's Court's Interpretation on Several Issues Concerning the Application of Laws in the Trial of Trademark Civil Disputes, if a trademark license contract is not filed in the Trademark Office, it shall not be opposed to a bona fide third party. The third paragraph of Article 43 of the Trademark Law adopted on August 3, 213 also makes basically the same provision. However, how to understand and apply "not against a bona fide third party without filing" in the above cases is still controversial in judicial practice.

first of all, if the prior exclusive licensee files an infringement lawsuit against the subsequent bona fide third party, can the application for stopping the infringement and compensating the losses be supported? Some people think that if the right to use the same trademark is claimed and conflicts arise, the right to use it first should be superior to the right to use it later. Because there is no flaw in the generation of prior rights (both parties have no fault when concluding the license contract). However, the emergence of the latter right is based on the fault of the trademark owner (that is, he violated the promise of the earlier exclusive licensee and concealed the facts of the earlier contract from the later exclusive licensee), which itself is flawed. A flawless civil right conflicts with a flawed civil right, and naturally the former should be superior to the latter. As for the liability of the late licensee, some people think that the late licensee only bears the civil liability for stopping the infringement, while others think that it can be ordered to bear the civil liability for compensation for losses. Another point of view is that, in this case, the first and second licensee's trademark license contracts are protected by law, and because of the equality of creditor's rights, there is no rank relationship, and their effectiveness does not vary according to the order. Before and after the licensee shall not claim that the other party has no right to use the trademark, and before and after the licensee may request the trademark owner to perform the debt at any time.

Secondly, if the later license is put on record, can it confront the earlier user, and then ask the earlier licensor to stop the infringement and compensate the losses? Is the antagonistic effect of the use license filing limited to the subsequent use license, or should it have retrospective effect? Some people think that the law clearly stipulates that trademark license is a non-essential contract, and filing is not an effective requirement. Therefore, as long as the contract is valid, the prior licensee has already obtained the right to use the trademark, and others, including the trademark registrant, have no right to prevent its use. If the interests of the prior licensee are neglected to protect the interests of the bona fide third party, it is a misinterpretation of the original intention that "the trademark license shall not be used against the bona fide third party without filing". Some people think that the significance of publicity resistance lies in "no publicity, no confrontation; It has been publicized and can be confronted. " Therefore, the registered license is superior to the unregistered license. The court should support the claim of the licensee who filed later, and the licensee who filed earlier may not use the disputed trademark without consent.

second, the legal nature and effectiveness of trademark license filing

1. filing is the way to publicize the change of trademark rights

after the trademark license contract is signed, the licensor shall file the trademark license with the trademark office. Filing is stipulated in many laws and regulations. For example, if the house is rented, the lessor shall file with the relevant departments. It is generally believed that filing is more of an administrative way and means. However, the purpose of filing a trademark license is not only to facilitate the management of the national trademark license by the Trademark Office, but also to publicize the changing status of trademark rights to the society. Whether it is filed or not will have a significant impact on the rights and interests of the licensee.

the exclusive right to use a trademark is a private right as well as an absolute right. As a private right, it can be transferred and licensed; As an absolute right, the exclusive right to use a trademark, like the real right, is related to the interests of others and society, whether it is the acquisition, change, exercise and realization of the right, which is related to the security and order of the transaction. There are publicity requirements for real rights, and there are also publicity requirements for trademark exclusive rights. In terms of static security, if we want to impose an obligation of inaction on an unspecified third party, we should first let these third parties know about the existence of trademark rights, so as to clarify the boundaries and scope of trademark rights, so as to regulate our own behavior and avoid being in an uneasy state that may touch the red line of others' rights at any time; From the perspective of dynamic transaction security, trademark law should let unspecified traders know about the changes of trademark rights, so as to make traders form reasonable trust in the perfection of trademark rights, and then protect traders' legitimate trading expectations, so as not to be in the anxiety of being pursued by others at any time. Therefore, the Trademark Law has established the publicity system of trademark rights ownership and rights change. The former means that the trademark right is registered and acquired, and the acquisition of the trademark right must be registered and announced. Changes in trademark rights mainly include trademark transfer and use license. Where a registered trademark is transferred, it shall be approved by the Trademark Office and announced. Where another person is licensed to use a registered trademark, the license shall be filed with the Trademark Office. Whether it is announcement or filing, it is a way to publicize the change of trademark rights.

2. Trademark license is subject to filing antagonism

In the property law, there is a wide and profound relationship between property right publicity and property right change: on the one hand, property right publicity mainly comes from the requirements of property right change; On the other hand, the publicity of property rights in turn affects the change of property rights. It is the relationship between the publicity of real right and the change of real right, especially on the issue of how the publicity of real right affects the change of real right. There are completely different choices in legislation, that is, there is a binary opposition between publicity antagonism and publicity essentials. The former, also known as the principle of voluntarism and consensus, means that the statutory publicity method is only an antagonistic element of the change of real right, not an occurrence element of the change of real right. Once the parties form the intention expression of property right change, that is, the effect of property right change occurs, but before the means of publicity are available, the fact of property right change cannot be opposed to the third party. The latter, also known as formalism, means that there is no real right change between the parties without publicity, let alone the effectiveness against the third party.

The provisions on the filing of trademark license obviously adopt the filing antagonism, that is, without filing, no confrontation is allowed; For the record, you can fight. First of all, from the perspective of obtaining the right to use the license, once the trademark license is signed, the licensee obtains the right to use the trademark through the expression of the will of the parties to the contract, and does not need to perform publicity procedures such as filing. For example, for the infringer who uses the trademark without authorization, even if the trademark license is not filed, the exclusive licensee can still file a lawsuit against the infringer in its own name. Secondly, from the perspective of the effectiveness of the licensing right, the unregistered licensing right is in an unsatisfactory state, that is, if the trademark owner repeatedly authorizes, there will be a bona fide third party, and the unregistered prior licensee cannot ask the latter bona fide third party to stop using the relevant trademark. Thirdly, if a bona fide third party in the future files a trademark license, the right to use it will have an antagonistic effect, which can confront a third party, including the licensee who did not file it first. If a third party in good faith asks the prior licensee to stop using the relevant trademark, the prior licensee may claim the corresponding liability for damages for breach of contract from the trademark owner in order to obtain the relief that the trademark cannot be used any more.

filing antagonism not only protects the transaction security, but also well balances the interests of different licensees. Although the prior licensee signed the contract first, it did not actively file the case according to the requirements of the law, which led to the positive trust of the third party in good faith that the trademark right was still in a perfect state, believing that there was no right change in the trademark right, and then signed a license contract with the trademark owner. At this time, the law protects the reasonable expectation of the third party in good faith after the transaction, and makes the prior licensee with certain negligence bear the adverse consequences of not filing, which conforms to the concept of fairness and justice and realizes the effective balance between static right ownership and dynamic transaction security.

III. Thoughts on judicial adjudication of disputes over trademark reuse license

1. Handling when the licensees have not filed

If neither licensee has filed the trademark use license, according to the regulation that "the third party in good faith is not allowed without filing", on the one hand, because the latter licensee is in good faith, the right to use the license obtained by the former licensee has no antagonistic effect on it, that is, it cannot resist the continued use of the latter licensee. At this time, the licensee should not be deemed not to be in good faith because he did not put on record. On the other hand, the prior licensee certainly belongs to the category of a bona fide third party, and the subsequent licensee can't ask the prior licensee to stop using the relevant trademark. Therefore, two licensees are third parties in good faith, and neither of them can confront the other party. So, who should finally get the exclusive license? The author believes that, unlike property rights, intellectual property rights have the characteristics of immateriality and non-exclusiveness in the exercise of rights. This determines that the handling of such disputes can be different from the "one room and two sales". It is not necessary to determine that the exclusive use license right is exercised by one of them, but it is possible to consider allowing different licensees to enjoy the right to use the trademark, that is, the two can exist. First of all, this way of judging protects the trust interests of bona fide third parties and maintains the transaction safety of trademark licensing transactions. The prior licensee cannot ask the subsequent licensee to stop the infringement and compensate for the losses. Secondly, this way of judging takes into account the interests of the prior licensee. Although the prior licensee actually becomes non-exclusive, it can continue to use the trademark after all. Thirdly, this way of judging punishes the dishonest behavior of trademark owners to the maximum extent. Different from choosing to let one licensee obtain the exclusive license, the arbitration mode of * * * will make the trademark owner bear the liability for damages for breach of contract to two licensees at the same time, and the trademark owner will suffer the heaviest losses. Therefore, when the licensee has not filed, the licensee has the right to use the relevant trademark, and the prior licensee has no right to ask the latter bona fide third party to stop using or infringing, otherwise it will violate the original meaning and system value of "no confrontation with bona fide third party without filing".

2. Handling when a bona fide third party has filed a license

If the trademark owner has filed a trademark license after the subsequent bona fide third party signed the license contract, according to the principle of "the registered license can be countered", the license right obtained by the bona fide third party has the effect of countering others, which is a fully effective right, and it can require the prior licensee to stop using the relevant trademark. At this time, the prior licensee does not constitute infringement, and does not have to bear civil liability for stopping infringement or even compensating for losses, but only bears the obligation to stop continuing to use the relevant trademarks. It should be noted that, in determining whether the third party is in good faith, the good-faith third party that the prior licensee can't confront is different from the good-faith third party that the later one confronts the prior licensee after filing. As far as the former is concerned, as long as the latter licensee and the trademark owner are in good faith when signing the trademark license contract, they can meet the requirements of a bona fide third party; As far as the latter is concerned, in order to obtain the effectiveness against the earlier licensee, the latter licensee must meet the requirements and be in good faith when filing with the Trademark Office. Otherwise, after the signing of the contract, if the late licensee knew the fact of the prior license, it filed it first, or after a dispute, the late licensee filed it first. At this time, the filing it obtained cannot be opposed to the prior licensee and cannot require the prior licensee to stop using it.