Among various disputes over trademark infringement, one type of dispute has increasingly attracted people's attention, that is, the party authorized to use the trademark uses the trademark in violation of the scope of the licensor's agreement. The specific manifestations are: After the expiration of the period, the goods with the licensor's trademark are still produced or sold; the goods with the licensor's trademark are produced or sold beyond the agreed quantity; the goods with the licensor's trademark are produced or sold outside the types of goods agreed in the agreement. Goods; selling goods bearing the licensor’s trademark beyond the sales scope agreed upon in the agreement, etc.

The above disputes all arise because the party authorized to use the trademark produces or sells the trademark in violation of the agreed scope of the license. However, the two behaviors are not qualitatively identical.

The production behavior of using a trademark beyond the authorized scope.

This type mainly includes the production of goods bearing the licensor’s trademark in violation of the quantity, time or product category agreed with the licensor. Since this type of behavior not only violates the contract, constituting a breach of contract, but also infringes upon the licensor’s trademark rights, constituting infringement, the licensor has the right to choose to invoke contract law or trademark law to settle damages between breach of contract or infringement. Choose one to require the authorized person to bear liability for compensation.

It is not difficult to understand that using a trademark beyond the scope of the license constitutes a breach of contract, but why does this behavior also constitute an infringement of trademark rights? For example, a manufacturer OEMs a certain product for a trademark owner, and the contract agrees to produce 500 pieces, but the manufacturer actually produced 600 pieces. For the 100 pieces that were beyond the scope, although there were unauthorized rights defects in the use of the trademark, their quality, raw materials, workmanship, and actual manufacturers were not the same as the other 500 pieces. the difference. So, how can this kind of behavior infringe on trademark rights? This needs to be analyzed from the nature of trademark rights.

Trademark rights are essentially the trademark owner’s right to control the correspondence between a specific symbol and specific goods, rather than the right to control the trademark symbol. The essence of trademark infringement is not to distort, tamper with or replace the physical mark, but to cut off the connection between the trademark mark and the manufacturer, deceive consumers into confusion and misunderstanding, and misappropriate the goodwill accumulated by the trademark owner's honest work. . In other words, a trademark is the connection between a specific business identity and specific goods or services, rather than the business identity itself.

Therefore, protecting trademarks is to protect the connection between commodity producers and service providers that have worked hard to establish a relationship with the trademark, rather than to protect the commercial identity itself.

For the effectiveness of trademark rights to be realized, the trademark and the product need to be combined, but this combination can only be exclusive to the trademark owner, and any other individual or organization will not be legally authorized. , and shall not combine trademarks with products without authorization. Violating the agreement with the licensor, using the licensor's trademark in an excess quantity, time or product category, combining the product with the trademark, actually fabricating its relationship with the source indicated by the product, misappropriation and "riding". In addition, after such goods enter the market, they will also occupy the trademark owner's market share and reduce its market demand.

In addition to damaging the indicator function of the trademark, this behavior will also damage the quality assurance function of the trademark. The use of the licensor's trademark in violation of the quantity, time or product category agreed with the licensor is likely to cause the production of these products to escape the supervision and quality control of the trademark authorized user. At the same time, because the goods are not genuine, they are likely to be under repair. Services and later guarantees are rejected by the trademark owner, thus harming the interests of consumers, and in turn reducing the trademark owner's goodwill, causing its market evaluation to continue to decline, thus constituting an infringement of the trademark owner.

The act of selling goods bearing the licensor’s trademark beyond the scope of the license.

Such behavior includes selling goods bearing the licensor’s trademark beyond the quantity, time or regional scope agreed by the licensor.

The act of selling goods bearing the licensor’s trademark beyond the scope of the license falls into another category because it does not essentially infringe the licensor’s exclusive right to use the trademark.

Unlike the unauthorized manufacture of goods without the permission of the trademark owner, the goods involved in the act of selling a trademark beyond the scope of the license are goods produced with the permission of the trademark owner. After they enter the market, the goods and their production sources are not cut off. The perpetrator did not cause consumers to confuse or misunderstand the source of the goods, so his behavior did not constitute trademark infringement.

However, since this behavior constitutes a breach of contract, the trademark owner can claim liability for breach of contract. In fact, selling goods bearing the licensor's trademark beyond the quantity, time or area agreed upon by the licensor may also constitute unfair competition against the licensor or interested parties. For example, the trademark licensor only agrees with the licensee that the licensee will sell its goods in the Shanghai area, and other areas will be operated by itself. If the licensee transports the goods to areas other than Shanghai for sale, it will affect the trademark licensor. exclusive position in the local area, thereby reducing its market share and constituting unfair competition.

For this type of behavior, in terms of legal application and ease of proof, it is more advantageous to claim liability for breach of contract than to claim unfair competition.

In addition, losses caused by unfair competition can also be covered by the scope of compensation for breach of contract. Therefore, it is generally still the first choice to claim liability for breach of contract for this type of behavior.