Sales of products suspected of infringement? Can prove that there is a "legitimate source" do not be afraid!

Categories:

Author:

Source:

Release time:2016-07-18

Original title: "legal source" to determine the rules of judgment.

 

-- Analysis of NISE Enterprise (Canada) Co., Ltd. and Tang Zhuying, Zhejiang Taobao Network Co., Ltd. infringement of the right to exclusive use of registered trademarks

 

  The gist of the case

 

In a trademark infringement case, if the seller does not know that the accused infringing product is a product that infringes the exclusive right of another person's registered trademark, and can prove that the product is legally obtained by itself and explain the provider, it will not be liable for compensation. The determination of "legal source" should be returned to the judgment rule of "high degree of cover" of evidence in civil cases, and it should not be too demanding on the standard of proof, but should conform to the objective situation of the factual state of the case itself, and use the judge's free testimony and discretion to find out the correct path for the application of the legal provisions.

 

  The case

 

NISE Enterprises (Canada) Co., Ltd. (hereinafter referred to as NISE Canada Company) claims the trademark right of "NISE DE CREME" No. 5296607 (hereinafter referred to as the trademark involved), and the approved commodities are cosmetics, beauty masks, etc. On December 14, 2009, NISE Canada signed the NISE DE CREME Trademark Exclusive License Contract with the owner of the trademark involved, and obtained the exclusive license to use the trademark involved.

 

On December 20, 2009, NISE Canada Company and Beijing North American NISE Cosmetics Co., Ltd. (hereinafter referred to as NISE Beijing Company) signed the "Canada NISE Brand Trademark Use and Brand Equity Authorization Agreement", which stipulates that NISE Beijing Company has the right to use the involved trademark in the area agreed by both parties in the name of NISE Beijing Company when selling "NISE" series products in China, and become NISE Canada product brand authorized in China directly under the operation of the general sales company.

 

NISE Canada purchased "NISE brand beauty products" (I .e. products accused of infringement) in the "yyyy1113" store through Taobao, and the words "NISE DE CREME brand direct sales" and "NISE Canada cosmetics monopoly" were displayed on the store's web page. Tang Zhuying recognized the above shop as its opening.

 

Upon confirmation by both parties, the packaging of the alleged infringing products involved in the case indicated that the authorized manufacturer was NISE Canada, the Chinese distributor was Beijing North American Ness Cosmetics Co., Ltd., and the Chinese manufacturer was Tianjin North American Ness Cosmetics Factory, and the trademark involved was marked.

 

In the first instance trial, Tang Zhuying submitted a power of attorney issued by Ness Beijing Company on December 30, 2010, stating that Ness Beijing Company granted Tang Zhuying to be responsible for all network-related operations and management businesses such as network distribution rights, promotion rights and distribution rights of the company's beauty, skin care and makeup products. The authorization will take effect from January 1, 2011 and expire on December 31, 2015. In addition, the authorization does not specify the trademark of the specific authorized beauty product.

 

On March 29, 2012 and at the trial of the first instance, Ness Beijing issued two statements to NISE Canada, both stating that the company had never authorized any third party, including Tang Zhuying, to use the trademark involved in the case, and had never provided Tang Zhuying with any legal documents.

 

In order to prove that he was authorized by Ness Beijing Company and that the alleged infringing goods involved in the case came from Ness Beijing Company, Tang Zhuying applied for witness Wang Mou to testify in court during the first and second instance proceedings. The witness said that he had served as the general manager of Ness Beijing Company, and was authorized by the legal representative of Ness Beijing Company to act as an agent for the relevant affairs of the company. He also authorized Tang Zhuying to sell the goods involved in the case on the Internet on behalf of Ness Beijing Company. The alleged infringing products involved in the case were handed over to Tang Zhuying by Ness Beijing Company.

 

NISE Canada recognizes its representative office in Beijing and continues to be the chief representative of the representative office. At the same time, in the civil judgment (2011) No. 14604 (hereinafter referred to as civil judgment No. 14604) that has come into effect, it is stated that witness Wang mou is the manager of naisi Beijing company. at the same time, the judgment records that xu Jie is not only the legal representative of naisi Beijing company, but also the chief representative of NISE Canada company in China's representative office. the cosmetics ordered by him were delivered to naisi Beijing company after production in Tianjin.

 

The plaintiff NISE Canada Company believed that the defendant Tang Zhuying sold NISEDECREME series cosmetics in its Taobao store without permission and marked it as a monopoly of Canadian NISE cosmetics, which constituted the sale of goods infringing the exclusive right to use a registered trademark. Taobao, operated by the defendant Zhejiang Taobao Network Co., Ltd., neglected to fulfill its legal review obligations and should also bear corresponding responsibilities. Accordingly, the court was requested to judge: confirm that the two defendants infringed the exclusive right to use the registered trademark No. 5296607; Order the two defendants to immediately stop selling and promise to sell infringing products; Order the two defendants to bear joint and several liability and compensate the plaintiff for reasonable expenses and losses totaling 500000 yuan.

 

  Judgment

 

The Beijing No. 1 Intermediate People's Court held that Tang Zhuying claimed that the alleged infringing goods originated from Naisi Beijing Company, but failed to provide any evidence such as sales contracts, sales bills or receipt and delivery documents. At the same time, in the absence of any evidence that Wang had worked for Ness Beijing and NISE Canada did not approve his testimony, the testimony could not be accepted. Therefore, Tang Zhuying's claim that the alleged infringing goods came from Naisi Beijing Company was not supported, and the court of first instance found that Tang Zhuying had violated the exclusive right to use the trademark of NISE Canada Company. According to the provisions of items (I) and (II) of Article 52 of the Trademark Law amended for the second time in the 24th meeting of the Standing Committee of the Ninth National People's Congress on October 27, 2001 on Amending the Trademark Law of the People's Republic of China, it was decided that Tang Zhuying immediately stopped producing and selling the infringing products involved; Tang Zhuying compensated NISE Canada for economic losses of 30000 yuan and reasonable expenses of 20000 yuan; Other claims of NISE Canada were rejected.

 

Tang Zhuying refused to accept, filed an appeal. The Beijing Higher People's Court held that based on the high degree of evidence, it is sufficient to prove that the accused infringing goods sold by Tang Zhuying came from Naisi Beijing Company, and the accused infringing goods sold by Tang Zhuying could not be identified as products that infringed the trademark involved, and the relevant determination of the first instance judgment lacked factual and legal basis, so it decided to revoke the first instance judgment and reject all claims of NISE Canada.

 

  Comments

 

Article 66 of the "Several Provisions of the Supreme People's Court on Evidence in Civil Litigation" stipulates: "The judges shall conduct a comprehensive review of all the evidence of the case from the degree of connection between the evidence and the facts of the case, and the connection between the evidence. Judgment". Under normal circumstances, in the process of determining the evidence, if all parties have no direct evidence to prove the facts involved in the case, the people's court shall, according to the probative force of the evidence and the degree of connection with the facts to be proved, and in accordance with the judgment standard of the high degree of probability of the evidence, make a comprehensive and overall determination of the facts involved in the case. In the case of trademark infringement, the determination of the facts involved should be returned to the basic rules of civil dispute evidence. Generally speaking, in the commercial circulation link, it is necessary to judge the "legal source" through the purchase vouchers such as commodity circulation contract, sales invoice, receipt and receipt, but this judgment standard is not fixed and rigid. When the court makes the determination, It should combine the objective situation of the specific case and make a common sense judgment in line with social life and trading habits on the basis of a comprehensive analysis of the evidence, we should not stick to a single form of evidence and judge the facts of the case in a "matching seat" way, otherwise we can not accurately judge the specific case situation, which will affect the definition of legal liability.

 

In this case, the trademark registrant in question, Xu Jie, through a trademark exclusive license contract, used the exclusive license of the trademark in question by NISE Canada, which then signed a license agreement with NISE Beijing, which was responsible for the sale of "NISE" series of products in China. Secondly, Xu Jie is not only the chief representative of NISE Canada's Beijing representative office, but also the legal representative of NISE Beijing. Therefore, NISE Beijing has close ties with NISE Canada and the trademark involved. NISE Beijing is directly responsible for the sales and operation of "NISE" brand products in China. Thirdly, the authorization letter issued by Ness Beijing Company submitted by Tang Zhuying clearly states that Tang Zhuying is authorized to be responsible for the network-related operation and management of the company's beauty and skin care cosmetics products, while the beauty and skin care cosmetics owned by Ness Beijing Company obviously include the related products of the trademark involved. Finally, although Ness Beijing Company has issued relevant instructions denying that it authorized Tang Zhuying to operate the trademark-related products involved in the case, due to the interest relationship between Ness Beijing Company and NISE Canada Company, it cannot be excluded that the trademark involved in the case is also within the scope of authorization without fully explaining the specific brand matters authorized by Ness Beijing Company to Tang Zhuying.

 

At the same time, the civil judgment No. 14604, which has come into effect, states that the witness Wang mou was once the manager of naisi Beijing company and can be determined that Wang mou once worked in naisi Beijing company. Under the condition that witness Wang mou clearly stated that the alleged infringing goods involved in the case came from naise Beijing company and Tang zhouying and naise Beijing company had "power of attorney", combined with the fact that naise Beijing company operated the trademark products involved in the case, it is sufficient to prove that the alleged infringing goods sold by Tang zhouying came from naise Beijing company. Combined with the fact that there is a specific relationship between NIS Beijing Company and NISE Canada Company, it is not enough to determine the fact that the accused infringing goods involved in the case are the products that infringe the trademark involved. According to the standard of high degree of evidence, Tang Zhuying is not the producer of the accused infringing goods involved in the case, and the accused infringing goods sold by him cannot be identified as products that infringe the trademark involved in the case.

 

Based on the above analysis, the court of second instance corrected the judgment of first instance. (Tao Jun, Beijing Higher People's Court)

 

 

(Source: China Intellectual Property News)