| Due to the long-standing rampant infringement of intellectual property rights,the high cost of rights protection,difficulty in proofing infringement and low compensation for rights holders,China has been advocating the establishment of a punitive damages system to strengthen the protection of intellectual property rights in theory and practice since the end of the last century.After years of hard work,in 2013,a system of punitive damages for trademark infringement has been established.In 2015,it was clear that the violation of new plant varieties could be punitive damages for the infringer.And in 2019,a system of punitive damages for infringement of trade secrets was established.With the completion of the revision of the Copyright Law and the Patent Law in 2020,our country has established a punitive damages system in the field of intellectual property,and has set up a general rule of punitive damages for intellectual property infringement in the Civil Code.However,judging from of the punitive damages system for trademark,trade secrets and new plant varieties infringement in practice,although the system has taken effect for more than five years,it has not accumulated a considerable number of samples.And the high increase in trademark infringement cases in recent years also reflects that the punitive damages system has not played its due effectiveness.It has gaps between the expected effect of this system and the state of implementation,whichis the background of General Secretary Xi Jinping emphasized in the 25th Collective Study Session of the Political Bureau of the Central Committee that "we must deepen reform and innovation in the field of intellectual property adjudication,improve the intellectual property litigation system,improve intellectual property trial of complex technology,and make good use of the intellectual property punitive damages system".In view of this,it' s significate to clarify the concept,nature and connotation of the intellectual property punitive damages system,as well as the evolution of the system.And on the basis of that,take cases of applying or refusing the punitive damages system as the starting point of statistical analysis to summarize the intellectual property punitive damages problems in the system,and explore the reasons for the unsatisfactory implementation of the system.Then put forward suggestions for improving the implementation of the system,so as to improve the protection and rule of law of intellectual property rights to create a green and friendly business environment.Since the punitive damages system for copyright and patent infringement has not been implemented,and the punitive damages systems for infringement of trade secrets and new plant varieties have been implemented,but the number of related cases is not enough to support empirical analysis,we choose to select the recent six years of trademark punitive damages cases for analyzing the system operational status.The few existing cases related to the trademark punitive damages system reflect the full-process problems in the operation of the punitive damages system:First of all,from the point of view of initiation of procedures,although the academia generally believes that the initiation of punitive damages procedures for intellectual property rights must be based on the plaintiff's request for application,there are mainly two situations in judicial practice:one is that the plaintiff clearly asserts the request for application;another is that plaintiffs do not propose it,but the judge applies it autonomously according to the circumstances of the case.The autonomous application of the court is unreasonable.Intellectual property infringement damage compensation is,after all,a kind of private right remedy,and the punitive compensation appeal that depends on private right remedy should belong to the field of private rights.In the field of civil litigation,private rights litigation strictly follows the basic doctrine of the sanction principle,and punitive damages should also follow the sanction principle,that is,it must be filed by the plaintiff(right holder),otherwise the court shall not apply it.As for the time for proposing the application of punitive damages,it should be limited to before the end of the firstinstance debate,and it is best to be clarified at the first time when plaintiffs hand in the files to the court.It is possible to increase the request for punitive damages in the second instance when the plaintiff's failure to raise a request for punitive damages in the first instance,or to sue in another case,Article 2 of the Interpretation of the Supreme People's Court on the Application of Punitive Damages in the Trial of Civil Cases of Infringement of Intellectual Property Rights("the Judicial Interpretation")stipulates that a punitive compensation claim can only be added in the second instance,when the opposing parties agree the plaintiff's claims,otherwise,the right holder should be notified to sue in another case.Secondly,from the perspective of constitutive elements,the legislative expressions of our country's intellectual property punitive damages provisions can be divided into three types:the first one is the "Malicious Infringement+Serious Circumstances" which is typical of the Trademark Law and the Anti-Unfair Competition Law.The second is the"intentional infringement+serious circumstances" represented by the Law and the Patent Law;and the third is the“serious circumstances" adopted by the Seed Law.The resulting questions are:Firstly,are "malicious" and "intentional" the same?What's the difference?Most judges believe that "malicious" and "intentional" only have the value of distinguishing in theory,and there is no meaning injudicial practice.Although the principle of fault liability is applicable to intellectual property infringement,intentional is the main form of subjective fault of the infringer.Taking "intentional" as a subjective element will lead to an excessively wide application of the punitive damages system.Therefore,it is more reasonable to use "malice" as the subjective element of punitive damages for intellectual property rights.On the one hand,it meets the requirement of prudent application as a more stringent system than compensatory damages,and can effectively limit the expansive application of punitive damages;On the other hand,although malice is not an independent form of fault,it is not non-existent as an element of civil liability.However,it still needs to be clarified that the“malice" in punitive damages should refer to“direct intention",but not "indirect intention",that is,the perpetrator's subjective intention must be "knowingly infringement and intentionally".Secondly,does“serious circumstances"limit "malice" or "intentional",or limit "infringement damage" or "infringement"?From the perspective of the scientific nature of the legislative technology,if the“serious circumstances" is a restriction on the degree of "malice",it is often unnecessary.After all,from the perspective of the constituent elements of "malice" infringement,"malice" is a more serious and narrow form of subjective fault.If the limitation of“serious circumstances"is used,the scope of "malice" applicable to punitive damages will be greatly reduced.Therefore,"the circumstances are serious" is a more reasonable description of the infringement.As for how to define "malice" and“serious circumstances",the judge needs to make a decision in the individual case.Thirdly,from the perspective of calculation basis,the calculation basis of our country' s current intellectual property punitive damages system includes the actual loss of the right holder,the illegal income of the infringer and the reasonable multiple of the license fee(no trade secrets),and does not include statutory compensation.This means that if the right holder wants to apply punitive damages,he must prove the calculation method of compensatory damages in addition to statutory damages.However,in judicial practice,the courts mostly directly determine the amount of punitive damages based on the facts of the case,or refuse to apply it on the basis of“statutory compensation absorbs punitive damages"and "there is insufficient evidence to prove the calculation basis",and instead escape to statutory compensation.This is because the intangible and non-exclusive nature of the intellectual property object cause most of the infringement damage to be a lost interest.Even if the value of the trademark or trade secret itself is reduced,the damage is difficult to accurately calculate.Besides,the intellectual property infringement evidence bias also makes the right holder's ability to produce evidence weak.For this reason,after comparing the advantages and disadvantages of strengthening the application of the system of impeding evidence,introducing the intellectual property damage evaluation system,and using statutory compensation as the calculation basis,the tendency is to use statutory compensation as the calculation basis for punitive damages.After all,statutory compensation is essentially an alternative calculation method for the actual loss of the right holder,and the amount of compensation thus obtained should be compensatory and can be used as the basis for calculating punitive damages.Moreover,current judicial practice reflects that judges take a more cautious attitude towards the application of punitive damages for intellectual property rights.Coupled with the implementation of the lifelong system of judges' responsibilities,performance appraisal and other regulatory measures,there is no need to worry about statutory compensation as a calculation basis.There may be“excess penalty" or "overcorrection" phenomenon.Repeatedly,from the perspective of multiples of compensation,our country's Intellectual Property Law has increased the original "more than one time and less than three times" to“one time and less than five times"(except for the Seed Law).The reason is that it is punitive.The purpose of compensation is to achieve the effect of general prevention by punishing specific infringers,and the preventive effect is directly related to the punishment of specific infringers.To a certain extent,the higher the amount of punitive damages,the more obvious the punitive effect on specific infringers,and the better the preventive effect on potential infringers who may commit similar infringements.Faced with the objective reality of rampant intellectual property infringements in our country,it is understandable to increase the upper limit of punitive damages.However,in judicial practice,the court did not elaborate on how to determine the multiples of punitive damages,but directly ruled how many times the punitive damages shall be applied or directly gave the amount of punitive damages,lacking the necessary argumentation process.In fact,"the limit of damages depends on the goal pursued by the law of damages".The goal of punitive damages for intellectual property rights is to encourage the right holders to prosecute and punish the infringers by over-compensating the losses of the right holders,and ultimately achieve the goal of preventing the recurrence of similar infringements.This requires punitive damages not only to positively encourage right holders to actively defend their rights,but also to reversely encourage infringers to reduce infringement or not to infringe.Comparing the perspectives of the right holder and the infringer,it can be found that there is a strong containment relationship between the positive incentive to the right holder and the reverse incentive to the infringer,that is,the reverse incentive to the infringer can include the right holder's positive motivation.Therefore,as long as the compensation multiple eliminate the infringer's infringement benefits,the best preventive effect can be achieved.However,when it is difficult to identify the infringer's benefits,it is very hard to determine the best compensation multiple,and there is no evidence.It proves that the "triple" transplanted from the US intellectual property law or the "five times" unique to our country is the best multiple.And the best way is to leave the determination of the compensation multiple to the judge in the individual case to determine it at his discretion,and at the same time restrict the judge's discretion by strengthening the reasoning of the adjudication and avoid the arbitrariness imposed by punitive damages.Finally,considering that the paradigm of intellectual property innovation requires creation on the basis of existing technology,this continuity of innovation and the superposition of intellectual property rights exclude excessive punitive liability to prevent excessive innovation costs,avoiding clogging up innovation and development.Therefore,in the intellectual property punitive damages system,it is still necessary to balance the deterrence effect of the system and the relationship between innovation and development,which means that reasons for the reduction or exemption of punitive damages for intellectual property rights should be established to alleviate the negative impact of the punitive damages system on innovation to avoid the chilling effect.Through empirical research,it is found that injudicial practice,the court will appropriately reduce or exempt infringement punitive liability based on "the infringer has or may bear criminal or administrative responsibility","the economic status or ability of the infringer" and "the amount of compensation determined in the plaintiff's claim".In this regard,we should further improve the above three reasons for liability reduction and exemption,clarify the application of the reasons under specific circumstances and the distribution of the burden of proof,so as to reasonably balance the intellectual property punitive damages system and the needs of technological innovation and cultural prosperity,and further expand the justice dimension of property right damage compensation liability.In summary,the legal provisions of punitive damages for intellectual property rights should also be modified accordingly.The first one is to place punitive damages clauses after statutory damages clauses,to clarify that statutory damages can be used as the basis for calculating punitive damages.The other is to delete the upper limit of the multiple of compensation to indicate that there is no upper limit requirement for punitive damages.The specific multiple is determined by the judge according to the circumstances of the case.In addition,intellectual property punitive damage is,after all,a civil damage liability that is far more severe than compensatory damage.Although the Judicial Interpretation can provide certain guidelines for the application of this system,there are only seven items.It is difficult for the judicial interpretation to provide detailed guidance for the judgment of the constituent elements of the punitive damages system.It also can neither effectively eliminate the differences between different courts or different judges on the identification of constituent elements,nor can it provide stable and sufficient guidance on the determination of the multiple of compensation.To this end,we should use judicial interpretation and guiding cases to guide and standardize the application of the system,and gradually promote the application of the punitive damages system while strengthening the reasoning of the adjudication at the same time. |
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