1. Expanded Interpretation Theory of Reverse Counterfeiting

In the practice of trademark law enforcement, a considerable number of people believe that the word "replacement" in this clause does not only refer to the replacement of the perpetrator. If you change the original registered trademark and replace it with your own trademark, you must fully understand the meaning of the replacement and give it an expanded explanation. This view holds that the form of replacement should also include the actor covering the original registered trademark with his own trademark, and replacing or covering up the original registered trademark with a third party's trademark (which can be divided into two situations depending on whether the third party has consented) , eliminate the original registered trademark without affixing any trademark, repackage or repackage the goods with the original registered trademark and affix your own or other people's trademarks, etc. This view holds that the above-mentioned behavior of putting the goods stripped of the registered trademark into the market without the consent of the trademark registrant deprives the trademark registrant of the right to display his trademark to consumers and the opportunity to create his own brand and obtain goodwill. It should be an act regulated by Article 52(4) of the Trademark Law.

II. China National People’s Congress website’s explanation on reverse passing off

Analyzing the provisions of Article 52 (4) of the Trademark Law, it can be seen that what constitutes this behavior The three elements are a premise and two acts, that is, the actor changed the registered trademark on his goods without the consent of the trademark registrant, and then put the goods with the changed trademark into the market. . As for whose trademark the illegal perpetrator changed, this provision is not clear. The interpretation of this clause in the Trademark Law Interpretation on the China National People's Congress website, the portal website of the National People's Congress Standing Committee, is: "Some foreign legislation calls it 'reverse counterfeiting' and imposes prohibitions and sanctions. The so-called 'reverse counterfeiting' ', refers to the act of removing the trademarks legally affixed to the goods by others, replacing them with one's own trademarks, and passing them off as one's own goods for sale during product sales activities." It further clarified the original intention and purpose of the legislation: "In In the process of my country's transition to a market economy, there has been a phenomenon where the registered trademark used on the goods is removed without the consent of the trademark registrant, and the goods are put on the market with their own trademarks. This behavior violates the knowledge of consumers. rights, causing consumers to misunderstand the source of goods, producers and providers, and hindering the effective performance of registered trademarks and the trademark registrant's efforts to create famous brands for their goods. Therefore, it should be considered an infringement. The act of registering exclusive rights to trademarks. In order to facilitate the healthy development of the socialist market economy and protect the exclusive rights of trademark registrants, it is necessary to explicitly add prohibitive provisions on this kind of infringement in this law. "From the above. It can be seen from the explanation that except for the situation where the perpetrator uses his own trademark to cover up the registered trademark of others, other situations are beyond the scope of the explanation of the National People's Congress of China. Judging from this interpretation, the view of expanding the understanding and interpretation of Article 52 (4) is incorrect.

3. Questions arising from the legislative regulation from the perspective of reverse passing off

However, if you analyze it carefully, you will find that using Article 52 of the Trademark Law The provisions of item (4) may not be able to properly solve the so-called reverse counterfeiting problem.

In several cases listed in the expanded interpretation view, the perpetrators artificially severed the connection between the original trademark registrant’s goods and the trademark, falsely marked the source of the goods, and “infringed upon consumers. The right to know causes consumers to misunderstand the source of goods, producers and providers, and also hinders the effective use of registered trademarks and the trademark registrant's efforts to create famous brands for their goods." This is in line with the explanation on the National People's Congress website These situations should also be regulated by this provision regarding the stated legislative intent and purpose. However, why does the National People’s Congress website’s explanation exclude these situations?

There was once such a case: after the perpetrator purchased 170 kilograms of seven-star brand engine oil, he used it with the name of Cosmo (China) Lubricant Products Factory and the Cosmo trademark (the trademark was created by the perpetrator himself) (unregistered trademark) in small bottles (1 kg per bottle) and packaged and sold for profit. The above-mentioned behavior fully complies with the constituent elements of reverse counterfeiting trademark infringement, and there does not seem to be any legal obstacle to qualitative treatment according to Article 52 (4) of the Trademark Law.

However, did the perpetrator really infringe the trademark exclusive rights of the Seven Star trademark registrant? Is this characterization reasonable? The author believes that after the transaction of purchasing large-package motor oil is completed, for the Seven Star trademark registrant, his products have withdrawn from the market, he has also obtained the expected profits, and his trademark has also obtained corresponding goodwill. , the mission of the trademark has been completed. For the perpetrator, he has obtained the ownership of the goods with the Seven Stars trademark by paying a consideration. The perpetrator uses his own trademark for packaging and sales, which is a concrete manifestation of his right to income and disposal. Moreover, in this case, what consumers purchased was Cosmo engine oil. They did not associate this product with the original trademark registrant, so there was no issue of infringement of its trademark exclusive rights. For this case, if the perpetrator has no other illegal behavior, as far as reverse counterfeiting is concerned, the perpetrator is engaged in normal business activities and is not harmful to society.

Some people believe that if the trademark owner puts the goods on the market and anyone is free to remove the original trademark logo, reverse counterfeiters can completely put the trademark owner on the market. After all the goods are purchased, the trademark logo on them will be removed so that consumers cannot access the trademark owner's trademark, and the trademark rights will be empty talk. Therefore, the mission of a trademark is completed only when the goods exit the circulation field and reach the hands of consumers - therefore only the final consumer can dispose of the trademark logo on the goods. People who hold this view fail to see that it is precisely because of the purchasing behavior of the so-called reverse counterfeiters that the purchased goods have withdrawn from the circulation field and the market, and have only been put back into the market after being "processed".

The famous "Maple Leaf v. Crocodile" case is said to be the main cause of the attention and debate on the reverse counterfeiting issue in our country's academic circles. Assume that the perpetrator in this case is not Tongyi Company but Crocodile Company (this situation can only occur in hypotheticals, it is impossible to happen in reality, because Crocodile Company can completely find Maple Leaf Company to do the manufacturing, which will cost less. to obtain products of the same quality at the same price), it buys all the products put into the market by Maple Leaf Company, replaces them with crocodile trademarks, and then puts them on the market for sale. What harm will this cause to Maple Leaf? As an economic organization, the ultimate goal pursued by enterprises is to maximize economic benefits. After Maple Leaf Company's products were all purchased from the market by Crocodile Company, the profits it pursued have been realized in a very short period of time. Compared with the imagined and future business reputation, which one is real and huge economic benefits? Will it become the goal pursued by enterprises? What consumers purchase are Crocodile brand products and do not harm any interests of the owner of the Maple Leaf trademark. For Crocodile Company, the Crocodile trademark, as a well-known brand, is the result of its years of operation. What it sells is its own brand, and what it earns is brand value. For consumers, they recognize the famous brand Crocodile when purchasing, and the product quality is in line with their expectations. Even if consumers know that the true source of the product is from Maple Leaf Company, they may not purchase Maple Leaf Company products. .

On the other hand, the law requires that no false representation or false advertising of product quality is allowed. Crocodile Company indeed did not indicate the original source of the product. Does this constitute fraud? The law requires the source of products to be clearly marked, and its legal purpose is to clarify product quality responsibilities, protect the legitimate rights and interests of consumers, and maintain the order of the market economy. By marking itself as the source of the product, Crocodile Company has made it clear that it is the bearer of all quality responsibilities for the product, and the purpose required by law has been achieved. It can be seen from the above two cases that if the perpetrator only carries out reverse counterfeiting and truthfully identifies himself as the person responsible for product quality, reverse counterfeiting does not necessarily damage the rights and interests of consumers and disrupt the market economic order, nor does it necessarily constitute an illegal act. . Behaviors that fully meet the constituent elements of reverse counterfeiting may not necessarily be regulated by the original intention and purpose of legislation. However, some behaviors that are regulated by the original intention and purpose of legislation are excluded by the interpretation of the National People's Congress of China. Therefore, the author believes that the provisions of Article 52 (4) of the Trademark Law are worthy of scrutiny.

IV. The illegal nature of reverse counterfeiting and suggestions for legislative regulation

After analyzing the reasons of the supporters of the reverse counterfeiting theory, it is not difficult to find that its fundamental purpose is to protect trademarks. The registrant's right to display the trademark to the final consumer is essentially the right to use the trademark.

If the right to display a trademark is indeed illegally infringed under certain circumstances and requires legislative protection, the Trademark Law can directly legislate from the perspective of infringement of the right to use the trademark, so that the protection of the rights of the trademark owner will be more comprehensive.

my country’s reverse counterfeiting theory is an “imported product”. There are many different opinions in the intellectual property academic circles on whether to include it in the Trademark Law for regulation. The author believes that based on the interpretation of the National People's Congress website and the legislative purpose and original intention combined with practical analysis, the scope of behavior regulated by Article 52 (4) of the "Trademark Law" should be the perpetrator's use of unfair means to borrow other people's products ( Especially the advantages of new, high-quality and special products), and the act of obtaining false business reputation for oneself in order to gain competitive advantage. This type of behavior violates the principle of good faith that should be followed in market activities. Its nature is unfair competition and should be regulated by competition law. Therefore, the author believes that when the Anti-Unfair Competition Law is revised, this type of behavior should be clearly included in the regulations to combat the theft of commercial reputation, effectively protect the legitimate rights and interests of operators and consumers, and maintain a normal market economy. order.