中文/English

The licensee who turned the infringer who's the war? On the Follow - up Risks of Trademark Licensing from the Perspective of "Ruwofu" Trademark Case

2014-1-26 09:13| Announcer: admin

I was the owner of the plaintiff XX company (plaintiff) commissioned to the Beijing Second Intermediate People's Court (Court of First Instance) to infringe the trademark and unfair competition on the grounds of its former partner Magpie Xiang (defendant). The court of first instance that the above proposition is not established, the plaintiff refused to accept, appeal to the Court of First Instance Beijing High Court, the High Court found that the defendant's behavior constitutes infringement. The final verdict was filed for retrial but was eventually rejected by the Supreme Court. 
The plaintiff was registered on May 7, 2006, "RUHOF" trademark, approved the use of the third category of cleaning agents, surgical equipment, cleaning agents and other commodities. July 1, 2004, the plaintiff and the magpie Xiang company reached an agreement, the latter as the former distributor in China, the distribution of medical cleaning agent products, the former goods to the original form of imports to China and the latter exclusive sales. The goods are printed on the "RUHOF" trademark, the label is composed of English instructions, the font is red. In September 2004, Magpie Xiang company in the product packaging of the English label location with the Chinese "Ruwofu R Rye clean agent" words. During the cooperation period, Magpie Xiang company for its agent of the cleaning agent products for capital investment in magazines, fairs, exhibitions, training activities to advertise its publicity. 
September 2007, the plaintiff to stop delivery, the two sides to terminate the cooperation, Magpie Xiang companies and therefore to other agents of similar brands. But the magpie company in its website and product promotion page, said: "... ... the second generation of 'Ruwofu' merchandise series adhering to the Chinese market before the goods for the original formula, and on this basis to further improve the formula To meet the requirements of the Chinese market. Listed second-generation 'Ruwofu' goods, not only have all the advantages of the original goods, while cleaning performance is more superior ... ... "Magpie Xiang company in the form of a list of the first generation of Lu Woof merchandise and the second generation of Rulf's merchandise were compared with the performance, but also on its Web site to flash animation comparison of the first generation and the second generation of Ruowulf merchandise decomposition capabilities, thus highlighting its agent The second generation of Rulff merchandise was better in many ways than the first generation of Rulff merchandise. The plaintiff to the warning letter, lawyers and other forms of request to Magpie Xiang company to stop the infringing under the premise of the case, then sued the court. 
The focus of this case is the two sides after the termination of cooperation, Magpie Xiang companies continue to trademark in the same trademark on the label "Ruwofu" Chinese words violations of the rights of "RUHOF" registered trademark exclusive rights. Obviously, the first instance and the court of second instance different views. The author argues that the term "RUHOF" is not the only one that corresponds to the Chinese "Luvor", but the Chinese and English are also present at the same time when the two sides cooperate. Posted on a variety of occasions up to 3 years, and point to the plaintiff. Therefore, the plaintiff on the "Rulf" trademark first use, should enjoy the prior rights. And the relationship between the termination of the relationship after the company continued to use the words of the words of the act itself constitutes a violation; subjective, even if the "Ruwofu" words have been used for the Magpie Xiang company and propaganda for 3 years, but with the end of the relationship The corresponding rights and obligations are also over, Magpie Xiang companies should be aware of this. Based on this, Magpie Cheung continued to use the words "Rulf" after the termination of the cooperation and highlighted the relationship with the plaintiff in the propaganda, intended to induce the public to choose the infringing products it provided. Therefore, the defendant's conduct is infringing intentional. 
Although the plaintiff, after the first instance, the second instance and the retrial procedure, finally caused the defendant to pay the price for his violation, but the time and money costs were not the plaintiff's loss. Therefore, the trademark owner in the attention to the quality of licensed goods, licensing fees and other matters at the same time, should be alert to the trademark after the termination of the legal risk. At present, the trademark license due to termination of cooperation caused by "sequelae" roughly the following symptoms: 
1、The licensee has registered the domain name of the trademark of the right person in the name of himself or others, as is the case in this case. Such cases are more of the court by the infringer to use the right to use the trademark of the domain name on the grounds that the lack of reasonable basis for its violation, and ordered to write off and held by the right holder; 
2、The licensee translates, copies or mimics the rights holder's trademark in his own name or in the name of another person and applies for registration. Such cases are more complex, and if they are registered or used in the same or similar goods as the right holder, the nature of the trademark, such as the trademark, the name of the trademark, A person who does not resemble a trade mark on a commodity or who uses it to translate, reproduce or imitate a trademark, the identity of the trademark of the right holder, the degree to which the registered and / or used commodity is associated with the infringing commodity, and the public confuses or misunderstanding The possibility of the interests of the right and whether the interests of the actual damage and so on. 
Case Revelation: 
Licensing agreement after the termination of the various disputes can eventually save the risk is good, but do a good job in advance to prevent more proactive, I summarize the following recommendations for the right person, especially outside the right of reference. 
1、In the license agreement, it is stipulated that the goods subject to disposal, breach of contract, and infringement of the trademark after the termination of the cooperation are agreed upon. As far as possible, the foreseeable risk clause shall be incorporated into the contractual agreement of the licensee; 
2、In the attempt to enter the Chinese market, including looking for partners during the period, first of its trademark in the main commodity-related categories of trademark applications to register, reduce the disclosure of information caused by other people's cybersquatting; 
3、For the English or graphics business logo corresponding to the Chinese trademark, one to meet the local public awareness habits, easy to build the brand, and secondly to reduce the risk of being arrested by criminals; 
4、Once the termination of the timely termination of a variety of authorization, the partners on a regular basis to monitor the commercial behavior to prevent the latter from the use of the previous conditions to damage the interests of the right; 
5、Rights holders and trademark users in the conclusion of the licensing agreement to fully take into account their rights and obligations, only their respective interests can be guaranteed, the two sides can be more long-term cooperation, the brand can be more solid. 
In short, with the deepening of the market economy, the new situation is always endless, the trademark rights of the road than the right way is much more bumpy, therefore, in advance to prevent legal risk than the dispute after the dispute to solve its effect much better. In any case, the right holder and the licensee should abide by the integrity, fairness, common cheese bigger, the brand stronger!
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