A, the meaning of trademark promise to sell
1, the source of the promised sales.
Promised sales originated from Article 28 of the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS Agreement). After China's entry into WTO, it also introduced "promised sale" in Article 1 1 of the Patent Law to meet the needs of patent system integration. However, the TRIPS Agreement does not define "promised sales", so the Supreme People's Court has promulgated "Several Provisions on Applicable Legal Issues in the Trial of Patent Dispute Cases". It can be seen that promised sales is an act of clearly expressing willingness to sell a certain commodity to a specific or unspecified relevant public. The original intention of its legislation is to control the sales behavior of patent infringement in the preparatory stage, so as to improve the efficiency of the patentee to stop infringement, reduce the cost of stopping infringement, and finally effectively safeguard the exclusive rights of the patentee.
2, the meaning of trademark promise to sell.
Since the sales promise in the sense of patent law refers to the specific behavior for the purpose of sales, such as selling patented products by publishing advertisements, exhibitions, public demonstrations, sending price lists, auction announcements, bidding announcements, reaching sales agreements, etc. These behaviors just correspond to the trademark use behavior stipulated in Article 48 of the Trademark Law: the trademark use mentioned in this Law refers to the use of trademarks in commodities, commodity packaging or containers, commodity trading documents, or in commercial activities such as advertisements and exhibitions to identify the source of commodities. In other words, the use of trademarks is also an act of identifying the source of goods/services based on the sales and circulation of goods or the provision of services.
According to the way of public use, the use of trademarks can be divided into the use of sales circulation links, the use of advertising media, exhibitions (including exhibitions in shops/online stores and exhibitions at trade fairs) and other commercial activities. Among them, the promise to sell trademarks should include the use of the latter two ways, namely, the use of advertising media and exhibitions and other commercial activities. It can be seen that the promise to sell trademarks is a lower concept of trademark use, which can be defined as expressing the intention of selling trademark products through commercial activities such as advertisements and exhibitions (including exhibitions in shops/online stores and trade fairs).
Second, the dilemma of legal application of trademark promise sales
Promising to sell a trademark is a legal term that was put forward only in recent years, but China's Trademark Law and related laws and regulations have not clearly stipulated it for the time being, so that in judicial practice, does the promise to sell a trademark constitute infringement? If it constitutes trademark infringement, should Article 57 of the Trademark Law be applied? There is still controversy.
1, the first view: the promise of trademark sales constitutes trademark infringement.
In the case of trademark infringement dispute between Dongguan Huamei Food Co., Ltd. and Hunan Xiangmei Food Co., Ltd. (20 15), the Hunan Higher People's Court held that although the plaintiff Huamei Company did not buy the real thing (note that the alleged infringing products were a series of moon cakes), the types of moon cakes entrusted by Hongmayuan Company to Mei Company included three kinds of moon cakes accused of infringing products. Xiangmei Company also published the alleged infringing products in detail on its website and brochures, including the types, quantities and selling prices of moon cakes. Therefore, Xiangmei Company not only produced the accused infringing products, but also intended to sell the accused infringing products. Moreover, the other two series of moon cakes are sold every year and Thanksgiving month, which is not in line with the commercial common sense that the "ritual moon love" series of moon cakes are not actually sold. Accordingly, according to Item (1) and Item (2) of Article 52 of 200 1 Trademark Law, it is determined that the defendant constitutes trademark infringement.
2. The second point: the promise of trademark sales does not constitute trademark infringement.
In the case of trademark infringement dispute between Jilin Changyuan Pipe Industry Co., Ltd. and Beijing Aerospace Kaiser International Investment Management Co., Ltd. (20 16), the second instance of Beijing Intellectual Property Law held that the use of introductory words on Jilin Changyuan's business website belongs to the trademark use of "marking the source of goods in commercial activities such as advertisements and exhibitions" as stipulated in Article 48 of the Trademark Law, and belongs to the act of displaying goods for the purpose of sales. Therefore, the provisions of Item (3) of Article 57 of the Trademark Law shall apply to this case. Sales of goods produced by a third party using the exclusive right to use the registered trademark of Beijing Aerospace Caesar Company. In view of this situation, Beijing Aerospace Caesar Company (plaintiff) should bear the burden of proof. In the case that the alleged infringing products can't be submitted in kind and Jilin Changyuan Company insists that the infringing products are not actually sold, it can't be considered that the products involved in Jilin Changyuan Company's commitment to sell in official website are goods that infringe the exclusive right to use the registered trademark of Beijing Aerospace Caesar Company.
According to the above two cases, the Higher People's Court of Hunan Province holds that the promise to sell trademarks constitutes two kinds of infringement at the same time: ① the infringement of using the same or similar trademarks on the same or similar goods; (2) Infringement of selling goods that infringe the exclusive right to use a registered trademark. On the other hand, the Beijing Intellectual Property Court held that the promise of the seller's subject matter advocated by the right holder should apply the provisions of Item (3) of Article 57 of the Trademark Law, that is, the sale of goods that infringe the exclusive right to use a registered trademark, and pointed out that the right holder should bear the burden of proof for the infringer to actually sell the infringing products, otherwise it cannot be considered that the promise to sell the goods involved constitutes an infringement of the exclusive right to use a registered trademark.
Third, the determination of trademark promise sales infringement.
1, the difference between promised sales and sales of trademarks
To reasonably solve the legal nature of trademark promise sales, we must first make clear the difference between trademark promise sales and sales:
First, they have different connotations. The promised sale of trademarks belongs to commercial activities such as advertisements or exhibitions. It can be an offer advertisement with conditions for concluding a contract, an advertising invitation to an unspecified public, or a commodity display in the sense of non-contract law. The buying and selling behavior is a contractual behavior in which the buyer pays the price and the seller delivers the subject matter.
Second, the delivery conditions are different. The promised sale of a trademark does not require the delivery of the subject matter as a constituent element, but the sale should take the delivery of the subject matter (including intangible assets) as a constituent element.
Third, the damage to the exclusive right to use a trademark is different. The promised sale of trademarks is in the stage of sales preparation, and it is a display and advertising behavior for the purpose of sales, which may lead to confusing impressions or concepts of the relevant public about the source of goods. However, the sale of trademark products has caused trading behavior, the relevant public has objectively confused the source of goods, carved up the business trading opportunities that should belong to the registered trademark owner, and the damage is far greater than the commitment to sell trademarks.
2. The law applicable to the promised sale of trademarks.
According to the foregoing, the promise of trademark sales is actually an act of advertising and displaying trademark products in the field of commercial circulation for the purpose of sales. First of all, its behavior objectively only expresses the intention of selling trademark products to specific or unspecified relevant public, not the delivery behavior of actual goods. Secondly, subjectively, I hope to get trading opportunities through commercial activities such as exhibitions and advertisements. Thirdly, the promised sale of trademarks is a subordinate concept of trademark use, which belongs to the category of advertising and exhibition use, and is different from the trading link of trademark sales, so the actual sale should not be regarded as a constituent element of promised sale. Finally, if the actual sales amount is regarded as the key factor to identify the infringement, it will connive and encourage operators who attempt to "hitchhike" and approach well-known brands to use other people's registered trademarks (usually well-known or well-known brands) through advertisements and exhibitions other than sales, which will infringe on the legitimate rights and interests of the exclusive right holders of registered trademarks and eventually disrupt the market economic order of fair competition.
Accordingly, the author believes that whether the promised sale of trademarks constitutes infringement should be comprehensively judged according to the use of the promised products and trademarks:
First, the alleged infringer promises to sell the same trademark product on the same commodity without the authorization of the registered trademark owner, which belongs to the infringement of "using the same trademark on the same commodity without the permission of the trademark registrant" as stipulated in Item (1) of Article 57 of the Trademark Law.
Second, if the suspected infringer promises to sell goods with the same or similar trademarks on the same kind of goods without the authorization of the registered trademark owner, or uses the promise to sell goods with the same or similar trademarks on similar goods, which is easy to cause confusion, it belongs to the infringement stipulated in Item (2) of Article 57 of the Trademark Law.
To sum up, the promised sale of trademarks is a subordinate concept of trademark use. Although there are some overlapping provisions in Article 48 of the Trademark Law, there are differences between promising to sell a trademark and selling or using a trademark in terms of the legal connotation, constitutive requirements and damage consequences of trademark infringement. In judicial practice, it has positive legal significance for the characterization of trademark infringement and the discretion of damages.