On The Protection Of Rights And Interests Of Trademark Licensees

With the strengthen of property attribute of trademark and the transformation of trademark function,the trademark licensing practice has been continuously developing.Trademark owner could obtain license benefits in a larger geographical scope and more business fields.At the same time,its control and contribution to the trademark is weakening.As the actual user of the trademark,the licensee is more closely related to the trademark and plays a more substantive role in the maintenance and development of the trademark.At present,in our nation,the licensee is facing the dilemma of rights and interests protection in terms of the maintenance of trademark use right,the exercise of right of action,the distribution of trademark value-added interests and the interests related to product quality guarantee.Therefore,the relevant rules of trademark license need to be adjusted and improved.Only by strengthening the protection of the rights and interests of the licensee can we encourage the use of trademarks on the basis of realizing the balance of the interests of both parties,so as to promote the maintenance of public interests and social and economic development.In addition to the introduction,this thesis consists of six chapters,the main contents are as follows.Chapter Ⅰ: Legal Mechanism of Protecting the Rights and Interests of Trademark Licensees.This chapter contains three aspects.The first is an overview of trademark licensing,including the definition,historical evolution,different types and implementation impact of trademark licensing.Specifically,the connotation of trademark licensing changes with the increase of trademark value.The connotation of goodwill lease in general understanding should be gradually expanded to the lease of exclusive information of trademark.Its extension is extremely broad,including different historical periods,different geographical ranges and different types of licensed use.Historically,the licensed use of trademarks has experienced the development and evolution from absolute prohibition to recognition with quality guarantee conditions,and then to the realization of free and independent licensing,which essentially reflects the continuous promotion of the concept of trademark property.In terms of its classification,trademark licensing can be divided into different categories in theory,legislation and practice.Finally,it talks about the dual impact of trademark licensing,that is,while promoting the exertion of trademark value and the development of brand economy,it may also bring multiple institutional risks.These contents pave the way for the subsequent research on the protection of the rights and interests of trademark licensees.The second part is an overview of the main contents of the protection of the rights and interests of the licensee.This part sets up an overall analytical framework for the full text,which includes the protection of several important rights of the licensee in the trademark license: the right to use the trademark,the right to sue,and the right to participate in the distribution of value-added benefits.In addition,it also discusses how the interests of the licensee should be better protected while guaranteeing the product quality.These contents can form a relatively comprehensive licensee interest protection structure.The third part analyzes the necessity of protecting the rights and interests of trademark licensees.There is a significant gap between the status of both licensing parties.The scope of rights of the trademark owner continues to expand with the enhancement of the property attribute of the trademark,and the degree of profit this party can get from the use of the trademark license is also strengthening.On the contrary,the protection that the existing trademark licensing legal rules can provide for the licensee is significantly insufficient,which is obviously inconsistent with the requirements of the principle of interest balancing of intellectual property law.Further,the imperfect rights and interests protection mechanism can not form an effective incentive for the Licensee as the actual user of the trademark,which is not conducive to its active use of the trademark,and the related interests of other subjects and social and economic development will be adversely affected.Therefore,it is extremely necessary to create a more perfect rights and interests protection system for the licensee.Chapter Ⅱ: Maintenance of the Licensee’s Trademark Use Right.This part focuses on the maintenance of the Licensee’s trademark use right in three situations.The first part is about licensee’s use right maintaining in the situation of duplicate authorization.Under the registration confrontation system,the transfer of trademark use right based on will autonomy will be publicized,so that the trademark use right can be guaranteed from two aspects: static right ownership and dynamic transaction security.Considering the "uneconomical" of registration,some trademark owners may choose not to register.At this time,the protection provided by the registration confrontation system will be very limited.In addition,the formulation,understanding and application of the specific rules of registration confrontation,including the limitation of registration subject and content,the identification of "bona fide third party" and the determination of the connotation of "confrontation",are closely related to the specific protecting degree of the trademark use right.The second part is when the trademark right is assigned during the trademark licensing period,how the trademark use right of the previous licensee could be effectively protected.In the current legislative framework of our country,there are two ways to realize the trademark "transfer without breaking the license" : "registration confrontation" and "right inheritance",and the application of the two conflicts.By comparing the different degrees of protection of trademark use right under these two modes,it is concluded that "registration confrontation" is more beneficial to trademark licensees in essence.The last aspect is the protection of the licensee’s trademark use right in the bankruptcy procedure,which mainly discusses about what impacts trustee’s right of choice on executory contract would make on trademark licensing.At present,in China’s bankruptcy proceedings,trademark license contract does not belong to the contract type on which the trustee’s right of termination is restricted.Hence,only the general rules for the processing of executory contract can be applied to determine the status of this contract,which means the trustee could make a unilateral choice on it.Terminating trademark licensing merely by the trustee is improper,since it might cause obvious inequity to non-debtor licensee,does not necessarily help increase the value of bankruptcy estate,as well as would possibly do harm to public interest.Therefore,the trustee’s right of termination towards trademark licensing contract needs to be restricted.Besides,giving the licensee the right to choose,which makes it possible for the licensee to retain the use of the trademark,has an obvious positive effect.Therefore,it is suggested to strengthen the protection of the licensee’s trademark use right in the bankruptcy proceedings from these two aspects.Chapter Ⅲ: Protection of the Licensee’s Right of Action.In China,different types of trademark licensees enjoy different degrees of protection of right of action,among which ordinary licensees face the most obvious dilemma of safeguarding their rights.The necessity of strengthening the protection of the Licensee’s litigation right is reflected in several aspects,such as meeting the requirements of the principle of good faith,meeting the needs of trademark value maintenance and efficient settlement of trademark infringement disputes.At present,there are many obstacles to provide ordinary licensees with the independent right of action.For example,there are operational obstacles to the exercise of the right of action by this party,which is there is difficulty in calculating the infringement value,and there are disputes over whether the ordinary licensee belongs to the direct interested party.It should be considered that the existence of operational barriers cannot be a reason to deny the perfection of the system,and the view that the ordinary licensee does not belong to the direct interested party is essentially a misunderstanding of the "non exclusivity" of the ordinary license right.The biggest obstacle for this party to enjoy the independent right of action comes from the credit effect of the ordinary use right.It is not beneficial to strengthening the protection of the licensee’s litigation right within this framework.Therefore,we should seek a new path to provide a legitimate explanation for the ordinary licensee’s independent litigation right,and the litigation right agreement theory can solve this problem.It is suggested to clarify that,based on the agreement between the two parties,ordinary licensees can exercise their litigation right independently,and adjust the legal litigation right rules as follows: add the right to urge the licenser to file an infringement lawsuit against infringer,and the trademark owner’s inaction after being urged is regarded as the implied authorization of litigation right,so as to strengthen the protection of the ordinary licensee’s right of action.In the monopoly and exclusive licensing,there is no difference in the exclusivity of the trademark use right to a third party other than the parties of the licensing contract.Therefore,the two types of licensees should be guaranteed to the same extent in the exercise of the right of action.However,according to the current legal litigation right rules,the exercise of the exclusive licensee’s right to sue is subject to the exercise of the trademark owner’s right to sue,and the monopoly licensee enjoys a clear independent litigation right status.In these two types of licenses,the trademark use right enjoyed by the licensee has obvious real right effect and is independent of the use right of the trademark owner.Therefore,it is suggested that these two types of licensees should be regarded as non-ordinary licensees and given the right to independently file trademark infringement litigation.Chapter Ⅳ: Protection of the Licensee’s Interests in the Quality Control.Based on the trademark quality assurance function,the trademark owner shall supervise the quality of the products using its trademark,and the Licensee shall ensure the quality of the products using licensed trademark provided by himself.The two parts together constitute the quality assurance requirements in the trademark license.For the licensee,this means that in addition to selfmanagement,he also needs to accept the supervision and control of the trademark owner.There are various ways to implement the quality supervision of the trademark owner,which can be divided into two categories: the supervision agreed in the contract and the supervision of actual behavior.In practice,the mere existence of contract supervision clauses without the actual implementation of supervision,or the negative implementation of actual supervision,cannot play the role of substantive supervision of product quality,which belongs to the situation of unproper implementing of quality supervision.The occurrence of these two situations will have a variety of adverse effects on the licensee,including that the licensee may be unable to continue to use the trademark due to the deprivation of trademark right.The "naked license" regime in the United States is a typical example.It also includes that the possibility of product quality failure due to poor supervision increases,and the licensee,as a product provider,will bear corresponding legal liabilities.In addition,since quality control is a trademark owner’s right on the licensee,the improper exercise of supervision rights might constitute a monopoly,which is also another form of unproper quality control.The typical behavior of this is to carry out tying sales that are not necessary for quality control.Excessive supervision not only destroys the licensee’s freedom of trade during the license period,but also its adverse impact on the licensee will be "transmitted" to the licensee’s independent operation after the end of the license,hindering its further development.In addition to the improper implementation of quality supervision,the weakening trend of the trademark owner’s responsibility in quality assurance is also unfavorable to the licensee.This trend has not only been reflected in judicial practice-the standards for the performance of quality supervision obligations have been continuously relaxed,but has also received a lot of support from the scholars.This will directly increase the difficulty for the licensee to realize product quality assurance,and the risk of bearing adverse legal and commercial consequences increases.In order to promote the protection of the interests of the licensee in the quality guarantee procedure,we can use the following paths: avoid the excessive aggravation of the quality guarantee responsibility to the licensee,standardize the quality control behavior of the trademark owner,avoid the occurrence of inappropriate supervision behavior,and make full use of the binding force of the contract to provide protection for the licensee.Chapter Ⅴ: Protection of the Licensee’s Rights and Interests in Distribution of Value-added Benefits of Trademark.The licensee’s active trademark use would create two kinds of valueadded benefits,internal and external benefits.The increase of trademark internal value is the enhancement of the mark itself,which means goodwill carried by it and its advertising function grows.The increase of external value refers to the value-added interests closely related to,but independent of the trademark right,such as commodity packaging and decoration,advertising language.After the expiration of the license,the ownership of the added value would break the balance of interests between licensor and licensee during the license period,and the conflict caused by this imbalance might be further highlighted in the context of trademark propertization.Therefore,it is necessary to explore its attribution.The distribution of value-added benefits between licensing parties could be supported by the labor theory,the theory of value-added value and the theory of balance of interests in intellectual property law.In terms of the distributability of value-added benefits,the divisibility of internal value-added benefits is weak,while the divisibility of external value-added benefits is relatively clear.In order to analyze the distributing mode,several theoretical studies including unjustified enrichment system,add-on rules,priority leasing,as well as some foreign legislation and judicial practice would be interpreted.And the conclusion is that the best plan for the distribution of benefits is consensus between the two parties.When such an agreement does not exist,the internal value-added benefits take a compensatory distribution scheme by referring to the add-on rules.To determine the distribution of external value-added benefits,there is a need to analyze the mark independence,and on this basis,contribution made by different parties would be the considering factor,which is referring to Japanese rules and regulations.Chapter Ⅵ: Measures to Improve the Protection Mechanism of the Rights and Interests of Trademark Licensees in China.First,strengthen the maintenance of the licensee’s use right.On the one hand,it is suggested to improve the rule formulation,understanding and application of the trademark registration confrontation system in the following ways: increase the licensee as the subject of trademark license registration,identify the "bona fide third party" with relatively strict standards,clarify that the antagonism of the registered trademark license lies in the formation of right priority,and the specific content of antagonism is understood differently according to the exclusivity of the trademark use right.On the other hand,clarify that the "transfer without breaking the license" should be realized by the rule of "registration confrontation" rather than "right inheritance".In this way,the licensee’s trademark use right can be more effectively protected when duplicate authorization and trademark transfer happens.In the bankruptcy procedure,restricting the trustee implementing the right of choice on executory trademark licensing agreements,and providing specific non-debtor licensee with the right to seek court approval for maintaining trademark use.Second,improve the protection mechanism of the licensee’s right of action.Clarifying that both parties can agree on the right of action on the premise that they do not violate the mandatory provisions of the law and have no adverse impact on the national and public interests,and the agreed right of action rules take precedence over the legal right of action rules.However,if there is no such an agreement,ordinary licensees would be able to take legal action independently when he implements the right of interpellation but the trademark owner does not take an action.Non-ordinary licensees could sue directly.Third,improve the relevant rules of quality control in trademark licensing.The "behaviorism" standard needs to be adopted to identify the performance of the trademark owner’s quality control obligation,and clarifying that the trademark owner will face the consequences of trademark revocation if he fails to perform its quality control obligation.Fourth,set up a trademark value-added benefits distribution and compensation mechanism.Suggesting that add a provision in trademark legislation to guide licensors and licensees to agree on the distribution or compensation of value-added benefits based on the principle of fairness.At the same time,stipulating that when the agreement does not exist or is unclear,license parties can distribute or implement compensation according to the specific manifestation of value-added interests,at the meantime,on the basis of considering the contribution of the licensee.In addition,providing protection for the trademark Licensee to obtain compensatory benefits after the internal value-added interests return to the trademark owner.The specific methods include urging the trademark owner to perform the post contract obligations-tolerating and assisting the Licensee in reasonable goodwill reversion,etc.Lastly,making suggestions on the distribution standard of external value-added benefits of trademarks:if this kind of interests have independent identification function,they can be divided based on the use situation of license parties.In this way,while reaching the balance of interests of license parties,in will promote the development of trademark licensing practice and legal construction in our nation.