Trademark owners are self-interested, and there is the possibility of multiple exclusive licenses. In addition, the particularity of intellectual property itself and the asymmetry of market information often lead to fierce conflicts of interest among licensees. When you, as a trademark exclusive licensee, suddenly find that the trademark registrant has authorized your competitor to use the trademark exclusively, and then the competitor initiates a trademark infringement lawsuit against you, how should you deal with it? How will the court evaluate the repeated authorization of trademarks and how to protect the rights and interests of prior legal licensees?

In the case of Shanghai Pavlo Stationery Co., Ltd. v. Picasso International Enterprise Co., Ltd. and Shanghai Yixiang Stationery Co., Ltd.,No.: (214) No.117, the court answered: (i) whether the subsequent trademark exclusive license agreement is valid; (ii) Whether the exclusive trademark licensee has the right to use the authorized trademark. Lawyer Wang Xiaobing, a partner of Longtian, represented the plaintiff in this case, and won the sole trademark exclusive license for the plaintiff. This case was recently selected and published by the Supreme People's Court because of its typicality and great guiding significance? Top Ten Intellectual Property Cases of the Court in 215? .

1. Brief introduction of the case:

Picasso International Enterprise Co., Ltd. (hereinafter referred to as Picasso Company) is the owner of the trademark involved. In September 28, Picasso Company granted Shanghai Pavlo Stationery Co., Ltd. (hereinafter referred to as Pavlo Company) the right to use the disputed trademark in mainland China for a period from September 28 to December 213. In February, 21, Picasso Company and Pavlo Company agreed to extend the trademark license period for ten years on the original basis. However, in February 212, Picasso signed a Trademark License Contract with Pablo's competitor Shanghai Yixiang Stationery Co., Ltd. (hereinafter referred to as Yixiang Company, which was previously convicted of unfair competition for counterfeiting Pablo's products), stipulating that Yixiang Company would exclusively use the trademark from January 212 to August 217. After being authorized, Yixiang Company initiated more than 2 trademark infringement lawsuits, several trademark infringement administrative complaints and criminal reports against Pavlo Company and its distributors, involving more than a dozen cities across the country, which had a serious impact on the production and operation of Pavlo Company.

In order to counter the trademark infringement lawsuits and complaints of Art Imagination Company, Pavlo Company actively responded to the lawsuit and immediately filed a lawsuit in court, demanding that the trademark license contract between Picasso Company and Art Imagination Company be declared invalid. Pavlo Company sued the court, saying: Picasso Company and Yixiang Company both knew that the previous trademark licensing relationship between Pavlo Company and Picasso Company had not been terminated, and signed a competing contract without authorization to use the competing trademark, and complained to the industrial and commercial administration department about Pavlo Company's infringement and filed a trademark infringement lawsuit with the court. Yixiang Company carried out all-round counterfeiting after obtaining the trademark authorization. What is this behavior? Malicious collusion, harming the legitimate interests of a third party? And? Violation of mandatory provisions of laws and administrative regulations? . Requesting the court to order that the contract be invalid and the two defendants compensate Pavlo for the loss of 1 million yuan.

II. Court ruling:

After trial, the court of first instance (Shanghai No.1 Intermediate People's Court) held that Pavlo Company enjoyed the exclusive license to use the disputed trademark, but the disputed trademark license contract was the true intention of both parties, with the purpose of obtaining the exclusive license to use the trademark involved, and it was difficult to determine that it had subjective malice that harmed the legitimate interests of Pavlo Company; The conclusion of the disputed contract did not violate the mandatory provisions. Therefore, it was decided to reject all the claims of Pavlo Company, and it was considered that Yixiang Company had the exclusive license right based on the trademark license contract, and Pavlo Company could claim the liability for breach of contract from Picasso Company for repeated authorization.

After hearing the case, the court of second instance (Shanghai Higher People's Court) held that Picasso Company and Yixiang Company knew that there was an exclusive license relationship between Pavlo Company and Picasso Company for the use of the trademark in question when they signed the disputed trademark license contract, so Yixiang Company was not a bona fide third party, although it was difficult to identify the malicious collusion between Picasso Company and Yixiang Company advocated by Pavlo Company to harm the interests of the third party. However, since Pavlo Company enjoys the exclusive license to use the trademark involved in the case in advance, it can fight against the competing trademark license contract relationship in the future, so Yixiang Company cannot obtain the right to use the trademark involved in the case according to the competing contract. Although the court of second instance found that the contract was valid, it focused on the repeated authorization of the trademark in the judgment, corrected the shortcomings of the first-instance judgment, and supported Pavlo Company to enjoy the prior exclusive license to use the trademark, while Yixiang Company did not enjoy any rights to the trademark.

Third, lawyer's comments:

This case is complicated, involving facts spanning ten years, and the ownership of the right to use the trademark involved involves the identification of trademark infringement by dozens of domestic vendors. The verdict of this case laid a foundation for the trial of four cases with long trial limit in Shanghai court and dozens of trademark infringement related cases all over the country. After the judgment of this case, the trademark infringement litigation cases filed by Yixiang Company all over the country were successively rejected or dismissed.

there are two main issues in this case: first, whether the trademark license contract between the two defendants is valid; The second is whether Yixiang Company has obtained the exclusive license to use the trademark based on the license contract. Both courts of second instance considered that the trademark licensing contract between the defendants was valid and did not conform to it? Malicious collusion? However, the court of first instance held that Art Think Company obtained the exclusive license to use the trademark based on the valid trademark contract, and the plaintiff could claim the liability for breach of contract from Picasso Company if he thought his legitimate rights and interests were damaged. This view is obviously wrong. According to Article 3, paragraph 1, of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Trademark Civil Disputes: Exclusive use license means that the trademark registrant licenses the registered trademark to only one licensee in the agreed period, region and manner, and the trademark registrant may not use the registered trademark according to the agreement. ? Therefore, a trademark can only have one exclusive license to use, and it is impossible to have two exclusive licenses to use. On the one hand, the court of first instance held that Pavlo Company enjoyed the prior exclusive license to use the disputed trademark, and on the other hand, it held that Art Thinking Company also obtained the exclusive license to use the trademark based on the contract, which is contrary to the basic principle of the trademark license system.

The court of second instance corrected the view of the court of first instance. The court sorted out the complicated trademark licensing contract relationship between the parties, and concluded that Yixiang Company signed a competing contract with Picasso Company knowing that Picasso Company and Pavlo Company had not terminated the previous exclusive trademark licensing contract, which led to the overlap between the two exclusive licensing periods. Does it not belong to? A third person in good faith? , can't get the right to use the trademark involved according to the later contract.

The typical significance of this case is that the judgment that the exclusive right to use the trademark in advance can resist the malicious trademark license contract relationship in the future, which is of positive demonstration significance for clarifying the market rules of trademark license trading and creating an honest and transparent trademark market environment.