On January 10, the Seminar on “Strengthening Judicial Protection of Trademarks and Serving the Construction of a Strong Brand Country”, as co-hosted by the Intellectual Property Rights Trial Theory Professional Committee of Association for the Study of Trial Theories of CLS, Intellectual Property Rights Judicial Professional Committee of Intellectual Property Law Association of CLS, Professional Committee on Intellectual Property Cases of Case Law Research Association of CLS, was successfully held. Yu Bangqing, Chair of the Legal Committee of QBPC and Chen Xi, Vice Chair of LC, attended and delivered speeches on related topics, and over 40 representatives of QBPC member companies attended online.
Yu Bangqing explained the challenges in the protection of well-known trademarks from the perspective of business, which mainly covered the examination of the necessity of determining well-known trademarks and illegal gains, right conflicts between well-known trademarks and registered trademarks in civil procedures, the application of Article 13 (3) of the Trademark Law to identical and similar commodities, the high proof threshold for recognizing well-known trademarks, and the cross-category protection of unregistered well-known trademarks.
Regarding the review of the necessity of determining well-known trademark, Yu Bangqing believed that it was a tough problem for enterprises. The administrative procedures were more rigorous than the civil tort procedures in this respect. He suggested to relax the review criteria on the necessity of determining well-known trademarks, i.e., in individual cases of remedy, wherever there was a factual basis for well-known trademarks and a demand for remedy, a determination should be made, especially if the registration of the other party’s trademark application was of obvious malice, so that trademarks with relatively high popularity could be effectively protected. As a necessary means of legal remedy, a well-known trademark should be determined as necessary.
With regard to the right conflicts between a well-known trademark and a registered trademark in civil proceedings, if the trademark of defendant was a registered trademark and the infringing act was the use of the approved registered trademark on the approved commodities or services, the court was unable to directly accept this kind of case. As a result, the plantiff had to first invalidate the trademark in the administrative procedure. As the invalidation procedure was time consuming, if the civil lawsuit could only be initiated upon the completion of the invalidation of the registered trademark of the defendant, it was extremely unfavorable to the timely protection of the legitimate interests of the holders of prior well-known trademarks. Based on the judicial interpretation of well-known trademarks, the court could directly handle cases of right conflict between well-known trademarks and registered trademarks. There had been prior cases accepted by certain courts, and further clarification through judicial interpretation was expected.
It was still controversial whether the rules of cross-category determination of well-known trademarks in Article 13 (3) of the Trademark Law could be applicable to the same or similar commodities, which had also brought about uncertainty to effective right protection of trademark owners. For trademark holders, the acts of freeriding on well-known brands in the market should be promptly suppressed. To combat cross-category brand freeriding and malicious trademark infringement, especially to protect well-known trademarks, right holders had to spend considerable time and money on collecting related evidence while the high cost and heavy burden of proof had discouraged them from resolving such legal disputes. The status was obviously not conducive to safeguarding the legitimate rights and interests of holders of well-known trademarks. Furthermore, in cases of secondary or multiple recognition, some right holders complained that a large amount of supporting evidence was still required on some occasions, which would undoubtedly impose a greater burden on the right holders. The courts and the State Intellectual Property Office had moderately relaxed the evidence requirements in some relevant cases. Accordingly it was recommended that related evidence rules be further improved in the judicial interpretation, and the determination standard and evidence threshold be further reduced appropriately, so that the rights and interests of well-known trademarks could be better protected.
In terms of the protection of well-known trademarks, the current practice was still to distinguish registered well-known trademarks from unregistered well-known trademarks for cross-category and same-category protection respectively, which was inconsistent with the tendency to increasingly focus on trademark use and goodwill protection, and highly detrimental to the effective protection of unregistered well-known trademarks. It was recommended that the fifth amendment of the Trademark Law address the issue.
Focusing on the theme of “Improving the Punishment and Compensation System for Malicious Trademark Registration”, Chen Xi analyzed acts and subjects of malicious trademark registration, defects of the current regulations of Trademark Law, and proposed suggestions on amending the law.
Based on the different rights and interests infringed, the malicious registration of trademarks could be divided into two types, namely malicious registration of trademarks and “malicious registration applications not for the purpose of use”, with trademark agencies, natural persons, legal persons or other organizations constituting the subjects of malicious registration.
Under the existing trademark law, the punishment and compensation system was inadequate to handle the above subjects. Article 68 of the Trademark Law neither specified all subjects of malicious trademark registration nor identified how penalties should be imposed by the court. In present judicial practices, malicious trademark registrants other than agents might only bear the following consequences for their malicious registration behavior: First, the application for registration might be rejected and not registered; second, the application might be declared invalid. However, no other damages could incur against them. Meanwhile, there also existed a serious imbalance of cost between infringement and defending rights. The economic cost for committing malicious trademark registration was extremely low compared with the high price paid by the right holders to prevent malicious registration.
Chen Xi discussed the classic case of Emerson, a member of the QBPC, as an example, and proposed suggestions on the improvement of the punishment and compensation system for malicious trademark registration, which included refinement of administrative liability, introduction of civil damages, combating malicious trademark litigation, and optimization of cross-over civil and administrative procedures in relevant civil litigation.
The Seminar was divided into four panel discussions, which highlighted multiple important issues regarding the fifth revision of the Trademark Law including the protection of well-known trademarks, the boundary of trademark protection, legal liabilities for infringement of trademark rights, and rules of malicious registration and malicious litigation.