concept

Exhaustion of trademark rights is also called exhaustion of trademark rights. Generally speaking, it means that the subject of trademark rights, including the trademark owner and the licensee, sells or transfers the goods with trademark rights in a legal way. The subject has exhausted the trademark rights on the specific goods and has no right to prohibit others from selling the goods in the market or directly using the goods.

brief introduction

This theory has been accepted by most countries in the world explicitly or implicitly, but there are different understandings of its exact content. Even in a country, scholars have different views on this theory. Therefore, neither the Paris Convention for the Protection of Industrial Property nor the TRIPS Agreement has made detailed provisions. As a result, there are disputes in academic circles about whether the trademark right is exhausted and what rights the trademark owner has exhausted after the sale of the trademark right goods, which has formed a theoretical fuzzy zone. Theory is the guidance of practice, but the fuzziness of theory also brings controversy in practice.

origin

Any theory comes from the needs of practice. In practice, after the trademark goods are legally sold or transferred by the trademark owner or licensee, the buyer is likely to sell them again, such as wholesale and retail, resale and so on. Problems arise from this. Because the first paragraph of Article 52 of the Trademark Law stipulates that "using a trademark identical with or similar to its registered trademark on the same kind of goods or similar goods without the permission of the trademark registrant" is an act of infringement of the exclusive right to use a registered trademark. Therefore, the buyer can only use the trademark goods he bought, and can't sell them again, otherwise it is trademark infringement. In this way, the trademark registrant completely monopolizes the sales channels of trademark goods. At the same time, because the buyer bought the trademark goods in a legal way, he paid the corresponding consideration at the time of purchase. This consideration includes not only the value of the commodity itself, but also the cost share of the seller in promoting the trademark of the commodity, that is, the value of the trademark in the commodity. On this basis, the trademark owner monopolizes the sale of the trademark goods and restricts the buyer's disposal of the goods after purchase, which is unfair to balance the rights and interests of buyers and sellers of trademark goods and is not conducive to promoting free competition and healthy market development. Based on the consideration of fairness and efficiency, the rights of trademark owners should be restricted theoretically and legally, and buyers should be allowed to continue to sell. Therefore, some people put forward the theory of exhaustion of trademark rights.

exception

The principle of exhaustion of trademark rights is stipulated to prevent trademark owners from abusing their rights. For example, it can prevent him from controlling the circulation channels of goods all the time, hindering the free circulation of goods, that is, preventing him from controlling all the retail rights of all the goods with the trademark in his hand through the exclusive right to use the trademark. However, the restriction of any right is not absolute, and the exhaustion doctrine principle of trademark right has its exception, because the primary function of a trademark is to commend the source and quality of goods and distinguish products produced by different commodity producers. Therefore, no matter whether the trademark right is exhausted at home, in the region or even internationally, if the seller changes the original nature or form of the goods after they are legally put on the market and still uses the original trademark without permission, then the trademark owner has the right to interfere. That is, the quality of goods or the goodwill of the trademark owner is damaged, or deceptive consequences are caused, the trademark owner has the right to bring a lawsuit, and the exhaustion doctrine principle of trademark rights is no longer applicable.

The exception of exhaustion doctrine principle of trademark right is embodied in international treaties and trademark laws of various countries. Paragraph 2 of Article 24 of the German Trademark Law stipulates: "Paragraph (1) does not apply when the owner of a trademark or a commercial mark has justified reasons to oppose the further commercial utilization of the commodity, especially when the condition of the commodity changes or is damaged after the commodity is put on the market." Paragraph 3 of Article 23 of the Trademark Law of Taiwan Province Province also stipulates that the exclusive right to use a trademark shall not be claimed for goods bearing a trademark except to prevent the goods from deterioration or damage or other legitimate reasons. Recently, in the case of David Duff, the European Court of Justice proposed two exceptions to the exhaustion doctrine principle of trademark rights: 1, and the original physical condition of the products inside the outer packaging caused opposite changes; 2, the mental outlook or smell of the product caused the opposite change, such as repackaging behavior changed the trademark owner's trademark pattern.

Therefore, if the trademark owner has justified reasons, such as re-pasting the logo to damage the original state of the goods, or damage the reputation of the trademark and its owner; The trademark image is seriously damaged in the use of publicity advertisements; If the distributor changes the trademark without permission, the trademark owner can use his exclusive right to prohibit others from selling or using the product in the market again, and has the right to file a lawsuit against the infringement. The principle of exhaustion of trademark rights and its exceptions complement each other, which embodies the principle of balance between intellectual property protection of trademark owners' exclusive rights and protection of public interests.

The principle of exhaustion of trademark rights actually means that after the trademark is transferred, the original trademark owner has no right to interfere with the right of the current trademark owner to use and dispose of the trademark, but there are still exceptions, provided that there must be justified reasons. Therefore, there are still questions. Bian Xiao suggested that it is necessary to log on to the legal map website to find professional lawyer services.