question 2: the difference of trademark circulation system under the new and old trademark law system.
In judicial practice, when disputes arise before the administrative approval and announcement procedures of trademark transfer are completed, the transferee of trademark rights often takes the transfer agreement as the basis and emphasizes the importance of abiding by the agreement; On the contrary, the party transferring the trademark right emphasizes the importance of the administrative approval right based on the fact that the trademark transfer has not been completed without approval, thus in turn denying the effectiveness of the trademark transfer agreement.
Then, how to coordinate the application of contract law system and trademark law transfer rules in Chinese mainland has become an important task of judicial jurisdiction.
the author thinks that in order to thoroughly clarify the relationship between the effectiveness of trademark transfer agreement and trademark transfer approval system, we must reinterpret the important role of "transfer agreement" in the relationship of trademark circulation under the old and new trademark law systems; We should pay full attention to the coordinated application of contract law system and property law system.
the trademark legislation system in mainland China has made significant amendments to the requirements for establishing the legal relationship of trademark transfer since December 1, 21. Previously, China's trademark transfer approval system was very simple, only requiring the transferee to handle and provide the transfer application form unilaterally, without requiring any "transfer agreement".
The circulation system in the Detailed Rules for the Implementation of the Trademark Law, which was first promulgated in the State Council on March 1th, 1983, is an application for the transfer of a registered trademark. An application for the transfer of a registered trademark should be submitted for each trademark transfer, and the original registration certificate should be returned. After being approved by the Trademark Office, the original certificate shall be annotated and sent to the transferee and announced. Since then, in the State Council's two revisions of the Rules in 1988 and 1993, the system of "returning" the original Trademark Registration Certificate by the assignor and the system of "annotating" the original Trademark Registration Certificate by the Trademark Office and sending it to the assignee for announcement have been retained. However, when the detailed rules were revised for the third time in 1995, the system of "return" and "annotation" of the original certificate was abolished, and only it was stipulated that if the transferor and transferee applied for the transfer of a registered trademark, they should submit an Application for Transfer of a Registered Trademark to the Trademark Office. The application procedures for the transfer of a registered trademark shall be handled by the transferee. After being approved by the Trademark Office, it shall issue corresponding certificates to the transferee and make a public announcement.
when the trademark law was revised on October 27th, 21, there was a major institutional change in the establishment of legal relationship of trademark transfer, adding the stipulation that "when transferring a registered trademark, the assignor and the assignee shall sign an assignment agreement and apply to the trademark office together". It can be seen that the transfer of a trademark requires both a transfer agreement and an application.
However, the Regulations for the Implementation of the Trademark Law, which was promulgated by the State Council and came into effect on September 15th, 22, did not fully pay attention to this major legislative change, and still copied the provisions of the old Trademark Law in the third revision in 1995, only the old law stipulated that the trademark transfer should be handled by the assignee, but did not set up and submit the "both parties * * * with the application" as required by the new Trademark Law.
In the practice of trademark transfer approval, the State Trademark Office only pays attention to the small law "Regulations" and ignores the strict provisions of the trademark law itself, so that the trademark law is actually shelved by the lower law. It should be said that the above-mentioned serious omission in China's trademark administrative legislation is a major institutional flaw.
It can be assumed that if Apple receives the trademark of iPad under the old trademark law system, Apple has the right to directly handle the administrative approval and "transfer" procedures of the trademark; The problem is that Apple's transferee behavior occurs under the new trademark law system. Obviously, Apple and Proview must abide by the two rules of "agreement transfer" and "* * * same application".
question 3: is the validity of the trademark transfer agreement restricted by the administrative act of trademark approval?
the question now is, if either the transferor or the transferee fails to fulfill the obligation to apply for transfer, how can the legal effect of the transfer agreement be confirmed? The author believes that this problem can be completely solved under the system of contract law and property law.
Trademark right is a kind of property right, similar to real estate. Its circulation system should be regulated by the "ownership" system and the security interest system in the property law. The Property Law stipulates that a contract concluded between the parties concerning the establishment, alteration, transfer and elimination of the real right of immovable property shall come into effect when the contract is established, unless otherwise stipulated by law or the contract; Failure to register the real right shall not affect the validity of the contract.
that is to say, if the transferor denies the claim that the trademark transfer agreement itself is effective on the grounds of "no transfer", it can be established only if the trademark legal system requires that the transfer agreement must be registered and approved before it can take effect. Then, how is the trademark transfer system in mainland China stipulated? The only provision of the Trademark Law on trademark transfer system is Article 39 of the Law, that is, "To transfer a registered trademark, the assignor and the assignee shall sign an assignment agreement and file an application with the Trademark Office. The transferee shall guarantee the quality of the goods using the registered trademark. After the transfer of a registered trademark is approved, it shall be announced. The transferee shall enjoy the exclusive right to use the trademark from the date of announcement ".
obviously, the trademark law does not relate the effectiveness of the transfer agreement with the registration and approval system. That is, whether the trademark transfer is "transfer" does not affect the legal effect of the transfer agreement itself. If the trademark transfer has not gone through the administrative approval procedure, only the transferee has not obtained the trademark right for the time being, but the validity and enforceability of the trademark transfer agreement cannot be denied in reverse. In fact, Interpretation 1 of the Contract Law clearly stipulates that laws and administrative regulations stipulate that a contract shall go through registration procedures, but it does not stipulate that it will take effect after registration. If the parties fail to go through registration procedures, the effectiveness of the contract will not be affected, and the ownership of the subject matter of the contract and other real rights cannot be transferred. The legal relationship of trademark transfer is a typical representative of this system.
I believe that in the paid disposition of trademarks, the transferee has the right to ask the other party to continue to perform the assignment contract, and directly apply to the trademark authority for transfer according to such judgments. Therefore, in the case of "no transfer" and the trademark transferor holds the trademark registration certificate, the judicial organ has the full right to reconfirm the trademark ownership by means of confirmation judgment, which is not limited by the right state recorded in the trademark registration certificate. At this time, the court's judicial confirmation judgment must be more effective than the trademark registration certificate, which has the legal effect of directly denying and depriving the registrant of the trademark right.
in addition, the state trademark office has the obligation to assist in the execution of the court's judicial confirmation judgment, and shall not refuse to assist in the execution on the grounds that the trademark ownership confirmation right is "exclusive" to the trademark authority. In fact, the trademark authorities only have normal trademark administrative approval power, and do not have the right to confirm disputes involving trademark civil and commercial rights and interests.
Excerpted from The Question of Rules Caused by the Trademark Case of "iPad" by Shi Anning.