The legal issues of trademark administrative litigation in China

   In China, there is a kind of trademark administrative dispute parties are foreigners (including foreign legal person, organization and natural person). As against the State Trademark Office and the Trademark Review and Adjudication Board administrative adjudication, the formation of foreign trademark administrative litigation cases foreign parties to the people's court to bring an administrative lawsuit. The case is not a conflict specification guidelines for which national substantive law issues, but to determine suitable China substantive law cases. But these cases involving foreign elements, namely subject of litigation party must be a foreign party. Of course, this kind of case is the administrative proceedings, the defendant in the trial of first instance must be on behalf of the state in accordance with the application of the authority or the parties to the administrative decisions of administrative organs. Such cases in addition to the complexity of its own, but also because of this kind of case the parties to the case of evaluation, evaluation and even on the judicial protection of intellectual property rights system. However, the results of these cases the foreign party is interested, not on the case evaluation are not objective and fair. I passed by the empirical analysis, the Beijing High Court of foreign trademark administrative litigation judgment and find out the problem, and briefly comments on foreign trademark administrative litigation.

   One, current legal provisions

   China's current mode of registered trademark rights protection is the administrative protection and the judicial protection of parallel. To determine the trademark ownership, the existing provisions of law by the parties choose completely legal relief form, can choose the administrative remedy, can also choose the judicial protection of civil trial. If the parties to the administrative relief in the administrative adjudication disaffected, can bring an administrative lawsuit, but does not belong to the category of civil judicial remedy.

   The current "trademark law" article forty-first and the provisions of article fifty-third of the trademark dispute settlement procedures (including infringement). Article first paragraph forty-first requires a violation mark registered as a trademark object situation. For registered trademark, if the violation of this Law in tenth, 11, 12 of the provisions, or by deception, other improper means to obtain registration, the registration of a trademark trademark; other units or individuals may request the judges ruled that the revocation of the registered trademark. In the second paragraph of the act of forty-first stipulates that the processing of registered trademark infringement of the legitimate rights and interests of others, if the violation of the thirteenth article of this law second, fifteenth, sixteenth first and 31 shall apply for the registration of trademark infringement of legal prior rights or other legitimate rights, within 5 years from the date of registration of trademarks, trademark or any interested party may request the judges ruled that the revocation of the registered trademark; registered trademark for evil, all the people without the limitation of 5 years. In the third paragraph of the forty-first provisions of the above two except for how to deal with the case, disputing a registered trademark may within 5 years from the date of the trademark registration, application for a ruling to the trab. At the same time, "trademark law" provisions of article fifty-third, the fifty-second article of this law the infringement upon the exclusive right to use a registered trademark (especially the provisions of the fifth paragraph to the registered trademark causing other damage) one of the disputes, settled by the parties through consultation; refuse consultation or negotiation fails, the owner of a registered trademark or any interested party may bring a lawsuit to the people's court, or request the administrative authority for Industry and commerce.

   There are two, the current legal problems

   China's "trademark law" although by the National People's Congress enacted, but it did not completely shake off the effects of state intervention in economic life mode of economic operation plan. "Trademark law" is obviously affected by the State Administration for Industry and commerce administrative enforcement of law and regulations, the rules for implementation of the trademark law and the interpretation system was explained by the State Administration for Industry and Commerce and other specific circumstances was remarkable. In the specific application of the law, it is not difficult to understand the trademark law in the "application for trademark registration" chapter only the provisions of trademark disputes handled by the State Administration for Industry and commerce, and does not provide the court according to the civil procedure for trial. Especially in the second paragraph of article thirteenth trademark law forty-first relates to damage other well-known trademark infringement, Fifteenth agent violates the principle agent registered agent or trustee of trademark infringement, sixteenth fraudulent use of geographical indications and misleading the public tort, thirty-first damage prior rights of others or registering other have used some influence the trademark infringement behavior, these behaviors are damaging the legitimate rights and interests of others violations. In accordance with the provisions of the trademark law article fifty-third, the parties may apply to the administrative reconsideration application, business process to seek relief, may also directly bring a civil action to the court to seek judicial relief, not only for the rule only allows the parties to seek a way of administrative remedy to the judges, the initiative is in the hands of the parties, by the choice of remedy, the state power should not interfere. But the need to pay attention to is, if within five years, the parties may choose to seek relief of administrative procedures, can also choose to judicial proceedings to seek relief; more than five years, unless it can be determined by the applicant with malice, but only limited to the well-known trademark owners can still start the administrative procedure, the administrative relief and other needs, the trademark owner or the interested party infringement occurs in more than the prescribed time limit, in accordance with the provisions of civil litigation, since the discovery of tort within two years after the prosecution, still can obtain compensation. If is the continuing infringement is not affected by two years of limitation of action, so far the only can choose only the judicial relief of civil damage compensation -- v.. Of course, if the parties over the administrative remedy under the five year term in dispute, but continuing infringement is not subject to the limitation to bring a civil action, is in violation of the principle of honesty and credit and the principle of fairness? Consumer five years may have recognized trademark facts established, the trademark protection is against the social and public interests? Particularly in the emphasis on maintaining a stable economic order and transaction security of the country under the rule of law, are defined over a five year period right holder or interested parties can't challenge or dispute, for example America, france. In the final analysis, our country in dealing with rights and tort litigation confused the difference in trademark registration is improper and the registered trademark invalid, and thus lead to contradictions and conflicts are difficult to handle in the judicial practice.

   Therefore, in the revision of the trademark law, trademark ownership dispute shall be on the question of procedure stipulated in civil procedure, in order to eliminate the provisions of unknown defects in the "trademark law".

   Three, case analysis

   For example, Japan futabasha, involving the "crayon Shinchan" trademark dispute case[1]The problem is, in the judicial practice reflection. On the surface, the focus of controversy is whether the "trademark law" provisions in the second paragraph of the forty-first five year period more than the issue of controversy, in fact, in this case from the Shanghai City Intermediate People's Court of a copyright infringement disputes. The dispute must first solve the ownership problem, that is to say, whether prior works Japan futabasha right to resist the exclusive right to use a registered trademark in the post, whether can be confirmed to be approved and registered by the Trademark Office for the prior copyright infringement?

   The trademark was generally has two ways, namely, access to and use the registration obtained. According to the provisions of the Trademark Law of the Chinese, only through the national administrative organ of registration and approval in our country trademark, just enjoy the exclusive right to use a registered trademark. However, the exclusive rights to use registered trademarks obtained shall not damage the prior right of another person ("trademark law" article ninth, article thirty-first). The existing prior rights include the right of citizens of the portrait, name right, copyright, commercial design patent right, trade name right, right of appellation of origin. According to the provisions of China's "trademark law" in article thirty-first, "the application for trademark registration shall be without prejudice to the prior right of another person, or by improper means to register the prior rights of others or malicious trademark." Thus, the original intention of legislation of China's "trademark law" is to protect the existing prior rights of others. The infringement of the prior right in the application for trademark registration, trademark shall not be approved. Moreover, the trademark office if the trademark of improperly registered, existing prior rights of persons or parties can self trademark has been approved and registered within five years from the date of the request, the judges ruled that the revocation of the trademark ("trademark law" forty-first paragraph two).

   According to the "Regulations" of the trademark law, applications for trademark registration approval means that the applicant has the exclusive right to use a registered trademark. However, from the legal provisions on trademark rights, thus obtained, is only a presumption of rights. The Trademark Office in process review, notice and objection, because the search range limitation and errors in judgment, still may not meet the statutory conditions of approval of the registration of the trademark. In addition, the existing prior rights of people may also because of negligence or other reasons, no objection in the objection period. Therefore, as the connection procedure, prior right to request the TRAb for revocation of the trademark in dispute, which request TRAb revocation infringes upon the prior right of registered trademarks has become inevitable.

   Futabasha's proposed nine for revocation of the trademark in dispute request in 2005 26 January, trab. Judges in the acceptance, review process shall be revised trademark law of 2001 "". In 2001 the revised "trademark law" on the revocation of the trademark in dispute prior rights provides for a period of five years, therefore, judges according to the 2001 revised "trademark law" for "five years" period no problem. However, such provisions shall apply, the registered trademark has been approved in 1997 July 6, how to identify, problems. Included in the subsequent trial program to recognize the "five years" period is also a problem.

   The judges and the court of first instance that, "five years" period is a problem that should be solid, since 1997, began in July 6 date. However, the court of second instance is considered to be the applicable law shall apply, in 2001 revised "trademark law", and further apply the law of "five years" period. So we can draw the conclusion, the controversy over the case period shall be calculated since December 1, 2001.

In the first trial procedure for ascertaining the facts are as follows: "crayon Shinchan" is a Japanese citizen Usui Yoshihito cartoon, futabasha in 1992 after Usui Yoshio authorized the works, exclusive, exclusive copyright and merchandising right. Between 1992 and 2005, the "crayon Shinchan comic series published by futabasha, widely distributed in japan. After 1994, futabasha through licensing publishing, will the "crayon Shinchan comic series published in Hongkong, Taiwan. "Cartoon" crayon Shinchan will play in Japan, Chinese Hongkong, Taiwan and other Southeast Asian countries, area. Futabasha "crayon Shinchan" trademark since 1994 in Japan, Chinese registered in Taiwan, involving 9, 14, 16, 25 and other dozens of categories. April 1, 1995 futabasha signed the merchandising right contract and International Film Company Limited, the merchandising right cartoon "crayon" in Asia to provide pictures International Limited exclusive exercise, by the company responsible for the "crayon Shinchan" cartoon product development, manufacturing, mainly including toys, stationery, leisure clothing and other goods, and in the Taiwan market sales. The "crayon Shinchan comic series, in Chinese formally issued in 2003. Futabasha "crayon Shinchan" trademark registered in the Chinese, began in March 18, 2002, by the international company to apply for registration, approved in July 7, 2003, the registered number is 3117066, in twenty-first toothbrush, cup, paper towel dispenser goods. Futabasha mentioned should be identified as well-known trademark No. 3117067th "crayon and map" trademark by the International Film Company Limited in March 18, 2002 filed, was registered in February 28, 2004, used in the sixteenth books, comic books, cardboard products. This fact was confirmed in the procedure of first instance, and the parties have no objection.

   To enter the mainland market Chinese, futabasha found nine "crayon Shinchan" trademark owned Copyright (i.e. the disputed trademark) from Guangzhou city Enjia Trade Co., Ltd. in early 1996 to the Trademark Office to submit applications for registration, and in 1997 6, July was approved and registered one by one. Since then, the transfer of the disputed trademark Co. Ltd., Shanghai Enjia economic development Guangzhou Chengyi eyes Co. Ltd. and Jiangsu Xiangshui Shi Fu Economic Development Co. Ltd., and the transfer of trademark examination and approval by the trademark office. In order to safeguard their legitimate rights and interests of the three companies, futabasha (real trademark holders) to the Shanghai first intermediate people's court, the case is the copyright infringement. At the same time, futabasha to the Shanghai first intermediate people's court for injunction before litigation request, and ordered the three defendants to immediately stop the infringement, compensation for economic losses totaling 1000000 yuan, and bear reasonable expenses. The first instance court (2004) Shanghai China five (know) at the beginning of the word no. 156th civil ruling, support futabasha's request, and issued a preliminary injunction. The trial court upheld the original ruling[2].    

   The choice of a civil lawsuit, you can select a tort, can also choose the action of confirmation. In this case the parties choose the right action of confirmation, in judicial practice, the understanding of a disagreement. Both patent, trademark, or copyright, as long as there are specific rights exist, may lead to dispute ownership rights. Therefore, the court in dealing with such cases, we must first confirm the rights of ownership, and to distinguish the prior rights. According to the fact of infringement behavior. Although the legal provisions of China's patent, trademark was awarded the State Intellectual Property Bureau and the State Administration for Industry and Commerce (copyright can also go to the State Copyright Agency registration authority), the existence of administrative confirmation procedures, however, our country's administrative relief and judicial relief parallel double protection system. As the right person for the relief program, should depend on the autonomy of the parties. Not because the law clearly stipulates the procedures of administrative remedy, and exclude the party to seek judicial relief program -- civil action.

   In this case the futabasha in civil tort and affirmative petitory action at the same time, the TRAb then lifted the revocation of the trademark in dispute administrative application, are allowed by the law, there is no improper. But the problem is the administrative relief and civil relief for different purposes. Japan futabasha filed a lawsuit in Shanghai, is to confirm the prior rights, to stop the infringement and claim compensation for the purpose of nature; mention to the judges in Beijing for revocation of the trademark in dispute are designed to legitimacy fundamentally denies the infringement of trademark, after all the registered trademark in dispute on 6 1997, July, has been nearly eight years later. Due to futabasha and their agents to give full consideration to the risk of Shanghai tort relief, in order to reduce insurance administrative dispute procedure in Beijing is very logical, but they probably didn't expect in this process will encounter again and again lost the case.

Authors: Tian Shuqi, member of the Beijing Lawyers Association of Patent Commission, lawyers