1. Theoretical Discussion on the Limitation of Trademark Rights The trademark laws of many countries have corresponding provisions on the limitations of trademark rights. Different countries have different regulations on restrictions on trademark rights. Generally speaking, restrictions on the content of trademark rights generally include the following aspects.
(1) Fair use of trademarks From the perspective of the constituent elements of a trademark, a trademark can be composed of a made-up word originally created by the right holder, or it can also use existing common words. Of course, the former type of trademark consisting of made-up words can only be used as a trademark by the trademark owner, but for the latter type of trademark, in addition to being used as a trademark, the common words that constitute the trademark also have the normal use of the words by others. meaning of use. In this case, although the trademark owner of the trademark has exclusive rights to the trademark logo, this exclusive right can only be limited to using the logo as a trademark. If others other than the rights only use the logo in a legitimate manner, The purpose of using this logo is not to engage in unfair commercial competition with the right holder, so the trademark owner naturally has no right to restrict others from using the trademark logo reasonably.
Restrictions on fair use of trademarks are stipulated in the trademark laws of many countries, such as Article L713-6 of the French Intellectual Property Code, Article 23 of the German Trademark Law, and Article 23 of the Italian Trademark Law. Article 1 bis, Article 26 of the Japanese Trademark Law, etc. Article 17 of the TRIPS Agreement also embodies a similar meaning. According to the provisions of trademark laws of various countries, fair use of trademarks generally must meet the following constituent elements:
(1) The words that constitute the trademark are ordinary words, that is, the words have other meanings besides being used as trademarks. This is especially true for trademarks composed of descriptive words with weak distinctiveness, because the descriptive words forming such trademarks may also be used by others to indicate the name, type, quality, raw materials, quantity, function, purpose, etc. of the goods or services. Such trademarks are more likely to be subject to fair use restrictions due to their origin, shape, method of use and other characteristics.
(2) The reasonable use of a trademark should be to indicate one’s name, name or address in a normal way, or to indicate the name, type, quality, raw materials, etc. of one’s goods or services in a normal way. Characteristics such as quantity, function, purpose, origin, shape, craftsmanship, method of use, etc. Only the use of trademark logos under the above circumstances is considered fair use.
(3) The use of trademark logos should comply with the principle of good faith and not for the purpose of unfair competition.
(2) The right of prior use of a trademark. The so-called right of prior use of a trademark means that the owner of a trademark that has been used before others obtain the trademark registration can continue to use it within the original scope after others obtain the trademark registration. rights to the trademark. As a supplement to the first-to-file principle of trademark law, the right to first-use trademarks is mainly to protect the interests of those trademark users who have established a certain reputation in the market even though they have not been registered.
The trademark prior use right system mainly exists in those countries and regions that only recognize the registration of trademark rights, such as France, Japan and Taiwan. In these countries, the use of a trademark does not lead to the creation of exclusive rights to the trademark. If there is no trademark prior use right system, once the trademark that the trademark user has used for many years is successfully registered by others, the results of his many years of business operations will be destroyed. Danger. In order to balance the interests between registered trademark owners and prior users of the trademark, the trademark laws of these countries generally stipulate a trademark prior use right system. In those countries that recognize both the registration of trademark rights and the use of trademark rights, there is generally no trademark prior use right system.
According to the relevant provisions of the trademark law of the relevant country, the creation and exercise of the right of prior use of a trademark should generally meet the following constituent elements:
(1) The prior user of the trademark should register the trademark of others. The trademark or similar trademark has been used on the designated goods or similar goods related to the trademark registration application before the application, or the trademark has been used as a trade name. Some countries also stipulate that when someone else’s trademark is registered, the prior user should use the trademark for a certain period of time, such as 5 years.
(2) Before the application for registration of the trademark, the prior user of the trademark has established a certain market reputation for the trademark. Some people think that the prior use of a trademark should make the trademark well-known in the relevant fields before the registration application. The author believes that there is no need to be so strict, as long as it has a certain degree of popularity in the relevant market fields.
(3) The prior user of a trademark shall not continue to use it for the purpose of unfair competition. Some countries require the prior user of a trademark to attach appropriate indications of prevention and registration when continuing to use the trademark. The trademark owner’s related businesses are confused.
(3) Exhaustion of trademark rights Exhaustion of trademark rights means that after the trademark owner himself or with his permission the goods bearing the registered trademark are first put on the market, no matter who uses or resells the goods bearing the registered trademark, Products with trademarks do not infringe trademark rights. The main function of the trademark exhaustion system is to balance the disposal of goods by trademark owners and goods owners. Therefore, the trademark exhaustion system is actually a restriction on trademark rights by the rights of the owner of the goods.
The current disputes about the exhaustion of trademark rights mainly focus on the scope of application of exhaustion of rights. Generally, there is no dispute that exhaustion of rights applies within a country, but whether exhaustion of trademark rights can be applied within the scope of a country is not controversial. There are two diametrically opposed opinions on whether parallel imports should be allowed in an international context. Supporters believe that trademark rights only give the right holder the right to control the first time the trademark is put on the market. Once the trademark has been legally put on the market, the right holder has no right to intervene, so parallel progress should be allowed. Opponents believe that since trademark rights are territorial, exhaustion of rights only means exhaustion of rights within one country and does not necessarily lead to exhaustion of trademark rights in another country. It is precisely because of the existence of such different opinions that the TRIPS Agreement has to avoid this problem.
(4) Abuse of trademark rights prohibits the exercise of all civil rights for legitimate purposes and must not exceed legitimate boundaries. Otherwise, it will constitute an abuse of rights, and the same applies to the exercise of trademark rights. The exercise of trademark rights should generally be to maintain the identification function of the trademark and maintain normal competition order through the performance of its identification function. However, in reality, sometimes trademark owners exercise their trademark rights for the purpose of unfair competition. In this case, the principle of prohibiting abuse of rights should of course be used to restrict the exercise of their trademark rights.
To constitute trademark abuse, the following elements should generally be met:
(1) There must be a trademark right, that is, the right holder obtains the exclusive right to the trademark through a registration application. If the right is due to the negligence of the trademark examiner or is obtained through improper means, the trademark right shall be deemed to exist until it is declared invalid. And the behavior of the trademark owner is superficially an exercise of trademark rights.
(2) The exercise of rights harms the interests of others. For example, registering someone else's unregistered well-known trademark and then prohibiting others from using it; or registering someone else's already well-known trademark and then selling it to others, etc. These behaviors appear to be the exercise of trademark rights, but actually damage the legitimate interests of others and should be regarded as abuse of rights.
(3) There must be the intention to harm the interests of others or unfair competition. For example, if someone applies for registration of a well-known unregistered trademark without being aware of it, the subsequent exercise of the right should not be regarded as an abuse of rights.
2. Loophole supplement: application of anti-unfair competition law Although many scholars and experts have suggested that when revising the trademark law, provisions regarding rights restrictions or exceptions should be added. Unfortunately, this revision of the Trademark Law still does not add provisions regarding rights restrictions. In recent years, many disputes related to restrictions on trademark rights have arisen in my country's real economic life. Some of these disputes have not been reasonably resolved precisely because of the lack of relevant provisions in the trademark law. Therefore, in this part of the article, the author intends to revisit how to fill this loophole in judicial activities.
(1) Relevant legal practice in my country Although my country’s Trademark Law has never stipulated the content of restrictions on trademark rights, our courts have tried many cases in this area. It can be said that the People’s Court has carried out judicial activities. practices to close loopholes. Summarizing the practical experience of the People's Court will help us explore this issue theoretically.
At present, many such disputes occur in our country, mainly related to disputes over the reasonable use of trademarks. The State Administration for Industry and Commerce issued the "Opinions on Several Issues in the Administrative Enforcement of Trademarks" on December 29, 1999. Article 9 has stipulated the content of fair use of trademarks. However, this provision is a departmental regulation after all, and there is no problem as a basis for the administrative law enforcement of the industrial and commercial administration department. However, it seems to be insufficient as a basis for the judicial judgment of the court.
People's courts in various places have also handled many disputes involving the fair use of trademarks in recent years. In some cases, courts have affirmed that the use of registered trademarks does not constitute infringement under certain conditions.
For example, in the trademark infringement case of Chongqing Baishiyi Salted Duck Factory v. Chongqing Lingfeng Food Company, "Baishiyi" is the name of a place in Chongqing that is rich in salted duck, and Chongqing Baishiyi Salted Duck Factory registered the trademark "Baishiyi". The defendant used "Baishiyi flavor" on the packaging of the salted duck it produced, and was accused of infringing the plaintiff's trademark rights. The court of first instance found that the infringement was established, and the court of second instance held that "Baishiyi" was the name of the place of origin of the goods. The defendant indicated the place of origin of the goods in a normal way and would not cause confusion among consumers, so it did not constitute trademark infringement.
In other cases, the court pointed out that fair use of trademarks should not be for the purpose of unfair competition and should not cause consumer misunderstanding. For example, the Intellectual Property Division of the Supreme People's Court pointed out in the "Reply to the Trademark Infringement Dispute Case between Yantai Jingpeng Pesticide Factory v. Weifang Yinong Chemical Factory" that "Tao Xiao" is a common name for insects, and the trademark owner cannot use it as a common name for insects. Registering the trademark "Taoxiaoling" restricts others from using the word, but this does not mean that others' use of "Taoxiaoling" is legitimate and reasonable under any circumstances.
In addition to disputes over fair use of trademarks, Chinese courts have also dealt with some disputes over the right to prior use of trademarks and the abuse of trademark rights. A typical case is to register a trademark that has already been used by others and then sue the legitimate user for infringement. Since Chinese law does not give the prior user the right to defend against the right of prior use, the courts often rule against the prior user, resulting in a kind of infringement. A helpless situation that is legal and unreasonable.
Disputes over the exhaustion of trademark rights have also emerged in our country in recent years. For example, the parallel import case of "LUX" soap heard by the Guangzhou Intermediate People's Court is an example.
From the above situation, our country’s courts have handled some cases related to trademark rights restrictions, and have also considered the general principles of trademark rights restrictions when making judgments. However, because the law does not clearly stipulate the content of trademark rights restrictions, different courts have inconsistent opinions on legal application and legal interpretation, resulting in some cases being delayed for a long time, and disputes remain after retrials, and some cases have incomplete judgments. Reasonable. Therefore, the Intellectual Property Division of the Supreme People's Court proposed in its revision opinions on the first draft of the revised Trademark Law that the content of fair use of trademarks and the right to prior use of trademarks should be stipulated in this revision of the Trademark Law to solve the problem of such cases without Issues of legal basis. Unfortunately this suggestion was not adopted.
(2) Legal Issues in Supplementing Loopholes Our country’s Trademark Law does not stipulate that the restriction of trademark rights should be an obvious loophole, which requires judges to use legal interpretation methods to supplement such cases.
To supplement this loophole in the Trademark Law, we should first consider whether a reasonable interpretation of the existing provisions of the Trademark Law can solve the problem. Judging from the existing provisions of the Trademark Law, some loopholes in the restrictions on trademark rights can be filled to a certain extent.
For example, regarding the fair use of trademarks, we can derive a similar meaning through the interpretation of Article 52 of the Trademark Law. Article 52 stipulates that “without the permission of the trademark registrant, any use of the same or similar goods on the same or similar goods shall If a registered trademark is the same as or similar to a trademark, it is an infringement of the exclusive rights of the registered trademark." In other words, if others use the words of the registered trademark but do not use it as a trademark, it certainly does not constitute infringement.
In the case of exhaustion of trademark rights, it can also be concluded based on the interpretation of the same article that according to Article 52, using a registered trademark without the permission of the trademark owner constitutes infringement, and the domestic sales of the trademark owner or dealer The goods that are licensed to be put on the market do not constitute infringement, but parallel imports without the permission of the domestic trademark owner should generally be deemed as infringement.
However, the legal loopholes cannot be completely filled by simply interpreting the existing provisions of the Trademark Law. For example, the right of prior use of a trademark cannot be explained from existing legal provisions. Even though similar content such as fair use of trademarks and exhaustion of trademark rights can be derived from the interpretation of existing legal provisions, issues such as how to apply it reasonably and whether parallel imports are all infringements must be determined from the existing provisions of the Trademark Law. Still can't get a reasonable answer. Therefore, in order to completely fill the loophole in trademark rights restrictions, other legal regulations must be combined with the application.
From the basic theory of trademark rights restrictions introduced in the first part of this article, it is necessary to apply the Anti-Unfair Competition Law to fill this loophole in my country’s trademark law.
Theoretically speaking, the anti-unfair competition law occupies a fundamental position in the entire intellectual property system. The competition principles it establishes and follow the principles of fairness, voluntariness, equality, good faith and recognized business ethics are also the basic principles of the entire intellectual property law. Our efforts to make up for loopholes in trademark law must be governed by this principle to ensure that no deviation occurs.
From the specific situation of trademark rights restrictions, in terms of judging whether it constitutes fair use of a trademark, whether the illustrative use of a trademark logo is reasonable mainly depends on whether it is confused with the business structure of the trademark owner and whether it creates an unfair use. Fair competition; in terms of the application of trademark prior use rights and trademark right abuse, it is also necessary to determine whether the continued use of the trademark and the exercise of trademark rights are for the purpose of unfair competition. Therefore, the application of the Anti-Unfair Competition Law in specific cases plays a key role in determining the fair use of trademarks, the right to prior use of trademarks, and the abuse of trademark rights.
The issue of trademark rights being exhausted and proceeding to 13 is a difficult problem to solve in the trademark laws of various countries, but it can also be solved satisfactorily if it is included under the regulation of anti-unfair competition laws. . For example, when the Taiwan Fair Trade Commission determines whether Parallel 13 is an infringement, it neither prohibits nor permits it. Instead, it determines its legality based on whether Parallel 13 has the nature of unfair competition. We can also learn from this practice. When judging whether parallel imports infringe, under the general principle of determining infringement, for those products that clearly distinguish parallel imported goods from the domestic trademark owner’s goods, it does not cause consumers to misunderstand that they do not have the right to infringe. If it is unfair competition in nature, it shall be deemed not to constitute trademark infringement.