On Litigious Status Of The Licensee To The Contract For Ordinary Licensed Use Of Registered Trademarks

When the exclusive right to use registered trademarks has been infringed, it is generally believed that: the Licensee to the contract for ordinary licensed use of registered trademarks (hereinafter referred as Licensee for short) can not lodge a suit unless being allowed and authorized by trademark registrant. It is true that most of the time trademark registrant may take measures to stop the infringement, litigate or authorize licensee to conduct of the procedures of legislation. But if worrying about the countercharge by the defendant or abuse use of procedural right by Licensee, trademark registrant may neither lodge a suit personally nor authorized the licensee for the accusation. Under such circumstance, the Licensee's right is probably not safeguarded, which is a typical phenomenon of "having no right to relief". In the paper, through analyzing the actual litigious status of the Licensee and the reasons for such status, the author proved the necessity and feasibility to endow the Licensee with litigious status from the perspective of theory. Based on the study of foreign pilot research and cases of legislation, the author also provided some suggestions of legislation on endowing the Licensee with litigious status.Totally this paper consists of five parts. The general development of this paper is following the private right mode of "antecedent right→right of relief, right of relief is produced when antecedent right gets infringements.In the first part, the concept and features of the contract for ordinary licensed use of registered trademarks were introduced in order to come to the issue of litigious status of the Licensee.The second part analyzed the actual litigious status of the Licensee and the reasons for such status. Insufficiencies for actual situation were also pointed out. Moreover, it also clarified that non-exclusive Licensee to the contract for ordinary licensed use of registered trademarks means that it is non-exclusive for trademark registrant to allow other to use the trade mark but not stand for permit of infringement of trademark. Procedural right is also generated with the infringement of substantial rights but is not produced by commitment or authorization. If the article in the contract for Ordinary Licensed Use of Registered Trademarks has not specified the abandon of Procedural right, the Licensee shall be deemed to enjoy the right litigation. In the third part, the necessity and feasibility to endow the Licensee with litigious status were discussed. As for the discussion of necessity, the paper started from features of trademark and the principles of honesty and credibility. Concerning its feasibility, it is discussed from the litigation of right infringement and the right of claim of restitution of unjust enrichment.The fourth part introduced the research progress in Japan and the performance of "Trademark Law of United Kingdom of Great Britain and Northern Ireland" on the litigious status of the Licensee. The law in Japan has not clearly specified that the licensee is granted the procedural right, but its litigious status has been common recognized theoretically, and similar cases has occurred before, "Trademark Law of United Kingdom of Great Britain and Northern Ireland" stipulates that the Licensee enjoy procedural right, which is a conditional right approved by court and the trademark registrant's abandon of such right within two months. The author believes that "Trademark Law of United Kingdom of Great Britain and Northern Ireland" is in a leading position compared with other countries' legislation. Still it also has limitations because the Licensee should be directly endowed with independent procedural right.The fifth part firstly indicated the current inadequacies of judicial interpretation in our country and proposed that the Licensee should be granted with procedural right". Then it explained the detailed implementation of claim, and suggested that the "abandoned infringing material" specified in administrative relief should be listed in civil relief in order to offer the Licensee civil relief like halting of infringement, abandon of infringed objects, compensation for damages, elimination of the effects of civil relief.