I. Definitions and legal system
TRIPS protocol is the abbreviation of TRIPS protocol. This is an international treaty and an international agreement.
Trademark law: the general name of legal norms that confirm the exclusive right to use a trademark and stipulate the registration, use, transfer, protection and management of a trademark. China's trademark law belongs to the category of intellectual property law.
Patent law: Patent law is the general name of legal norms that confirm the exclusive right of inventors (or their heirs) to their inventions and stipulate the rights and obligations of patentees. China's patent law also belongs to the category of intellectual property law.
Anti-Unfair Competition Law: People's Republic of China (PRC) Anti-Unfair Competition Law is a law aimed at regulating the order of socialist market economy and advocating fair and orderly competition. This law is of great significance for protecting the rights and interests of legal market subjects and cracking down on illegal market economic behavior. Belong to the category of economic law
Two. Trips Agreement and Trademark Law
A Comparative Study of TRIPS Agreement and China Trademark Law
Like other civil or commercial laws and regulations, TRIPS contains mandatory and optional clauses. It is the international obligation of WTO members to fulfill the mandatory provisions in the TRIPS Agreement to the letter. For the optional clauses in TRIPS, although members can make any choice, any choice should be scientific and appropriate. By comparing the relevant rules of TRIPS with China's Trademark Law, it is helpful to promote the complete consistency between China's Trademark Law and the mandatory provisions of TRIPS, and to make a scientific and appropriate choice of the optional provisions of TRIPS.
1986 In Uruguay's multilateral trade negotiations initiated by the international community, trade-related intellectual property issues were included in the negotiations, and finally the Agreement on Trade-related Intellectual Property Rights (TRIPS) was formed. Like other civil and commercial laws and regulations, TRIPS has both mandatory and optional provisions. It is an international obligation of WTO members and China's commitment to the WTO to faithfully implement the mandatory provisions in the TRIPS Agreement. As for the optional clauses in TRIPS, although member countries can make any choice according to their own historical traditions and legislative ideas, any choice should also be scientific. The purpose of this paper is to find out the gap between the relevant rules of TRIPS and China's trademark law, realize the complete consistency between China's trademark law and the mandatory provisions of TRIPS, and make a scientific and appropriate choice for the optional provisions of TRIPS. The comparison between TRIPS related rules and China Trademark Law is planned from the following four aspects:
I. Conditions for trademark registration
In most countries in the world today, registration is the only way to obtain trademark rights. So is our country. However, there are indeed a few countries, such as the United States, Britain and other countries, according to their own traditions, "putting trademarks into commercial use" as a way to obtain trademark rights. Although there are fewer and fewer such countries, they still exist. Therefore, "TRIPS Agreement" takes care of this fact, and does not force the registration of trademark rights. However, the detailed provisions of the TRIPS Agreement on trademark registration conditions show that TRIPS respects and guides the principle of registration, which is widely adopted by most countries to obtain trademark rights. According to the TRIPS Agreement, there are four conditions for trademark registration:
Article 15, paragraph 1 of the Agreement on Trade-related Intellectual Property Rights stipulates: "Any mark or combination of marks that can distinguish the goods or services of an enterprise from those of other enterprises can constitute a trademark ... When some trademarks cannot distinguish related goods or services because of their inherent characteristics, members can also grant them registrability according to the differences arising from their use." This article shows that the trademark applied for registration should be distinctive or distinctive, otherwise, it is difficult to distinguish the goods or services of one enterprise from those of another enterprise, and it is therefore difficult to obtain registration. When some trademarks cannot distinguish related goods or services because of their inherent characteristics, they can also be registered if there are differences in long-term use. For example, Wuliangye liquor produced by China Yibin Wuliangye Co., Ltd. is made from five kinds of grains, namely sorghum, rice, glutinous rice, wheat and corn, which are blended with water. "Wuliangye" is a descriptive word, which directly shows that wine is brewed from five kinds of grain. Strictly speaking, the trademark lacks distinctiveness and is difficult to be used as a wine trademark. But in the long-term use process, "Wuliangye" has become the exclusive symbol of specific products of specific enterprises. At this time, the trademark is significant, and according to the provisions of TRIPS, the trademark is registrable. The distinctiveness of a trademark, also known as uniqueness, refers to the specificity of the trademark itself. Only the distinctiveness of a trademark can realize its function and achieve the purpose of distinguishing similar goods or services provided by different enterprises. The requirement of TRIPS for trademark distinctiveness has been completely absorbed by the newly revised Trademark Law of 200/KLOC-0. Article 9 of the new Trademark Law stipulates: "A trademark applied for registration shall have distinctive features and be easy to identify ..." In addition, paragraph 1 1 of Article 1 lists that marks lacking distinctive features shall not be registered as trademarks, and at the same time emphasizes in paragraph 2 that "the marks listed in the preceding paragraph are used to obtain distinctive features and are easy to identify,
(Article 15, paragraph 1 of the TRIPS Agreement also stipulates: "Members may require the trademark to be visually perceptible as a condition for registration." "Visually perceptible" trademarks, of course, do not include trademarks such as "sound trademarks" and "smell trademarks" that are visually imperceptible. However, it should be noted that Article 15 of TRIPS uses "may" instead of "should" in stipulating this requirement. It can be seen that this requirement is not mandatory and allows member States to choose. In other words, members can use "visually perceptible" as a condition for trademark registration through legislation, or they can not make such a requirement. China's trademark judicial practice has long required that the trademark applied for registration should be visually perceptible. The new Trademark Law clearly stipulates that the trademark applied for registration must be a "visibility" sign. These practices and regulations meet the requirements of the above clauses. It is necessary to mention that in the past, our understanding of trademarks was too narrow. For a long time, it was limited to visual symbols such as "words, graphics and their combinations", while others such as three-dimensional trademarks were excluded. This is the main gap with TRIPS. The new Trademark Law corrects this, pointing out that "any visible sign that can distinguish the goods of natural persons, legal persons or other organizations from the goods of others, including words, graphics, letters, numbers, three-dimensional signs and color combinations, as well as the combination of the above elements, can apply for registration as a trademark". This provision expands the scope of trademark protection and further meets the requirements of TRIPS. Among them, "three-dimensional logo" refers to a three-dimensional trademark, which should include not only the unique appearance and packaging of products, but also the unique appearance decoration of commercial service places. At present, only a few countries in the world recognize and protect non-image trademarks such as "sound" and "smell". (III) Trademark has been put into commercial use Paragraph 3 of Article 15 of the TRIPS Agreement stipulates that "a member may take the dependent use as a condition for registration, but shall not take the actual use of the trademark as a condition for submitting an application for registration …" "A member may take the dependent use as a condition for registration", that is to say, a member may take the "trademark has been put into commercial use" as a prerequisite for trademark registration through legislation. In other words, if the trademark is not put into commercial use, members can refuse its registration. It should be pointed out that this clause is still not mandatory, but only instructive. Or the clause is a guiding and optional clause. China's trademark law is not affected by this guiding clause, and adheres to a long-standing practice, not taking use as a prerequisite for trademark registration. In addition, trademarks used in some commodities, such as "drugs for human use" and "tobacco products", need to be registered before use. Although China's above practice does not violate the requirements of TRIPS, the actual effect is that the disadvantages outweigh the advantages. Imagine that a trademark has never been used in business and its market effect is unknown. It must be registered before use, and its blindness and risk are obvious. After such a trademark is registered, it is very common to find that the market effect of the trademark is not ideal and give it up. This kind of "pay attention to but not use" junk trademark not only directly shows the loss of operators' interests, but also brings certain burden and confusion to trademark management. In addition, when registering a trademark, the applicant is not required to use it, which also encourages the phenomenon of malicious cybersquatting in reality. Therefore, the author believes that when applying for trademark registration, the applicant should be required to submit proof that the trademark has been put into commercial use, or at least proof of intention to use, that is, proof that the trademark intends to be put into use. Some people may say that even so, drugs and tobacco products for human use should be exceptions, because drugs and tobacco products for human use are closely related to people's lives and health, and the management of these commodities must be strengthened. Yes, in the past, we all used the banner of "strengthening management" to require the above-mentioned commodity trademarks to follow the principle of "registering first before using". This seemingly reasonable rule cannot stand careful scrutiny. In China, people's medicines and tobacco products related to people's life and health have their own business supervision and inspection departments, and He Lao trademark office is redundant! This "important measure" called "strengthening management" actually has obvious planned economy color, and the result will only lead to the division of responsibilities and overlapping responsibilities. Therefore, the author believes that these commodities should be the same as other commodities. Whether to use a trademark or not to register its trademark depends entirely on the wishes of the parties concerned. The law should not force them, especially the trademarks on these goods should be registered before use. "The actual use of a trademark shall not be used as a condition for submitting a registration application", that is to say, even if the trademark has not been put into actual use, an application for registration can still be filed for the trademark. This provision is a mandatory requirement of TRIPS and a system that has been implemented since the promulgation and implementation of China's 1982 Trademark Law. However, it should be mentioned that in some countries, such as Britain and the United States, it is often further stated in the legislation that after the application for trademark registration is filed, the priority date is the application date, and the trademark is registered or takes effect after it is put into practical use. After the application date is determined, the application excludes similar applications from others.
(4) prior rights shall not be infringed. Article 16 of TRIPS Agreement stipulates that trademark registration "shall not infringe any prior rights". This provision is mandatory and members have no choice. TRIPS did not explain "prior rights". However, during the revision of the Paris Convention, in the discussions of some international industrial property NGOs, and in WIPO's Model Law, there is a consensus that at least the following rights should be included: (1) the protected name right (or "trade name"); (2) The exclusive right of industrial design that has been protected; (3) copyright; (4) the protected right of geographical indications; (5) the right to name; (6) the right to portrait; (7) the right of commercialization. As early as 1993, when China revised the Detailed Rules for the Implementation of the Trademark Law, it introduced the protection of "prior rights", but the protection level of "prior rights" at that time was not as good as the requirements of TRIPS. The main difference is that China's Trademark Law and its implementing rules all emphasize the "subjective state" of the actor, that is, the subjective malice of the actor, such as "by deception or other improper means", which must be the key element of infringing the prior rights. Emphasizing the subjective state of the actor undoubtedly sets an obstacle for the prior obligee to stop the infringement. TRIPS does not regard the subjective state of the actor as the premise or element of protecting prior rights. In other words, as long as the trademark of the actor conflicts with the prior rights of others, even if the actor doesn't know it in advance, its trademark is prohibited from being registered and used. The newly revised Trademark Law improves the protection level of prior rights, cancels the requirement of the subjective state of the actor, and clearly stipulates that "applying for trademark registration shall not damage the existing prior rights of others". This article states that if a trademark applied for registration conflicts with other people's prior rights, registration is not allowed regardless of its subjective status. This amendment makes China's trademark legislation consistent with the provisions of TRIPS.
Second, about the scope of rights of registered trademark owners.
Article 16, paragraph 1 of TRIPS Agreement is a general description of the scope of rights of registered trademark owners. This paragraph stipulates: "The owner of a registered trademark enjoys the exclusive right to prevent any third party from using the same or similar signs to mark the same or similar goods or services in trade without its permission, thus causing confusion. If the same trademark is used for the same goods or services, it should be presumed that there is a possibility of confusion ... "This provision is clear, affirmative and not selective. Once a trademark is successfully registered, the owner of the registered trademark can enjoy the exclusive right to use the trademark. The general requirement of this exclusive right is that no one may use the same or similar trademark to mark the same or similar goods (or services) in trade without the permission of the registered trademark owner. This spirit of TRIPS is consistent with the current trademark law in China. The difference is that after making the above provisions, there is a conditional clause behind TRIPS, "If used in this way, it may cause confusion." This means that it does not constitute infringement to allow any third party to use the goods or services under the condition that it is unlikely to cause confusion in related use. For example, A (the registered trademark owner) operates the bread business in place A and B operates the bread business in place B. The trademarks used by both parties are similar, but because AB is far away and the bread sales areas are different, it is impossible for both parties to be confused. In this case, B's behavior does not constitute infringement. In short, according to the TRIPS Agreement, except that "using the same mark on the same goods or services" should be directly presumed to have the possibility of confusion, others, such as using similar marks on the same goods or services, or using the same mark on similar goods or services, should be determined according to the actual situation, and can not be considered as infringement without analysis. Looking closely at China's trademark law, it has long been stipulated that "using a trademark identical with or similar to its registered trademark on the same kind of goods or similar goods without the permission of the trademark registrant" ⑦ should be considered as infringement of the exclusive right to use a registered trademark. It can be seen that at this point, the protection level of registered trademarks in China is higher than the requirements of TRIPS Agreement. Is it necessary for China to set such a high standard? The author holds a negative attitude. China has a vast territory, which shows that if two enterprises are far apart and their respective commodity marketing areas are different, another enterprise uses similar trademarks to mark the same goods, or uses the same trademarks to mark similar goods, it will not necessarily lead to confusion of goods or services. Therefore, it is unscientific to identify such acts as infringement without analysis, and it also violates the unified standards of TRIPS.
Three, about the exception of trademark rights
Article 17 of TRIPS provides an exception to trademark rights. Members may stipulate limited exceptions to the rights granted by trademarks, such as the rational use of descriptive words, as long as such exceptions take into account the legitimate interests of trademark owners and third parties. Usually, descriptive words are refused to be registered as trademarks because of their lack of distinctiveness. However, descriptive words can be registered as trademarks if they are significant through use. According to article 17 of TRIPS, even if these descriptive words are registered as trademarks, they cannot prevent others from using them properly. For example, a catering enterprise engaged in Chaozhou cuisine with distinctive characteristics has registered the service trademark of "Chaohaowei" with the Trademark Office, thus obtaining the exclusive right to use the trademark. B is also a restaurant dealing in Chaozhou cuisine. There is a billboard in front of the restaurant, which says "Chaozhou cuisine is delicious". According to the TRIPS agreement, restaurant b does not constitute trademark infringement to party a. the gap between China's current trademark law and TRIPS is that there is still no trademark exception. Although the Regulations for the Implementation of the Trademark Law makes up for this defect of the Trademark Law to a certain extent, it stipulates that "the exclusive right to use a registered trademark has no right to prohibit others from using it properly if it contains a common name, figure and model of a commodity, or directly indicates the quality, main raw materials, functions, uses, quality and quantity of the commodity, or contains a place name". However, this enumeration is not entirely applicable to non-case law countries. In a non-case-law country like China, it is far from enough for the law to regulate a certain kind of problems only by enumerating. Because judges have no power to make laws and can't do anything about legal gaps, they can only handle cases according to established laws, unlike in case law countries, judges can use their power to make up for omissions that are not listed. Therefore, it is undoubtedly more suitable for the actual needs of China's trial to make a general explanation of the exceptions to trademark rights in the Trademark Law or adopt a general enumeration method.
Three. Trips Agreement and Patent Law
See PDF "Comparison of China's Patent Law and Law Enforcement Practice with TRIPS Agreement Requirements".
Four. Trips Agreement and Anti-unfair Competition Law
1, whether it constitutes a trade secret is different.
For details, please refer to "Comparison between undisclosed information in Trips Agreement and constitutive requirements of trade secrets in China".
2.PDF: Perfection of China's Anti-Unfair Competition Law _ Referring to Article10bis of the Paris Convention _Trips Agreement and WIPO Model Clauses, we can find many similarities and differences between the Anti-Unfair Competition Law and Trips.