Study On The System Of Limitations On Trademark Right In The Perspective Of Defense

In the field of intellectual property law, the limitations on trademark right hasbeen concerned less than the limitations on copyright and patent in internationaltreaties and the legislation in different countries and regions, even in the theoreticalresearch. A lot of researches on the basic theory of trademark law from differentangles have noticed the necessity and urgency to build the system of limitations ontrademark right. This paper argues that the limitations on trademark right willultimately be reflected in trademark infringement lawsuit by the alleged infringer’sdefense to the claims of trademark owners for ceasing infringement and damages toachieve the balance of the trademark owner’s exclusive right and public interests andthe interests of third parties. We can improve the system of limitations on trademarkright in the perspective of defense. Defense can be classified into RechtsverhinderndeEinwendung, Rechtsvernichtende Einwendung and Einrederecht. On the ground ofcomparative analysis of the limitations on trademark right with various forms, thispaper will classify them into different categories of defense, in order to build a systemof defense norms, on the basis of which to analyze and improve the rules oflimitations on trademark right in our trademark law, which will effect on1st May, in2014. Our trademark law amended provides the classic fair use and prior use inArticle59, without some other types of limitations on trademark right. The system of limitations on trademark right has not been built up in our country, which makes itsignificant to study on the theory of limitations on trademark right and to improve theprovision in trademark law. This paper includes four chapters except for introductionand epilogue.Chapter one defines the meaning of limitations on trademark right, combing thelegislative sources of limitations on trademark right and proposes to build and classifythe system of limitations on trademark right in the perspective of defense. First, thispaper refers the limitations on trademark right as the defense to the claims oftrademark owner for ceasing infringement and damages in lawsuit to achieve thebalance of the trademark owner’s exclusive right and public interests and the interestsof third parties, based on comparative analysis of different definition about limitationson trademark right. Most research focus the point on exception and neglect theperspective of defense. Second, the limitations on trademark right are provided indifferent legislations, including trademark law, unfair competition law, anti-monopolylaw and other departments. Otherwise, all of these provision could be provided intrademark law because they can be defined as the defense to the trademark owner.Third, the system of limitations on trademark right can be built in perspective ofdefense and can be classified into four categories, consisting of trademark use onlegitimate purpose or reason, non-use of registered trademark and trademark misuse,registered trademark’s severability as well as general rules.Chapter two analyzes different legislation and judicial practice about limitationson trademark right in different countries and regions comparatively based on theclassification in chapter one, in which there are similar regulation demonstrating thereason why should we set up the limitations on trademark right and the we can studythe similarity to improve our trademark law. First, trademark use on legitimatepurpose or reason by the third party includes fair use, exhaustion of trademark right,trademark prior use. Second, non-use of registered trademark and trademark misuseinclude the owner of registered trademark should have used the trademark incommercial activity, using the trademark to mislead the consumer and the trademarkuse violates anti-monopoly law. Third, registered trademark severability includes obtaining the exclusive right of registered trademark by malicious registration or withdeception and the trademark with functionality. Forth, the general rules includes thestatute of limitations and equitable principles, such as estoppel, acquiescence andlaches.Chapter three classifies the defense and emphasizes the importance of theclassification, pointing out that the classification can be applied in trademark law withconsideration of the characteristic of trademark right, and analyzes the different typesof limitations on trademark right with the classification above. First, defense can beclassified into Rechtsverhindernde Einwendung, Rechtsvernichtende Einwendung andEinrederecht. Second, different defense will make different constraints on thetrademark owner, which will determine whether the judge could directly invoke thedefense facts in the lawsuit and whether the infringer can claim for return of unjustenrichment after he has fulfilled obligations. Third, the classification of defense canbe applied in the field of trademark law, which requires to take account in thecharacteristic of trademark right, including the special way in obtaining trademarkright, the importance of trademark use and the special norms of limitations ontrademark right. Forth, Trademark use on legitimate purpose or reason and registeredtrademark severability should be defined as Rechtsverhindernde Einwendung;Non-use of registered trademark should be defined as RechtsvernichtendeEinwendung; Trademark misuse and the statute of limitations as well as equitableprinciples should be defined as Einrederecht, in which trademark misuse defense aretemporary and the statute of limitations as well as equitable principles defense arepermanent.Chapter four makes some advice for the improvement of the system oflimitations on trademark right in the trademark law of China. First, the trademark lawshould provide nominative fair use and the exhaustion of trademark right with someexception; the provision of prior user’s defense should be understood to apply in thesituation where the registration without malicious application or deception; There inno need require certain influence and prior use should be continuously; In invalidationproceedings, a registered trademark should not be declared invalid if the significance has grown up through using the trademark in commercial activities, even if there is nosignificance when the mark’s owner applied for registration. Second, the provisionthat trademark owner could not claim for damages if he have not used his registeredtrademark in any commercial activity should be amended as he could not claim forceasing infringement, in order to make coordination with the effect of trademarkgive-up; The registration regime emphasizes the use of a registered trademark andmay provide that the register should supply the evidence of the actual use, otherwisehe could not claim for the objection to some other’s application for registration ordeclaring some other’s trademark invalid. Third, the trademark law should set up theequitable principle, providing the estoppel, acquiescence and laches. And thetrademark misuse of making the consumer confusion could be provided in ourtrademark law as affirmative defense to trademark owner.