Malicious infringement of invalid trademarks will be recovered

According to the provisions of the new Trademark Law, if the Trademark Office of the State Administration for Industry and Commerce actively declares or the Trademark Review and Adjudication Board passively rules that a trademark is invalid, If the legal period expires and no review is applied for or a lawsuit is filed, the decision or ruling of the Trademark Office or Trademark Review and Adjudication Board will take effect.

After a registered trademark is declared invalid, there will be corresponding legal consequences. For example, when does the exclusive right to use a trademark cease to exist? How should we treat the court judgments, rulings, mediation documents, and decisions of the industrial and commercial administration departments that have taken effect and been implemented before the registered trademark was declared invalid? How should we treat the trademarks that have been implemented? How should contracts such as transfer and licensing be handled? In order to clarify the corresponding legal consequences after a registered trademark is declared invalid and to improve my country's trademark legal system, it is necessary to provide regulations on relevant issues after a registered trademark is declared invalid.

To this end, the new Trademark Law adds Article 47: A registered trademark declared invalid in accordance with the provisions of Articles 44 and 45 of this Law shall be registered by the Trademark Office. It is announced that the exclusive right to use the registered trademark is deemed to have ceased to exist from the beginning. Decisions or rulings declaring a registered trademark invalid, judgments, rulings, and mediation documents on trademark infringement cases made and executed by the People's Court before the invalidation, and decisions on handling trademark infringement cases made and executed by the industrial and commercial administration departments, as well as The executed trademark transfer or licensing contract does not have retroactive effect. However, compensation should be provided for losses caused to others due to the bad faith of the trademark registrant. If the trademark infringement compensation, trademark transfer fees, and trademark usage fees are not returned in accordance with the provisions of the preceding paragraph, which obviously violates the principle of fairness, all or part of the compensation shall be returned. ?

Xia Zhize, a lawyer at Beijing Wanhuida Law Firm, said that the original Trademark Law stipulates that once a trademark is registered, the trademark owner enjoys the exclusive right to register the trademark, can license others to use it, and can be held accountable The infringer may also transfer his registered trademark to others. However, according to the provisions of Article 41 of the original Trademark Law, registered trademarks may also be revoked. Regarding the legal consequences after a trademark is revoked, Article 36 of the "Regulations for the Implementation of the Trademark Law" provides specific provisions. The new Article 47 of the "Trademark Law" is to elevate the current practice to law.

According to the first paragraph of this article, the exclusive right of a registered trademark declared invalid is deemed to have “never existed from the beginning”. This is an important difference from a trademark being revoked. In other words, declaring a registered trademark invalid has retroactive effect, that is, it does not legally recognize the existence or past existence of the exclusive right to the registered trademark.

Since invalid trademarks have retroactive effect, will cases that were previously handled and executed as having exclusive rights to trademarks be overturned because the exclusive rights to registered trademarks did not exist from the beginning? In this regard, paragraph 2 of this article clarifies that a decision or ruling declaring a registered trademark invalid will only be effective for matters after it takes effect. Specifically, the following matters before the declaration of invalidity have no retroactive effect: First, judgments, rulings, and mediation documents in trademark infringement cases made and executed by the people's courts; second, judgments, rulings, and mediation documents made and executed by the industrial and commercial administrative departments The decision to handle the trademark infringement case; the third is the trademark transfer contract that has been performed; the fourth is the trademark use license contract that has been performed. If the above four categories of matters have been implemented, you may not request to restore the original status on the grounds that the registered trademark has been declared invalid. ?However, the new Trademark Law draws on the relevant provisions of the third revised Patent Law, which clearly stipulates the impact of the principles of bad faith and fairness on patent invalidity. ?Xia Zhize said that according to paragraph 3 of this article, if the trademark owner violates Article 32 of this Law and causes losses to others due to the bad faith of the trademark registrant, he shall be compensated. At the same time, if the trademark infringement compensation, trademark transfer fees, and trademark usage fees that have been paid based on the above four situations are not returned, which obviously violates the principle of fairness, they must be returned in full or in part. Legal Consequences of Invalidity of Trademark Rights

Once a registered trademark is declared invalid and revoked, the trademark right is deemed to have ceased to exist from the beginning. Decisions or rulings on the cancellation of registered trademarks, judgments and rulings on trademark infringement cases made and executed by the People's Court before cancellation, decisions on handling trademark infringement cases made and executed by the industrial and commercial administration departments, and trademark transfers that have been executed or use license contract, does not have retroactive effect; however, compensation shall be provided for losses caused to others due to the bad faith of the trademark registrant.

Procedures for applying for invalidation of trademark rights

Corresponding to different invalidation situations of trademark rights, the procedures for invalidating trademark rights are also different.

(1) There are two procedures for invalidating trademark rights when a registered trademark is obviously defective:

1. The Trademark Office can proactively cancel the registered trademark ex officio;

< p>2. Other units or individuals may request the Trademark Review and Adjudication Board to rule on revoking the registered trademark.

(2) For improperly registered trademarks, the trademark owner or interested party may request the Trademark Review and Adjudication Board to revoke the registered trademark within five years from the date of trademark registration. For cases registered in bad faith, the owner of a well-known trademark is not subject to the five-year time limit.

(3) For disputes over registered trademarks, the owner of the previously registered trademark may apply to the Trademark Review and Adjudication Board for a ruling to cancel the later-registered trademark within five years from the date of approval of registration of the disputed trademark.

For a trademark that has been opposed and adjudicated before the registration is approved, no application can be made to revoke the registered trademark based on the same facts and reasons.

After the Trademark Review and Adjudication Board makes a ruling to maintain or cancel a registered trademark, it shall notify the relevant parties in writing. If the party concerned is dissatisfied with the ruling of the Trademark Review and Adjudication Board, it may file a lawsuit with the People's Court within 30 days from the date of receipt of the notice. The people's court shall notify the other party in the trademark adjudication procedure to participate in the litigation as a third party.

The above is the penalty for using invalid trademarks provided by the editor. I hope you will like it!