Case: Wenzhou Xinlantian Electric Appliance Co., Ltd. was entrusted by Global India Impex Company to manufacture and process word mark circuit breakers, and the "GI" graphic trademark belongs to the trademark registered by General Instruments Company in Qing Shen, China, and belongs to the No. Products used: audio and video data receivers, alarm controllers, signal processors, power devices, balancers, optical amplifiers, sockets, laser modules, horn antennas for terrestrial, satellite, optical fiber and cable signals. Global India Impex Company has registered GI trademark on the domestic circuit breaker products in India, and has legal ownership. Without legal formalities provided by Global India Impex Company and the permission of General Instruments Company, the parties produce and process circuit breakers with GI registered trademarks in China without authorization. On November 14, 24, it was seized by Yongjia Industrial and Commercial Bureau, with an illegal business amount of $4,484. According to the relevant provisions of the Trademark Law and the Regulations for the Implementation of the Trademark Law, the Bureau recognized trademark infringement and imposed a penalty of 9, yuan on the parties concerned. The case was heard at the request of the parties.

Controversy:

During the hearing, the parties and entrusted lawyers think that the actions of the parties do not constitute infringement. The reasons are as follows:

1. The GI trademark registered by General Instruments Company in Class 9 does not include circuit breakers. Socket Although the company has been registered, it has not actually been used in this commodity; Although other commodities and circuit breakers belong to Class 9, they are not in the same similar group and cannot be regarded as similar commodities. The actions of the parties concerned do not constitute infringement.

2. There is no fact that the actions of the parties mislead the public. The parties concerned carry out production and processing according to the requirements of Global India Impex Company, and mark the GI trademark registered by Global India Impex Company in China on the products. The products are directly exported to India and shipped to Global India Impex Company. The sales market of the circuit breakers produced and processed by the parties concerned and the domestic trademark owners do not cover each other, which will not lead to misunderstanding by consumers. The sales place of the circuit breakers manufactured and processed by the parties in this case is in India, and it is impossible for the relevant public to confuse and mistake the source of the goods. Moreover, on February 18, 24, the Beijing Higher People's Court formulated the "Answers to Questions on the Trial of Trademark Civil Disputes": Does the act of ordering and processing goods entrusted by overseas trademark owners for export constitute infringement if their trademarks are the same as or similar to the registered trademarks of the right holders? A clear answer has been given: "Confusion and misunderstanding of the relevant public is the prerequisite for infringement of the exclusive right to use a registered trademark. Brand-fixing processing is based on the explicit entrustment of the person who has the right to use the trademark, and the goods entrusted with brand-fixing processing are not sold in China, which is unlikely to cause confusion and misunderstanding among the relevant public and should not be considered as infringement. "

third, it has not caused any damage to domestic trademark owners. Although Article 52 (1) of the Trademark Law adopts strict liability and does not take subjective fault as an element, the existence of damage facts should be one of the elements for the establishment of infringement. The products produced and processed by the parties concerned are all sold in India, which will not bring substantial damage to domestic trademark owners.

iv. brand-fixing processing is essentially a processing contract. although the parties in this case marked the trademark on the processed products, whether this behavior constitutes the "use" of the trademark is debatable. The word "use" in trademark law should include "use for trademark purposes" in addition to the general understanding of "use". The parties only use it in the processing process, and the product does not enter the domestic consumption and circulation field. Brand-fixing processing behavior is not a "use" behavior in the sense of trademark law. In essence, trademark users at this time should be entrusted producers rather than licensed producers. Therefore, the actual user of the trademark in this case is India Global India Impex Company, not the party concerned, and the behavior of the party concerned does not constitute infringement. The protection of trademark rights should also be limited to a moderate and reasonable range, and should not be extended in practice.

comments:

the supervision of foreign-related licensing processing has become a new law enforcement field for the industrial and commercial departments. At present, there are two different opinions on whether the brand-fixing processing conducted by domestic producers as legal holders of overseas trademarks constitutes infringement on domestic trademark owners. The mainstream opinion still thinks that it constitutes infringement, and I agree with this opinion.

1. Using a registered trademark that is not actually used by others without permission constitutes an infringement, and the actor shall bear the trademark infringement liability according to law. The party concerned thinks that General Instruments is an overseas American company. Although the GI trademark is registered on the socket, it is not actually used in China or on the commodity, and the party concerned does not constitute infringement. This view of the parties concerned is wrong. The exclusive right to use a registered trademark refers to the exclusive right enjoyed by the registrant to use the goods approved for use. The protection of a registered trademark does not depend on whether the trademark is actually used on all approved goods. China's trademark law does not stipulate that registered trademarks must be actually used on approved goods before they can be protected by law. At the same time, this kind of registration on multiple commodities belongs to protective registration, which is allowed by our laws.

From this case, the goods used in the trademark should belong to similar goods. Although the GI trademark is not similar to the circuit breaker in other goods except the socket, the socket and the circuit breaker have the same production, sales channels and consumption objects, and their functions are similar, so they should be considered as similar goods.

second, the products processed by the brand can constitute trademark infringement even if they are not sold in China. The use of trademarks can be divided into narrow sense and broad sense. Narrow sense refers to the use of trademarks by trademark registrants on goods produced or operated or services provided. In a broad sense, the use also includes the advertising use of trademarks, the trading use of trademarks, and even the use of the same trademark as the registered trademark on different and non-similar goods or the use of trademarks similar to the registered trademark on the same and similar goods. Article 3 of the Regulations for the Implementation of the Trademark Law also stipulates the use of trademarks: "The use of trademarks mentioned in the Trademark Law and these Regulations includes the use of trademarks in commodities, commodity packages or containers and commodity trading documents, or the use of trademarks in advertising, exhibitions and other commercial activities." Although the products processed by the parties in this case are sold abroad, the registered trademarks of others have been used in the process of production and processing. "Use" can't be narrowly understood as a sales link in the circulation field.

third, misleading the public and causing direct damage to the trademark owner is not a necessary condition for trademark infringement. Article 52 of the Trademark Law stipulates that any of the following acts is an infringement of the exclusive right to use a registered trademark: (1) using a trademark identical with or similar to its registered trademark on the same or similar goods without the permission of the trademark registrant; (2). This item only emphasizes the essential element of "without the permission of the trademark registrant", and does not emphasize the subjective aspect, direct damage and misleading situation. As long as the specified behavior occurs, it constitutes infringement. There are many manifestations of intellectual property infringement damage, such as mental damage and material damage, actual damage and expected damage, explicit damage and invisible damage, damage of unearned interests and damage of deserved interests. The infringement of the parties has caused potential damage to the trademark owner. The provisions in the Answers to Questions on the Trial of Trademark Civil Disputes formulated by the Beijing Higher People's Court mentioned by the parties to this case are only a guiding opinion within the Beijing court system.

Thinking:

In recent years, the administrative departments for industry and commerce have increasingly investigated and dealt with such cases. This kind of case is a concrete manifestation of the conflict between the trend of economic globalization and the regionality of trademarks. The regionality of trademark rights refers to the trademark rights granted by a country or region in accordance with its own trademark law or trademark treaties in the region, which are only valid in that country or region and are not binding on other countries or countries outside that region. Under the general environment that economic development goes beyond the scope of a country and goes to the world, the globalization of economy and the regionality of trademarks will inevitably conflict. Parallel import and foreign-related licensing processing are concrete manifestations of the conflict. It is an urgent problem for the current legislature to protect the exclusive right of domestic trademark owners within a moderate and reasonable range, avoid expanding protection in practice, hinder China's processing and manufacturing enterprises from going global, and affect the development of international economy and trade.