General restrictions:
The first is the trademark restriction, the content of the recognized or recognized well-known trademark is determined, and can neither expand nor change;
The second is the restriction of goods or services, the relationship between well-known trademarks and approved use of goods or services is constant, may not expand the scope of goods or services at will;
Third is the time limit, although the law does not clearly stipulate the well-known trademark protection period, but the well-known trademark should not be lifelong, should be dynamic and changing, and the well-known trademark with registration as the premise of recognition should also be within the validity period of the registered trademark.
Special restrictions: Different from general trademarks, well-known trademarks have an inseparable relationship with trademark registrants, commodity quality reputation, etc., so some national laws strictly restrict or even prohibit the transfer or licensing. China's trademark law and Trademark Law implementation regulations have no provisions in this regard, how to master it in practice
First of all, in accordance with the principle of non-prohibition of the law and the private nature of trademark rights, law enforcement agencies should not set conditions to restrict or prohibit the transfer or licensing;
Secondly, other relevant laws can be invoked to deal with acts that abuse the right of transfer or license and ultimately harm the public interest;
Thirdly, it is worth encouraging and advocating to transfer the trademark right and give full play to the due value of the well-known trademark whose reputation is obviously weakened due to the poor management of the trademark registrant.
< Supplement > Irregular use and infringement
The non-standard use of well-known trademarks is mainly manifested as follows:
First, expand or change the scope of well-known trademarks;
The second is to expand or change the scope of goods or services;
The third is to expand or change the scope of the trademark right.
The irregular use of well-known trademarks not only violates the trademark legal system, but also infringes on the social order and public interests, so it should be prohibited. In addition to the characteristics and essence of general trademark infringement, the infringement of well-known trademark rights by others also has such prominent forms of expression:
First, the well-known trademark of others is registered as a business name or domain name;
The second is to dilute the use of behavior: one is to weaken the use, the other is to derogate the use.
Since the provisions of the Trademark Law on well-known trademarks are very rough and principled, for the above two types of acts, if the trademark law has provided, it can be dealt with in accordance with the trademark Law or the implementing regulations of the Trademark Law; If there is no clear provision, it can refer to the provisions of the general illegal use of trademarks or trademark infringement, or refer to other laws and regulations for handling.
The cancellation principle of three years of non-use does not apply to different classes of identical or similar marks held by the owner of a well-known mark
China gives special protection to well-known trademarks, that is, cross-class protection. Based on this principle, the law gives the owner of a well-known trademark the function of exclusivity regardless of whether the owner has registered the same or similar mark as the well-known trademark in another class. Article 13 of the Trademark Law stipulates: Where a trademark applied for registration in respect of identical or similar goods is a reproduction, imitation or translation of another person's well-known trademark that has not been registered in China and is liable to cause confusion, it shall not be registered and shall be prohibited from use. Where a trademark applied for registration in respect of a different or dissimilar commodity is a reproduction, imitation or translation of another person's well-known trademark already registered in China, which misleads the public and may cause damage to the interests of the registrant of the well-known trademark, it shall not be registered and shall be prohibited from use. Where a registered trademark violates the provisions of Articles 13, 15, 16 or 31 of this Law, the trademark owner or an interested party may, within five years from the date of registration of the trademark, request the Trademark Review and Adjudication Board to make a ruling to cancel the registered trademark. For malicious registration, the owner of a well-known trademark is not subject to a five-year time limit.
It can be seen that China's trademark law not only protects well-known trademarks registered in China, but also protects well-known trademarks not registered in China. Especially for the well-known trademarks registered in China to expand to different or not similar goods, which fully reflects the huge value of well-known trademarks and practical legal significance.
Recently, the number of revocation cases of unused trademarks for three years accepted by the State Administration for Industry and Commerce has soared. On the one hand, it reflects people's understanding of intellectual property law, especially trademark law, and their ability to use it. On the other hand, it reflects the society's demand and emphasis on trademarks.
However, from May 16 to June 27, 2005, a daily chemical company in Guangzhou filed a series of applications to the State Trademark Office to revoke the Guangdong Solar God Group Company's solar God +Apollo+ picture combination trademark in categories 8, 11, 14, 17, 23, 27, 31. The application is a record. As the combination trademark of Helios Group is a well-known trademark recognized by the commercial judge of the State Administration for Industry and Commerce in December 2004, no matter whether the daily chemical company is for its own use or other purposes, whether the final application can be approved is widely concerned by the business community, trademark management departments at all levels and intellectual property legal workers. If these categories of marks are revoked, it is clearly in breach of the protection system of well-known marks; If not revoked, these ostensibly have the characteristics of ceasing use for three consecutive years, which is inconsistent with the provisions of Article 44 (4) of the Trademark Law. How to deal with this typical problem has become a practical problem in front of trademark managers.
The well-known American Coca-Cola trademark is a world famous brand in the beverage industry. The trademark must also have a large number of protective registrations in other categories, and there may also be trademarks that have ceased to be used for three consecutive years that are identical or similar to well-known trademarks but of different categories, and such trademarks are obviously not necessary and reasonable to revoke. Even if it is forcibly revoked, others will also suffer from the confrontation and blow of the owner of the well-known trademark of "Coca-Cola" in the process of registration and use. China and most countries in the world have made corresponding prohibitions.
The restriction of the right to revoke a trademark for three consecutive years is to prevent the abuse of rights by others and to correctly implement the principle of special protection for well-known trademarks. This principle is consistent with the TRIPS Agreement and relevant international treaties, and Chinese laws and regulations also have corresponding provisions. At the same time, it can avoid increasing the burden on China's limited administrative and judicial resources. Based on the principle that a well-known trademark registered in China, in addition to enjoying the same rights and interests and receiving the same protection as other registered trademarks and unregistered well-known trademarks, also prohibits the registration and use of non-similar goods by others to a certain extent if the registration and use may be detrimental to the interests of the owner of the well-known trademark, The trademark of a well-known trademark of a non-similar commodity can only be registered by the holder of the well-known trademark.
First, China's trademark law gives the owner of a well-known trademark the right to challenge the use of an identical or similar trademark on a non-similar product. If allowed to be used by others, it will cause confusion with the origin of the goods of the well-known trademark; It may also weaken or gradually weaken the distinctive characteristics of well-known trademarks, dilute the value of well-known goods, and damage the reputation of well-known trademarks.
Secondly, well-known trademark owners to strengthen the protection of their own trademarks, in non-similar goods registered with the same or similar trademarks with well-known trademarks to strengthen defense, this is a positive protection measure, should be encouraged, not only from the surface simply think that three consecutive years of non-use to be revoked, but to fully consider the protection principle of well-known trademarks and the consequences of revocation, And whether the purpose can actually be achieved. Otherwise, it runs counter to the protection principle of well-known trademarks, is not conducive to the realization of the development strategy of international brands, and creates a new legal conflict.
Thirdly, considering the consequences and significance of trademark revocation, there is no need for revocation. The revocation principle is set up on the basis that others can properly use or obtain registration rights. This applies only to ordinary marks and does not apply to the reasonable registration of trademarks identical or similar to well-known marks on non-similar goods. Even if it is revoked, in accordance with the special protection of well-known trademarks and the provisions of no registration within one year, others still cannot use or register a trademark identical with or similar to the well-known trademark. This is a matter of no benefit to others.
Although the law does not use revocation for three consecutive years, how to correctly understand and apply it is a serious issue for judicial practitioners. The correct application of law can not only effectively resolve social conflicts, quell conflicts between parties, reduce disputes, but also save limited administrative and judicial resources and avoid many litigation burdens, thus promoting China's economic development and the construction of a harmonious society, and playing a positive role in maintaining social stability.
Of course, the use of registered trademarks is an obligation conferred by trademark law. If the registered trademark is shelved for a long time, it will not only reflect the value of the trademark itself, but also make the labor and cost paid by the registered person not get the corresponding return, and it will not play the function and role of the trademark. It is also related to the limitation of the rights of others, which affects the interests of those who really need to use the trademark. Based on the principle of equality and justice, and with full consideration of the interests of trademark registrants and others, the formulation of Article 4 (4) of the Trademark Law stipulates that the suspension of use for three consecutive years shall be revoked, which is in line with the intention and legislative spirit of the Trademark Law. However, a well-known trademark that is identical or similar to it in other categories shall not be subject to the provisions of suspension of use and cancellation for three consecutive years. In fact, the publicity and use of well-known trademarks by well-known trademark holders cover other categories, so the application for cancellation made in accordance with Article 44 (4) of the Trademark Law shall be rejected or not accepted.
Dr. Jiang Zhipei, President of the Intellectual Property Division of the Supreme Court, stressed the judicial protection of well-known trademarks
Copyright: Institute of Empirical Law, Peking University. All rights reserved
At the recent China Trademark Festival held in Shenzhen, President Jiang Zhipei said that the People's courts should strengthen judicial protection for well-known trademarks. He stressed that the judicial protection of well-known trademarks can be divided into two levels: one is the protection at the registration stage, and the other is the protection at the stage of trademark infringement after registration. The protection provided for in Article 13 of the Trademark Law refers to the registration stage or the protection of unregistered well-known trademarks. Any infringement of a well-known trademark of another person that has not been registered in China (such infringement refers to the elements provided for in Article 13 of the Trademark Law) may be requested to be denied registration and prohibited from use.
The judicial interpretation of the Supreme Court has also made provisions on the civil legal liability for the cessation of infringement in the first paragraph of article 13. The non-registration and prohibition and cessation of use provided for in laws and judicial interpretations are remedies for rights.
Like most other countries, China implements the trademark registration protection system, and registration is required to enjoy the exclusive right of trademark. Therefore, well-known trademarks must also be registered in order to obtain the exclusive right to use the trademark, in order to enjoy the second level of protection mentioned earlier.
At the same time, Article 1 (2) of the Supreme Court's judicial interpretation of the Trademark Law stipulates that those who infringe on registered well-known trademarks across categories shall bear various civil liabilities. These are provisions to strengthen the protection of well-known trademarks.
President Jiang Zhipei disclosed that in accordance with the principles of case identification, passive identification and identification according to the needs of cases, as of October this year, the national courts have identified a total of 71 well-known trademarks, of which 9 well-known trademarks are owned by foreigners. The judicial protection of well-known trademarks has been strengthened in accordance with the law, effectively protecting the legitimate interests of trademark owners at home and abroad. He said that the people's court's recognition of well-known trademarks should be carried out in strict accordance with the law and judicial interpretation, and should prevent improper recognition from damaging the public trust and authority of the well-known trademark system.
President Jiang Zhipei said that in the network environment, protecting well-known trademarks and other intellectual property rights according to law, adjusting the rights and obligations between domain name users and relevant intellectual property rights holders and other civil subjects, and correctly adjudicating civil disputes involving domain name and Internet trademark infringement have become another new topic of judicial protection of intellectual property rights in the network era.
In July 2001, the Supreme People's Court promulgated and implemented the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Disputes Involving Computer Network Domain Names. The judicial interpretation explains how people's courts apply the general principles of Civil Law, the Law against Unfair Competition and the Civil Procedure Law in civil dispute cases involving the registration and use of computer network domain names.
In October 2002, the Supreme People's Court promulgated the Interpretation on Several Issues concerning the Application of Law in the Trial of Trademark Civil Disputes, which stipulated one of the main forms of trademark infringement in the Internet environment.
The publication of these judicial interpretations marks that in the new field of computer networks, China has set up judicial protection and judicial adjustment mechanisms for the rights and obligations of trademarks, especially well-known trademarks, trade names, legal fair competition, domain names and other civil rights and interests, which will certainly promote the healthy development of China's e-commerce and information network.
In Article 1 (3) of the Interpretation of Several Issues concerning the Application of Law in the Trial of Trademark Civil Dispute Cases, the Supreme Court clearly stipulates a trademark infringement situation in the network environment from the perspective of defining trademark infringement, namely: "Registering the same or similar words as the registered trademark of others as a domain name, and conducting e-commerce transactions of related goods through the domain name, which is easy to cause misidentification by the relevant public" belongs to the infringement of trademark rights provided for in Article 52 (5) of the Trademark Law, and shall be investigated for civil liability such as stopping infringement and compensation. This regulation provides effective legal protection for the exclusive right to use registered trademarks in the network environment.
In addition, other infringements that have been involved in violation of the trademark law in the network environment are not very different from the identification of general violations of trademark rights in the "real society", and the people's court will investigate legal responsibilities in accordance with the corresponding provisions of the trademark Law.
President Jiang Zhipei stressed the important role of trademarks in economic and trade development, he said that the characteristic of trademarks is its distinctiveness, and the role of trademarks is to distinguish the source of goods and services without confusion. Therefore, there is the problem of the unity and authority of registered trademarks. President Jiang Zhipei introduced that in order to maintain the unity and authority of the authorization of registered trademark rights, the Supreme Court clearly approved: Under the current legal framework, where the law stipulates that the trademark authorization dispute shall be accepted by the administrative organ and made a decision, and then if the parties refuse to accept the dispute, they can still bring an administrative lawsuit to the people's court for administrative review, and the people's court will not accept the dispute as a civil infringement dispute according to law. This is due to the principle of court competence in China's civil procedure law and the authorization system determined by the trademark legal system.
Therefore, in the case that the relevant judicial interpretation draft reiterates that the remedies for disputes involving trademark authorization are clearly provided for in Articles 30, 33 and 41 of the Trademark Law, the people's court, in accordance with the provisions of Article 111 (3) of the Civil Procedure Law, informs the plaintiff to apply to the relevant administrative organ for processing, and the people's court does not handle it as a civil case. Avoid causing confusion in the system of registered trademark rights and waste of judicial resources.
President Jiang Zhipei said that for a period of time, the use of enterprise names, shop names and other brand-name phenomenon prominent. In order to strengthen the protection of the registered trademark right and crack down on the illegal acts of the next brand name, the Supreme Court and the relevant departments of the State Administration for Industry and Commerce have reached a consensus to resolve the conflict between the trademark right and the enterprise name in the form of civil liability. With regard to the way of bearing liability for acts constituting infringement of exclusive right to use a trademark and unfair competition, the people's court shall have the power according to law to judge the party constituting infringement to stop or change the name of the enterprise, so as to stop the infringement of the brand-name from the root.
