Private International Law Aspects Of The Protection Of Trademarks

As international civil and commercial relationship concerning trademarks becomes more and more close, private international issues in trademark field merit a thorough study. Especially in the era of globalization and knowledge economy, there are many new private international issues concerning trademarks presented by international and online trademark use. Protection of trademarks is the core of the legal system of trademarks. Private international law is an important aspect of the international protection of trademarks. The difference between different national trademark legal systems and the expansion of trademark rights makes the conflicts of trademark laws and conflicts in international markets between two persons with undisputed legitimate ownership of different national properties possible. The settlement of international trademark disputes is closely related to the ascertainment of adjudicative jurisdiction and the solution of conflict of laws. Moreover, the question of "adjudicative jurisdiction"and "applicable law"is connected with the solution of the competition between two persons with undisputed legitimate ownership of national trademark rights. The ascertainment of adjudicative jurisdiction and the solution of conflict of laws are important parts and primary contents of private international aspects of trademark protection. Before turning to existing and proposed rules of private international law, Chapter One of the paper considers the role of the international trademark conventions, and then in chapter two the author will turn to the ascertainment of adjudicative jurisdiction of national courts over trademark disputes. Finally in Chapter three, the author will address the solution of the conflict of laws in trademarks. In chapter one, the author addresses the issue about the role of international trademark conventions. The Paris Convention and the TRIPS Agreement do not directly address or affect any questions of private international law. National treatment and the principle of independence of rights, which affirm in different ways and with different strength the principle of territoriality, arguably do bear upon the question of choice of law. But their significance in this regard should not be overstated. These principles do not mandate any particular choice-of-law rule. However, both these two basic principles affirm the notion of territoriality, and this has been read as grounding a choice of law rule of Law of Protection (here equivalent to Law of Forum), because the rigid territoriality of trademark rights makes every country decide to grant a trademark right on the basis of its national trademark law. The national treatment principle in particular is sometimes treated as instituting a choice of law rule. But, this principle is really not a conflict rule at all; it does not direct application of the law of any country. It simply requires that the country in which protection is claimed must treat foreign and domestic trademark owners alike. Whether domestic law of conflicts directs domestic court to look to foreign or domestic law as to certain issues is irrelevant to national treatment, so long as the scope of protection would be extended equally to foreign and domestic trademark owners. Moreover, choice of law methodologies may reflect that territoriality is an underlying premise of the international conventions in a variety of ways. Traditionally, many judicial practices affirmed a territorialism philosophy by resolving choice of law issues in tort case by the application of Law of Delict. In recent years, however, most states in the United States have rejected theinflexible application of the Law of Delict in favor of a policy-based approach to choice of law. But even with such a scheme, the territorialism claims of the place of conduct and place of injury are afforded great significance. Chapter two addresses the ascertainment of adjudicative jurisdiction in international trademark litigation. Choice of Forum is the process in which different legal litigation relationship will be connected with different systems of adjudicative jurisdiction through the choice and ascertainment of connecting factors. Moreover, the adjudicative jurisdiction system of trademarks needs reforming and improving in the situation of globalization and cyberspace. In section one, the author considers the solution of the conflict of jurisdiction arising from the application of different personal connecting factors in international trademark litigation. There are four bases on which to ascertain the adjudicative jurisdiction: the place of harm, the place of consumer (the unwitting victims of the unauthorized trademark use),the place where the plaintiff's goodwill was harmed and the uniform substantial trademark law. Section two concerns the jurisdiction based upon stream of commerce theories or website access. According to this theory, the court in a country where the accused website is accessible will assume the jurisdiction over the dispute. However, in judicial practice, it is unreasonable that the jurisdiction is decided simply by virtue of accessibility of the accused website. And therefore limitations should be added to this theory when necessary. Section three considers the exclusive jurisdiction in international trademark litigation based upon the subject matter of a claim. Territoriality isan underlying premise of the exclusive jurisdiction. However, along with the strengthening of internationality of trademarks, it is necessary to modify and revise the principle of exclusive jurisdiction. When hearing a foreign claim or the consolidation of claims that would be facilitated by modification and revision of the exclusive jurisdiction would provide national courts operating within an international environment with greater flexibility to accommodate the divergent interests of a number of interested states, a national court may hear a claim arising under foreign law, and may consolidate several national claims in a single proceeding. Chapter three addresses the solution of conflict of trademark laws. The first solution is the Law of Protection stipulated in international trademark conventions. Although the international protection mechanism of trademarks has been established on the basis of the principles of national treatment and independence of national rights by current international trademark conventions, the rigid territoriality to certain extent makes it impossible that a trademark right can gain the protection from every contracting country and even that it can gain the same protection from every contracting country. Especially in the era of international commerce, where consumer understanding, product markets, and producer marketing, distain territorialism, the value of such a rule as the lodestar for international trademark law becomes questionable. And thus we should develop a flexible and proper conflict rule to accommodate the divergent interests of a number of interested states and parties based upon sovereignty which departs from the principle of territoriality. Moreover, the internet renders it impractical and online trademark use throws up the intractable problem of conflict of laws.Section two gives a brief introduction of the technological solution to the conflict of trademark laws in cyberspace. Section three concerns the new trends of the application of laws in the internet context. There are three conflict rules concerning the issue: law of the place where the harmful effects occurred(mainly the place where consumers were confused or the place where the goodwill of the trademark owner was threatened), a choice-of-law rule pragmatically designating a fixed locus for the tort, and law of the place where consumers accessed the website. Section four addresses the unilateral interpretation of extraterritorial scope. In the United States, choice of law analysis in trademark cases has largely taken the form of different tests of extraterritorial scope. That is, courts faced with an allegation that a set of facts partly involving foreign commerce gives rise to a trademark infringement claim concentrate on the unilateral question whether the U.S. Lanham Act should apply extraterritorially. If the answer is in the affirmative, then the U.S. trademark statute (and that alone)is applied, and the courts are seized of federal question jurisdiction over the dispute. If the answer is in the negative, the court dismisses the case for lack of subject matter jurisdiction----the case does not arise under the federal laws of the United States. The unilateralism in the application of law may be harmful to the interests of foreign parties and the value of fair and justice for the lack of the considerations of the possibility of applying foreign law. A national court should avoid being governed by accidental factors and subjective factors and select the applicable law proper to settle cases fairly and reasonably, thereby attaining a balance around the interests of concerned parties, the concerned counties and the whole society, which is favorable to...