Punitive compensation refers to the pursuit of general binding effect for the purpose of punishing the perpetrator when the perpetrator maliciously commits an act or has gross negligence in the act. The court may order the injurer to pay the usual damages, and may also order the injurer to pay damages higher than the actual losses. Punitive damages not only declare the denial of the defendant's behavior, but also aim to prevent the perpetrator from repeating this behavior and may further prevent others from imitating this behavior.
Before the revision of the current trademark law, punitive damages were not clearly stipulated in the trademark law. Article 56 of the Trademark Law revised by 200 1 stipulates that the amount of compensation for infringement of the exclusive right to use a trademark shall be the interests gained by the infringer during the infringement period, or the losses suffered by the infringed party during the infringement period, including the reasonable expenses paid by the infringed party to stop the infringement. If the infringer gains benefits from infringement, or the infringed suffers losses due to infringement, the people's court shall award compensation of less than 500,000 yuan according to the circumstances of infringement. However, in judicial practice, when the court applies statutory compensation, the subjective fault of the infringer is considered to be the embodiment? Infringement plot? Important factors to consider. If the infringer is found to be intentionally infringing, the amount of compensation at the discretion of the court is relatively high. In addition, a series of guiding documents issued by the Supreme People's Court also reflect the judicial policy of applying punitive damages. For example, Article 13 of the Supreme People's Court's Opinions on Comprehensively Strengthening Intellectual Property Trials to Provide Judicial Guarantee for Building an Innovative Country in 2007 states? Carry out the principle of comprehensive compensation, consider the subjective fault of the parties and determine the corresponding liability for compensation? . Article 5 of the Supreme People's Court's Opinions on Several Issues Concerning the Implementation of National Intellectual Property Strategy in 2009 states? Adhere to the principle of comprehensive compensation, increase compensation according to law, and increase the liability for serious infringement such as malicious infringement, repeated infringement and large-scale infringement? . In 2009, article 16 of the Supreme People's Court's opinions on several issues concerning the overall situation of intellectual property trial services under the current economic situation pointed out? Enhance the compensation, punishment and deterrence of damages? . The above shows that although the original trademark law did not clearly stipulate punitive damages, it already implied the principle of punitive damages, and judicial practice and judicial policy also embodied the principle of punitive damages.
The current Trademark Law revised by 20 13 not only clearly stipulates the original implied and actual punitive damages, but also stipulates the specific calculation method. According to the first paragraph of Article 63 of the Law, the amount of compensation for infringement of the exclusive right to use a trademark shall be determined according to the actual losses suffered by the obligee due to infringement; If the actual loss is difficult to determine, it can be determined according to the interests obtained by the infringer due to infringement; If it is difficult to determine the loss of the obligee or the interests of the infringer, it shall be reasonably determined by referring to the multiple of the trademark license fee. In case of malicious infringement of the exclusive right to use a trademark, if the circumstances are serious, the amount of compensation may be determined in accordance with the amount determined by the above method.
In judicial practice, there is a view that the principle of punitive damages according to the above provisions is only applicable to cases where the obligee loses, the infringer gains or the trademark license fee can be determined. In other words, the principle of punitive damages does not apply to statutory compensation. In my opinion, the previous judicial practice and judicial policy tell us that the principle of punitive damages before the implementation of the current trademark law is mainly reflected in the application process of statutory compensation. The third paragraph of Article 63 of the current Trademark Law also stipulates statutory compensation, but the upper limit of compensation has been greatly increased to 3 million yuan, and its provisions are not substantially different from the original Trademark Law. Therefore, the court should also consider the subjective fault factor of the infringer when applying the statutory compensation of the current trademark law, and cannot rule out the principle of punitive damages.
According to the current trademark law, the four ways to calculate the amount of compensation follow a certain order, that is, the loss of the obligee, the income of the infringer, the reasonable multiple of the trademark license fee and the legal compensation. Therefore, the application of punitive damages can be divided into two types: the first three calculation bases are 1 times and less than 3 times of the application of punitive damages; Punitive damages apply to statutory damages.
2. Guangzhou Intellectual Property Court demanded punitive damages of more than one time and less than three times.
Guangzhou Intellectual Property Court accepted 578 trademark cases (basically civil infringement disputes) and concluded 504 cases from February 20 14 to August 20 16. In the concluded cases, no cases of punitive damages of more than one time and less than three times have been found. As the specialized intellectual property court with the largest number of infringement cases among the three major intellectual property courts in China, no relevant cases have been found in judicial practice in the past two years, which is worth considering.
Third, the reason analysis
(A) the statutory compensation ratio is too high
Randomly selected Guangzhou Intellectual Property Court 100 cases of trademark infringement civil disputes for analysis, and found that the legal compensation ratio was as high as 97%. What is the reason for the high proportion of statutory compensation? Objective can't? And then what? Subjective unwillingness? . The so-called objective impossibility refers to the intangibility of intellectual property rights and the lack of proof by the obligee, which leads to the loss of the obligee and the income of the infringer being difficult to determine. The so-called subjective unwillingness means that the obligee is subjectively unwilling to apply the first three calculation methods to determine the amount of compensation for reasons such as litigation costs.
1. Objectivity caused by intangible intellectual property rights
The difficulty of intellectual property compensation is a worldwide problem. It is not only difficult to identify compensation for trademark infringement cases, but also difficult to identify compensation for patent and copyright infringement cases. Not only China's judicial practice thinks it is difficult, but also foreign judicial practice thinks it is difficult. In a sense, it is precisely because it is difficult to accurately calculate the loss of the obligee and the income of the infringer that the statutory compensation system is established. However, the fundamental reason why intellectual property rights are difficult to compensate lies in the intangibility of intellectual property rights. Because of its intangibility, its own value is difficult to evaluate and calculate. Due to intangibility, a product carrier can store multiple intellectual property rights, and each intellectual property right may contribute to product profits, which is difficult to distinguish. For example, according to Article 16 of the Supreme People's Court's Interpretation on Several Issues Concerning the Application of Laws in the Trial of Patent Infringement Disputes, the people's court shall determine that the benefits obtained by the infringer due to infringement shall be limited to the benefits obtained by the infringer due to patent infringement; The benefits arising from other rights shall be deducted reasonably. Another example is the trademark case of New Balance. The court of first instance awarded compensation of 98 million yuan based on the profits of the infringing products. The court of second instance held that there were legal trademarks on the sued products in addition to infringing trademarks, which mainly caused consumers' desire to buy legal trademarks and the better the product quality. Infringed trademarks have a low contribution rate to product profits, so they are rewarded with 5 million yuan instead. Because of its intangibility, an intellectual property right may be infringed by several infringers at the same time, and the damage caused by these infringers to the obligee is also difficult to distinguish.
2. The objective impossibility caused by insufficient evidence of the obligee.
About the loss of the obligee. In order to prove the loss of rights, obligees usually submit their own financial books or special audit reports on the amount of losses. For the former, the infringer often argues that the evidence was unilaterally issued by the obligee and its authenticity cannot be determined. For the latter, the infringer often argues that the audit institution is unqualified and illegal, the audit is unilaterally entrusted by the obligee, the financial books are unilaterally issued by the obligee, the losses are caused by various reasons, and there is no causal relationship with the accused behavior. All these are easy to cause the actual loss of the obligee to be difficult to identify.
On the profit of the infringer. The financial account book of infringement profit is in the hands of the infringer, and the obligee cannot obtain it, so he usually applies to the court for retrieval or evidence preservation. Because the infringer's rule of law is weak, it can be delayed and concealed; Court evidence preservation has limited manpower, which is generally carried out by judges and clerks handling cases; The court's punishment for obstruction of civil proceedings is conservative and lacks sufficient deterrence. The effect of evidence preservation adopted by the court is not ideal.
Trademark license fee. When the right holder licenses the trademark to his own enterprise or affiliated enterprise, the infringer often argues that there is an interest relationship between them and cannot confirm the authenticity of the use fee. When the right holder permits the use of non-affiliated enterprises, the license contract is often not filed, or the right holder fails to submit proof of the actual performance of the contract, which makes it difficult to prove the license fee standard.
3. Subjective unwillingness of the obligee
For most cases where the claim amount does not exceed the legal compensation limit of 3 million yuan, even if the court fully supports the plaintiff's claim amount, it is within the court's discretion. The obligee thinks that there is no need to prove his actual loss or the infringer's income at this time. For example, the Guangzhou Intellectual Property Court 100 trademark civil disputes were randomly selected for analysis, and it was found that the average claim amount of the obligee was only 85,000 yuan. In addition, due to the low personal quality and ability of the obligee's entrusted agent, poor investigation and evidence collection, and the obligee's view that it is uneconomical to give evidence based on the analysis and calculation of litigation costs and benefits, it is also easy for the obligee to refuse to give evidence and ask the court to directly apply statutory compensation.
(b) Legal provisions need further clarification.
1. How to determine the severity of the case?
According to the first paragraph of Article 63 of the current Trademark Law, if the exclusive right to use a trademark is maliciously infringed and the circumstances are serious, legal compensation may be applied. But how to grasp the serious circumstances needs to be further explored and summarized in judicial practice, and the law needs to be further clarified according to the situation of judicial practice.
2. Can punitive damages be applied when determining the amount of compensation according to the evidence obstruction system?
The second paragraph of Article 63 of the current Trademark Law stipulates the evidence obstruction system. This paragraph stipulates that in order to determine the amount of compensation, the people's court may order the infringer to provide the account books and materials related to the infringement if the obligee has tried his best to provide evidence and the account books and materials related to the infringement are mainly in the hands of the infringer; If the infringer fails to provide or provide false account books and materials, the people's court may determine the amount of compensation with reference to the claims of the obligee and the evidence provided. From the structural analysis of this clause and punitive damages clause, it is also stipulated in this clause that the people's court can? Determine the amount of compensation with reference to the claims of the obligee and the evidence provided? Literally, it seems that punitive damages of more than one time and less than three times cannot be applied.
However, this paragraph is actually a presumption of infringement profit when the infringer obstructs the proof. For example, Article 27 of the Supreme People's Court's Interpretation on Several Issues Concerning the Application of Laws in the Trial of Patent Infringement Disputes clearly stipulates that if the actual losses suffered by the obligee due to infringement are difficult to determine, the people's court shall, in accordance with the provisions of the first paragraph of Article 65 of the Patent Law, require the obligee to prove the interests obtained by the infringer due to infringement; If the obligee has provided preliminary evidence of the infringer's benefit, the people's court may order the infringer to provide account books and materials related to patent infringement. If the infringer refuses to provide false account books and materials without justifiable reasons, the people's court may, according to the obligee's claim and the evidence provided, determine the interests obtained by the infringer due to the infringement. In that case, in? Refer to the claims and evidence provided by the obligee? In the case that it is not appropriate to fully support the obligee's claim, there seems to be room for punitive damages of more than one time and less than three times for malicious infringement and serious circumstances. If the obligee claims compensation of 6,543,800 yuan, the court will presume that the infringer made a profit of 200,000 yuan with reference to the obligee's claim and evidence. However, due to malicious infringement and serious circumstances, the court decided to apply three times punitive damages, and finally awarded the infringer compensation of 600,000 yuan.
Fourth, some suggestions.
Different from the compensation function of the compensation principle, the punitive compensation principle has the functions of punishment and deterrence. In real life, malicious infringement, repeated infringement and large-scale infringement are common. For this serious infringement, it is not enough to make up for the loss of the obligee, and it can even be said that it is a disguised connivance of the infringement. It is also tickling to apply punitive damages only to statutory compensation. Only by applying punitive damages of more than one time and less than three times can we effectively crack down on infringement and prevent it from happening again. However, the data of Guangzhou Intellectual Property Court in recent two years show that punitive damages of 1 times and less than 3 times are not really applicable. It can be said that punitive damages are not easy to say I love you. In order to implement the punitive damages system and give full play to its deterrent effect on serious infringement, according to the above analysis, the following suggestions are put forward:
(1) Objectively speaking, for some cases in which the claim amount does not exceed the statutory compensation limit, especially for relatively simple cases in which the claim amount does not exceed 500,000 yuan, the court comprehensively considers the factors such as the popularity of the trademark, the nature of the infringement, the subjective fault of the infringer, reasonable expenses, etc., and can or basically satisfy the plaintiff's claim through statutory compensation, which can completely solve the practical problem. Therefore, for such a simple case, there is no need to force punitive damages of more than one time and less than three times.
(2) The obligee should strengthen the awareness of evidence, improve the ability of proof, and strive to prove its actual loss and the amount of trademark license fee. For the proof of actual loss, try to collect relevant financial data stored in government agencies or authoritative departments, such as data submitted to tax authorities, data submitted to securities issuers, and so on. These evidences are highly probative and easily accepted by the court. Another example is the trademark license fee. The obligee shall take precautions, put the license contract on record and keep the payment voucher of the license fee.
(3) The court should increase the punishment for obstructing civil litigation, ensure the smooth implementation of evidence preservation, and lay a good foundation for effectively finding out the infringer's profit. For those who obstruct the preservation of court evidence, in addition to applying the evidence obstruction system to judge the defendant losing the case, compulsory measures such as fines and detention should be taken against the defendant or the relevant responsible person in strict accordance with the relevant provisions of the Civil Procedure Law, and criminal responsibility should be investigated if necessary.
(4) the Supreme People's Court should make it clear as soon as possible what is stipulated in the first paragraph of Article 63 of the Trademark Law according to the judicial practice in various places. Serious circumstances? Situation. At the same time, it should be clear that when the court determines that the infringer has made a profit according to the evidence obstruction system in the second paragraph of Article 63 of the Trademark Law, it can apply punitive damages of more than one time and less than three times.