To grasp the principle of patent exhaustion, it should be noted that the object of patent exhaustion is the patent right of every patented product put on the market, which can be explained by the theory of interest return. For the patented products put on the market, the patentee has obtained corresponding benefits from the sales, and the patent right has played a role. Therefore, he should not exercise further control over the patented product, but the patentee has not exhausted the patent right of the whole invention. The principle of exhaustion of patent rights only applies to patented products legally put into the market, and there is no problem of exhaustion of rights for so-called patented products put into the market without permission. Patented products legally put on the market include: patented products put on the market by the patentee; Patented products that the patentee authorizes others (licensees) to put on the market; Patented products put on the market by previous users; Compulsory licensing of patented products put into the market by beneficiaries; Patented products put on the market with the approval of government agencies to promote the application of patents. [2](P 185)
The principle of exhaustion of patent rights is not only applicable to patented products put on the market with the consent of the patentee, but also applicable to patented products put on the market by the patentee due to some moral obligation or legal obligation. First of all, the second paragraph of Article 63 of China's Patent Law does not regard the first user's putting a patented product on the market as infringement. After all, before the patentee's patent application date, the first user had made the same product, used the same method or made necessary preparations for its manufacture and use. He used his own invention instead of the patentee's invention. In order to protect the prior rights of the prior user and his prior investment, the law makes such a provision, which is essentially a balance of interests between the prior user and the patentee. Therefore, the patentee has no further control over the patented products put on the market by the first user, that is, the patents attached to these products are exhausted. If the patentee is allowed to control the patented products put on the market by the prior users, it will inevitably hinder the circulation of the products. This not only harms the interests of consumers, but also harms the interests of the first-time users, which leads to the restriction of the first-time users' first-time rights, which is contrary to the provisions of the law recognizing the first-time users' first-time rights. Secondly, for the patented product put on the market due to compulsory license and popularization and application, although it is involuntary for the patentee, the patentee also loses the power to further control this product, that is, the patent right is exhausted. Because the patentee has realized its economic benefits for the product (Articles 14 and 54 of China's Patent Law clearly stipulate that the popularization and application implementation unit and the licensee of compulsory license shall pay the patentee a reasonable royalty), this economic benefit is one-off. The essence of exclusive right is that the obligee enjoys the exclusive conditions endowed by the patent law and makes profits alone. Under the condition of issuing compulsory license, the patentee also realizes its economic benefits for the patented products put on the market by the licensee. The purpose of the patent right has been realized, so the patentee has no right to control the product. If the patentee still enjoys the patent right for the patented products that are put into the market for compulsory license and popularization and application, and the use and sales of the products are still subject to the patentee, then the compulsory license and popularization and application of the patent will lose its significance. In the field of trademark rights, the exhaustion of rights is manifested as: once the registered trademark owner legally puts the goods with his trademark in the circulation field, the trademark owner loses control of the batch of products, the trademark right on the goods is eliminated, and the trademark right of the trademark owner is exhausted. Anyone who sells the goods again is not regarded as infringement. If in the process of reselling goods, the transferee changes its registered trademark without the consent of the owner of the registered trademark, and puts the goods with the changed trademark back on the market, then this behavior of the reseller is an infringement of the exclusive right to use the trademark. In this case, the trademark rights of the trademark owner have not been exhausted. Item 4 of Article 52 of the revised Trademark Law clearly stipulates: "Changing the registered trademark without the consent of the trademark registrant and putting the goods with the changed registered trademark on the market again; It is an infringement of the exclusive right to use a registered trademark. The most famous case is 1994 Beijing "Maple Leaf and Crocodile" dispute case. [3](P 12) Experts have different opinions. However, the case was shelved for a long time because there was no clear stipulation in the Trademark Law at that time. The author thinks that the new trademark law has added the provision of item 4 of Article 52, perhaps because of the enlightenment of this case.
Why do resellers violate the exclusive right to use trademarks by changing trademarks during resale? According to the theory of exhaustion of trademark rights, doesn't the trademark owner have the right to control the trademark goods that are put on the market for the first time? The author believes that the basic function of a trademark is to distinguish the source of goods or services. Based on this trademark, the owner enjoys the exclusive right to sell his products with all his trademarks. In the case of "Maple Leaf, Crocodile", the behavior of resellers changing trademarks just destroyed the basic function of distinguishing the source of trademarks. Consumers can't see the shadow of "maple leaf" from the "crocodile" trademark on the product. "Crocodile" misled and deceived consumers, and the hope of "Maple Leaf" enterprises to establish their own brands was also dashed. "Maple Leaf" means that the function of commodity source is completely lost, and the connection between the trademark of "Maple Leaf" and commodities is cut off. Therefore, it is an infringement of the exclusive right to use a trademark to replace the registered trademark of others and put the product in the circulation field. In this case, the trademark owner's trademark rights are not exhausted, and he has the right to ask the final consumer to see his registered trademark on the purchased goods. Intellectual property is regional, so is there a regional exhaustion of rights? There are two main views on this issue: exhaustion of rights, like intellectual property itself, is regional, and exhaustion of rights in a country does not lead to exhaustion of rights in the international market. Once the right holder puts the intellectual property products on the market by himself or with his consent, the rights of this batch of products in the world will be exhausted. How to treat this problem? In my opinion, we should first correctly understand the connotations of two different concepts: exhaustion of rights and regionality. The principle of exhaustion of rights was originally stipulated in domestic law, and its original intention was to balance the interests of intellectual property rights holders and intellectual property product rights holders and ensure the free circulation of goods in China. Regionality is one of the basic characteristics of intellectual property rights, and it is the product of national laws. The acquisition and protection of intellectual property rights are stipulated by the laws of one country and are not affected by other countries. Although these are two different problems, there is a certain connection between them.
Rights are endowed by national laws and are regional. As a restriction on rights, exhaustion doctrine is naturally regional. Moreover, international trade was not developed at that time, and intellectual property products were mainly circulated in China. But later, with the development of international trade, intellectual property products began to enter the international market, no longer limited to domestic circulation. Especially with the development of global economic integration, this situation is more obvious. However, in the process of intellectual property products flowing in the international market, it may harm the interests of intellectual property rights holders in other countries. Therefore, the intellectual property rights holders in importing countries often object to parallel imports on the grounds of the regionality and independence of intellectual property rights, while parallel importers defend themselves on the grounds of exhaustion doctrine. Therefore, the question of whether exhaustion doctrine is universal or international exhaustion doctrine arises. It can be seen that the universality and regionality of exhaustion doctrine were not controversial at first, but only with the development of international trade and the emergence of parallel imports did such controversy arise. Secondly, we should correctly interpret the international exhaustion theory. The universality of exhaustion of rights is the regional development of exhaustion of rights. Recognizing the universality of exhaustion of intellectual property rights in a country has not expanded the scope of effectiveness of this right, and it still needs to be based on the importing countries of intellectual property products. However, the behavior of the same right holder exercising his intellectual property rights in other countries has an impact on the effectiveness of his related intellectual property rights in his own country, and this impact is concrete. According to the universality of exhaustion of rights, exhaustion of rights is not only the exhaustion of rights of the obligee for the products put into the domestic market, but also the exhaustion of rights of the obligee himself or his licensee for the products put into the foreign market when the products are imported into China in parallel. There is a misunderstanding on this issue, that is, we can talk about exhaustion of rights without specific intellectual property products. It is meaningless to talk about the universality of exhaustion of rights without specific intellectual property products. Exhaustion of rights refers to specific intellectual property products, that is, the obligee exhausts the rights of "intellectual property products put on the market by himself or with his consent", exhausts some rights embodied in specific intellectual property products, and exhausts specific rights, instead of exhausting all abstract intellectual property rights. Previous discussions were all about exhaustion of rights without specific intellectual property products, and the result was a wrong conclusion. First, the goods imported in parallel are obtained through legal channels such as purchase, not through illegal channels such as smuggling;
Second, the goods imported in parallel are manufactured or licensed by intellectual property rights holders, which are genuine goods rather than counterfeit goods;
Third, the intellectual property rights involved in parallel import are protected by law in the importing country. Fourth, the import behavior of parallel import has not been agreed by the intellectual property owner of the importing country. Whether parallel import is infringement is different in different intellectual property fields. Some people argue that in the field of patent rights and copyrights, the principle of regionality should be adopted to prohibit parallel imports, and the exhaustion doctrine principle should be adopted in the field of trademarks to allow parallel imports when conditions permit.
Exhaustion of rights and parallel import First of all, in the field of patents, the focus of controversy is: When the patentee enjoys the patent right for the same invention in country A and country B, if the patentee sells or allows others to sell his patented products in country A without any restrictions, does the buyer's behavior of importing his legally purchased patented products into country B infringe the patentee's patent right in country B? Using the principle of exhaustion of rights, it can be concluded that the importer has not infringed the patent right of the patentee in country B. No matter whether the patented products are sold by the patentee himself in country A or licensed by others in country A, he has benefited from the sales. His patent rights have been exhausted after the first sale of patented products, and he can't get a second return from these patented products. Therefore, the importer's import behavior is not infringement. If a government stipulates that the patentee has the right to import from its own economic and trade policies, then the importer's import behavior without the permission of the patentee constitutes infringement. Article 1 1 of China's Patent Law also stipulates that the patentee has the right to import, and the patentee can use the right to oppose the parallel import behavior of a third party. This reflects the improvement of the state's protection for patentees, that is, allowing patentees to get a second return on their patented products.
Secondly, in the field of trademarks, according to the principle of exhaustion of trademark rights, under normal circumstances, parallel imports do not constitute infringement of trademark rights. Parallel import of trademark goods or resale and distribution of goods are normal business activities, and are not directed at trademarks. Generally speaking, it has nothing to do with trademark rights and belongs to non-trademark behavior. The goods imported by parallel importers are legal goods-legal manufacturing and use of legal trademarks, not fake and shoddy goods. Since there are no counterfeit and illegal trademarks used by parallel imports, parallel imports do not infringe trademark rights. Trademark registrants have realized economic benefits by directly using or licensing others to use, so they have no right to restrict others' non-trademark behavior-parallel import. Under normal circumstances, the parallel import of trademark goods does not infringe trademark rights. Most countries in the world also believe that parallel import of trademark goods is not infringing. Of course, not all parallel cases are not infringing. In the process of commodity circulation, if the quality of the commodity changes, the trademark can no longer show that the quality of the commodity is stable, and the trademark owner has the right to prohibit parallel import. Even sometimes, the quality of the goods has not changed, but the resellers repackage or re-label the trademark goods during the resale process, and the trademark owner thinks that the behavior of the resellers damages the identification function of the trademark or damages the reputation of the trademark. In this case, the trademark owner also has the right to prohibit parallel imports.
Third, in the field of copyright, the issue of parallel import is similar to that of patent. The copyright owner enjoys the exclusive right to a work in both countries, and now the right holder grants the licensee the right to distribute the work in country B in the form of exclusive license. The importer of country A bought the works distributed by the licensee from the exclusive licensee of country B and imported them into country A. Does the importer's behavior infringe the copyright owner's distribution right in country A? From exhaustion doctrine's point of view, the importer's behavior is not infringement. The most fundamental reason is that the copyright owner has benefited from the exclusive license fee, and his distribution right has been exhausted. However, if the law of country A focuses on protecting the interests of copyright owners in the country, stipulating that copyright owners have the right to import or explicitly prohibiting parallel imports, then parallel imports constitute infringement.
The World Intellectual Property Organization also tends to give copyright owners the right to import. China's Copyright Law does not stipulate the copyright owner's right to import, but the Provisions on the Implementation of International Copyright Treaties gives the copyright owner of foreign works the right to import. The US government opposes parallel imports in principle. This shows that the exhaustion doctrine principle in the field of copyright cannot be fully used to support parallel imports.
To sum up, the exhaustion doctrine principle can be used to support parallel imports, but it is not the only basis for judging whether parallel imports are infringing. Whether parallel import infringes or not ultimately depends on a government's economic policy, trade policy and relevant laws and regulations that reflect the policy intention. Law is determined by interests. It aims at promoting the formation and development of interests and regulates various objective interest phenomena in social relations.