Summary and analysis of administrative litigation of trademark review cases in 2018 (II)
Response and reconsideration division
According to the data analysis in the first issue of review legal communication in 2018, the proportion of cases lost by the review department due to Articles 13 and 44.1 of the trademark law has increased significantly. Through the detailed combing of the above lost cases, we find that although most cases are lost due to differences in fact determination, including the submission of new evidence by the parties, the path and attitude of law application shown in some lost cases are particularly debatable.
1、 On the combination of article 44.1 "obtaining registration by other improper means" and other entity provisions
According to the provisions of 17.5 of the guidelines for the trial of administrative cases of trademark authorization and confirmation issued by the Beijing Higher People's court, if other provisions of the trademark law can be applied to the cases of non registration review and invalidation, if the contested trademark is not registered or declared invalid, paragraph 1 of article 44 of the trademark law will no longer apply. From the expression of this provision, it seems that other substantive provisions have priority in application. On the premise that other provisions are established, article 44.1 may not be subject to substantive trial. However, in practice, on the issue of the combination of article 44.1 and other articles, the judicial decisions show obvious diversity or inconsistency. Some directly do not comment on article 44.1, while others conduct a substantive trial, but the conclusion is not tenable. These two practices are spear and shield in essence. In addition, the following practices deserve special attention.
Case 1: the prior rights of the parties have been protected, so article 44.1 is no longer applicable. For example, in No. 9767386 "Jipu" trademark invalidation case [1] and No. 16693707 "Ralph opai" invalidation case [2], the reason why article 44.1 is no longer applicable in the first instance judgment is that the plaintiff's prior rights have been protected by Articles 13 and 30 respectively, so article 44.1 is no longer applicable. In the 11059128th case of "[3]", the commentary on the first instance is closer. The ruling points out that the trademark registration holder's application for registration is similar to that of the plaintiff and other well-known Baijiu brands, which is a case of damaging the specific civil rights and interests. In view of the fact that the trademark law of 2001 has been applied to the twenty-eighth, twenty-ninth trademark of the trademark law, the plaintiff's prior trademark rights shall be protected. Its claim of article 44.1 is no longer supported. This way of adjudication reflects two questions: first, what is the relationship between the prior rights clause and article 44.1? Why can article 44.1 no longer be applied when the prior rights of the parties are protected? Is this in line with the logic of law application? Second, it is against the consistent practice of administrative and judicial review to identify a large number of imitation registrations as damaging specific civil rights and interests. Moreover, there is no lack of space to explore whether the superposition of multiple facts damaging the interests of specific civil subjects may lead to a qualitative change in the nature of the act of applying for registration.
Case 2: on the basis of other provisions, it is determined that other improper means are also established, but article 44.1 does not apply with reference to the previous case. For example, in the trademark invalidation case of "Mai whirlwind" No. 12049178 [4], the judgment of first instance first found that the registration of the contested trademark violated the provisions of paragraph 3 of Article 13 of the trademark law, and then commented that the contested trademark registrant and its sole shareholder registered a number of trademarks similar to other well-known trademarks, disturbing the order of trademark registration. Finally, in view of the application of the protection of Article 13, With reference to the spirit of 2015 Gao Xing Zhong Zi No. 659 judgment, article 44.1 is no longer applicable. We believe that this way of adjudication is to try and make substantive evaluation on the imitation registration without violating the provisions of 17.5 of the trial guidelines of the high court, which is a compromise approach. The advantage is that it can act as a deterrent to similar registration situations and give correct guidance to the application for registration. The disadvantage is that the logic of law application is still in doubt.
Situation 3: on the basis of confirming the establishment of article 44.1, the well-known claim of Article 13 will not be commented. In the case of invalidation of "icalu" Trademark No. 9594513 [5], the judgment of first instance first found that article 44.1 was established by other improper means, and then no longer commented on the claims made by the parties in accordance with Article 13. This approach also faces the torture of the logic of the application of law. At the same time, it is completely opposite to the attitude of the application of law shown in the first case. It is inevitable to wonder: which of the other substantive provisions and article 44.1 comes first?
Case 4: on the basis of other provisions, article 44.1 shall apply at the same time. In the case of invalidation of graphic Trademark No. 11194669 [6], the judgment of first instance held that the registration of the contested trademark not only damaged the prior copyright of others, but also constituted the situation of obtaining registration by improper means referred to in 44.1. In the trademark invalidation case of "jianlangchun" No. 10719314 [7], the judgment of first instance found that the registration of the contested trademark violated the provisions of articles 19.4 and 44.1 of the trademark law. In case No. 21682535 of invalidity of "eat and never forget the old goose" [8], the judgment of first instance found that the registration of the sued trademark also constituted the situation of damaging the prior trade name right of others in Article 32, preempting the registration of the trademark that has been used by others and has a certain impact on others, and obtaining the registration by other improper means in article 44.1. In the trademark invalidation case of "jiopplecheng" No. 12347780 [9], the first instance judgment found that Article 13 and article 44.1 were established at the same time. In the No. 12138854 case of invalidation of the trademark of "Meizhong Yihe Jitu" [10], the first instance judgment broke through the distinction table and applied Article 30. On this basis, it continued to determine that article 44.1 was established. In the fourth case, article 44.1 coexists harmoniously with a variety of substantive provisions, which is completely opposite to the attitude of law application in the first case.
We believe that the above contradiction in the application of law mainly stems from the unclear understanding of the nature and function of article 44.1, which leads to the wrong understanding of the relationship between this article and other substantive provisions.