The scope of rights of registered trademark in China

According to Article 4 of the Paris Convention, within 6 months from the date of the first filing of an application in a member state, other member states can enjoy the priority of the first application. It also stipulates that if a trademark is already legally registered in that country, applications for registration in other member states should not be refused, which is known as the “as is” principle.

In addition to the “priority” enjoyed by the trademark registrant, Article 16 of the Intellectual Property Agreement specifies the scope of the exclusive right to use a trademark obtained after trademark registration.

The first paragraph of Article 16 stipulates that the owner of a registered trademark shall have the exclusive right to prevent any third party from using the same or similar signs as the registered trademark to identify the same or similar goods and services in trade activities. my country’s “Trademark Law” Article 38, paragraph 1 also has the same provisions. This clause can be understood as: ① For the same trademark, the owner of the registered trademark has two rights: prohibiting others from using it; b. have the right to use it on their own. ② For similar trademarks, the owner of the registered trademark can only restrict and prevent others from using it, and has no right to use it, otherwise it will be deemed to have changed the registered trademark on his own, resulting in its cancellation.

In order to prevent confusion and protect the interests of trademark owners, many countries have clearly stipulated the registration of “defensive trademarks” and “joint trademarks” in the Trademark Law, providing effective measures for the protection of “well-known trademarks”. “

The so-called joint trademark means that the trademark owner has indeed established a market reputation and has registered all words and graphics that he believes are “similar” to his registered trademark. The purpose of its registration is not for its own “exclusive use”, but only to prohibit others from using it. The ostrich brand trademark of Tianjin Ink Factory is a famous trademark, and the registered snake and bird brand is only to prevent others from using the similar trademark. “Defensive marks” are from the point of view of similar goods. The trademark owner registers its registered trademark on all “similar” or otherwise distinct goods. The intent is not to use them on these goods per se, but to ban them. Others use the same registered trademark on different items.

The protection of the exclusive right to use a trademark in my country’s Trademark Law is mainly reflected in Article 38, of which the first paragraph is similar to the first paragraph of the Intellectual Property Agreement. Paragraphs 2 and 3 respectively stipulate that: Selling goods that are known to be counterfeit registered trademarks, forging or manufacturing others’ registered trademarks without authorization, and selling counterfeit or unauthorized registered trademarks are all acts of infringement of the exclusive right to use a trademark. Article 45 of the “Intellectual Property Agreement” stipulates: ① If the infringer knows or has sufficient reasons to know that his activities constitute infringement, the judicial authority has the right to order him to pay sufficient fees to the right holder to compensate the right holder for the infringement. Compensation for damages caused. ② The judiciary shall also have the power to order the infringer to pay the right holder fees, which may include appropriate attorney fees. In appropriate circumstances, a member may authorize judicial authorities to order the infringer to surrender profits or pay statutory damages, or both, even if the infringer did not know or should have known that the activities he was engaging in were infringing without justifiable reason.

It can be seen from the above-mentioned provisions that it is the current practice of most countries to use “knowingly committed” as the basis for sanctions. In the field of intellectual property, not only negligence and ignorance cannot be used as a basis for evading tort liability, but also whether negligence and ignorance can be exempted from tort liability is also controversial. The 1982 Trademark Act did not have the “principle of ignorance and innocence”, but this principle was introduced when the Trademark Act was amended in 1993. In 1994, the number of trademark infringement cases increased, but the number of appeal cases increased. Administrative agencies are reduced. The reason is that it is difficult for counterfeiters to provide evidence to prove that counterfeiters “know”,

This mistake of confusing criminal liability conditions with general tort liability conditions has been proven in practice to be detrimental to the protection of trademark rights, and it is necessary to revise it as soon as possible.

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