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Dissertation
Immaterialgüter- und Wettbewerbsrecht

Research on the Defense Systems of Trademark Infringement from A Comparative

The defense of trademark infringement means that if the rightholder initiates a legal proceedings of trademark infringement, the defendant will be able to put forward a defense, claiming that he has no infringement or has no liability for damages. The defense systems of trademark infringement aim to protect the parties other than trademark holders to participate in competition freely and fairly, and to prevent trademark holders from using trademark rights to restrict other parties to use trademark-related resources freely and fairly for competition. Based on the theory for “the distribution of the symbolic profits”, this project analyses the defense systems of trademark infringement in EU, U.S. and China from a comparative perspective, and then provides valuable suggestions about the improvement of the defense systems of trademark infringement for revision of China's Trademark Law in the future, and provides a helpful experience of China for the perfection of the defense systems of trademark infringement in EU and U.S..

Letzte Änderung: 21.09.20

The first part of the project is “Overview of the defense systems of trademark infringement”. The types of the defense systems of trademark infringement in the TMD and the EUTMR mainly include use of one’s own name and address, descriptive fair use, nominative fair use, prior use, exhaustion of trademark rights and so on. The types of the defense systems of trademark infringement in the Lanham Act of U.S. are not completely identical with those in the TMD and the EUTMR, except for fair use, prior use and exhaustion of trademark rights, there are trademark abandonment by the holders, fraud in obtaining trademark registration, use of trademarks in Violation of Antitrust Laws (unclean hands defense), laches and so on. The types of the defense systems of trademark infringement in the Trademark Law of China mainly include prior use, non-commercial use, the defense of non-use actually by the plaintiff (some scholars call it no use no compensation defense) and bona fide sales, etc.. Based on the trademark laws of the EU and U.S., it can be found that the defense systems of trademark infringement are mainly composed of nominative fair use, prior use, exhaustion of trademark rights, noncommercial use and the defects of trademark right itself (including non-use actually by the plaintiff, illegal use and so on). By contrast, China’s Trademark Law includes four major kinds of defense systems of trademark infringement: prior use, non-commercial use, the defense of non-use actually by the plaintiff and bona fide sales. It still lacks exhaustion of trademark rights and nominative fair use. Therefore, in order to build a complete defense system of trademark infringement, China should supplement exhaustion of trademark rights and nominative fair use in the further revision of the Trademark law. 


The second part of the project is “Comparative analysis of the defense systems of trademark infringement”. Comparing the defense systems of trademark infringement in EU, U.S. and China, we can find that although there are some differences in the regulations of different countries and regions, there are many similarities, which reflect the value of the defense systems of trademark infringement to some extent. Take prior use as an example. It overcomes the defect of insufficient protection for the prior use of the unregistered trademark under the registration system to a certain extent. It is beneficial to balance the interests of the prior user and the registered trademark owner. The differences between the system of prior use in EU, U.S. and China are reflected in whether the prior user should be in good faith,the requirements on the popularity of the prior use trademarks, and the provisions on the scope of continued use. The commonality of the provisions on the system of prior use in EU, U.S. and China is mainly reflected in the application conditions of the prior use right of trademark, mainly including the subject, object, content and so on. The subject includes the owner of the unregistered trademark who use the trademark previously and the trademark holder who register the trademark later. Besides, the use of the prior user should be earlier than that of the trademark registrant. The object includes the unregistered trademark that was previously used and the trademark that was registered later. The two trademarks are the same or similar, and the goods or services used by the two trademarks are the same or similar. In terms of content, the unregistered trademark must have been actually used before the registration of the registered trademark, and it has generated goodwill that needs to be protected by the trademark law. 


The third part of the project is “Evaluation and reference of the defense systems of trademark infringement”. Since the defense systems of trademark infringement in EU and U.S. is relatively perfect to some extent, the comparative analysis of the defense systems of trademark infringement in EU, U.S. and China can provide a good reference for the establishment and improvement of the defense systems of trademark infringement of China. After an in-depth study of the defense systems of trademark infringement in EU, U.S. and China, we can find that there are some defects in the existing defense systems of trademark infringement in China. In addition to the lack of nominative fair use and exhaustion of trademark rights of the defense systems of trademark infringement in China, the existing provisions on the major defense systems of trademark infringement in China are not clear. In the revision of China’s Trademark Law in the future, China could give a systematic explanation of the specific connotation and extension of the prior use, descriptive fair use, bona fide sales and the defense of no use no compensation according to the actual circumstances of China to realize the purpose of the defense systems of trademark infringement smoothly. Take fair use for example. In U.S., even if the use of others' trademark has caused a certain degree of confusion among consumers, it can be considered as fair use. In EU, the judgment on the use of others' trademarks is mainly based on the subjective state of the user. Good faith or not has become a necessary condition for fair use. The judgment on good faith is also considered in a comprehensive way. All of these constitute a mature defense system of fair use, and provide a helpful reference to China for improving the defense system of fair use. The subjective criterion should be adopted to judge whether it can be considered as fair use, that is, the alleged infringer has no subjective intention to make his use of others’ trademark as "trademark use". If he has a willingness to identify the source subjectively, he cannot use the system of fair use to defend. 
 

Personen

Doktorand/in

Yinque ZHAO 
 

Doktorvater/-mutter

 Prof. Dr. Tieguang Liu 

Forschungsschwerpunkte

I.4 Fairness als Rechtsprinzip