Viewpoint... A brief analysis of the conflict between the term of trademark license and the term of trademark rights.
Published:
2023-12-11
The use of the trademark license exceeds the term of the trademark right, and the trademark owner renews the trademark. Whether the license is valid has been a controversial issue. The purpose of this paper is to analyze the problem one by one by discussing the legal provisions and related cases.
The use of the trademark license exceeds the term of the trademark right, and the trademark owner renews the trademark. Whether the license is valid has been a controversial issue. The purpose of this paper is to analyze the problem one by one by discussing the legal provisions and related cases.
1. legal provisions
According to the provisions of Article 43 of the Trademark Law, trademark users may license others to use their registered trademarks as needed. When licensing, they shall abide by the relevant provisions of the Trademark Law. After the trademark owner's permission, they shall obtain a license certificate for the use of the trademark through a written format license contract. And file with the administrative department for industry and commerce. Under normal circumstances, the period of trademark license shall not exceed the validity period of the trademark registration certificate. It can be seen that the trademark license period shall not exceed the validity period of the trademark registration certificate. Articles 39 and 40 of the Trademark Law stipulate that the validity period of a trademark is 10 years from the date of registration. Before the expiration of the validity period, the trademark registrant may apply for renewal. Trademark renewal is an important way to extend the term of trademark registration rights and an important means for trademark owners to safeguard their rights and interests. Therefore, the term of the trademark license exceeds the validity period of the trademark registration certificate, and whether the license is still valid after the renewal of the trademark needs to be analyzed and judged according to the specific situation.
2. case analysis
1. Dispute over Trademark License Contract between Fuzhou A Co., Ltd. and Fujian B Electric Appliance Co., Ltd.
Fuzhou A Co., Ltd. and Fujian B Electric Appliance Co., Ltd. have signed a trademark license contract, and Fujian B Electric Appliance Co., Ltd. uses the "YIDA" trademark to produce and sell products. However, when the trademark registration expires and is successfully renewed, Fujian B Electric Co., Ltd. claims that the aforementioned trademark license is invalid. However, the court held that in this case, the trademark license contract signed by the parties did not clearly stipulate the time limit, and did not involve the issue of the validity period of the trademark registration certificate. At the same time, the trademark owner has successfully renewed the trademark, which complies with the relevant provisions of the Trademark Law. Therefore, the trademark license contract is still valid after the trademark renewal.
2. A Cosmetics Co., Ltd. in Paris, France and a Trade Co., Ltd. in Guangzhou sued for trademarks.
In this case, the parties signed an agreement on the transfer of the right to use the trademark. Before the expiration of the trademark validity period, the two parties also agreed that "if Party A does not apply for the renewal of trademark registration before the expiration of the trademark registration validity period, this agreement shall be invalidated." However, when the validity of the trademark expired, a trading company in Guangzhou requested to revoke the right to use the trademark license, believing that the trademark right had expired. The court pointed out that the agreement in the trademark use right transfer agreement is only an agreement made before the expiration of the trademark right and cannot cause any interference to the exercise of the trademark right. Therefore, the trademark license contract is still valid after the trademark renewal.
3. to avoid trademark licensing issues
In order to avoid the term of the trademark license exceeding the validity period of the trademark registration certificate, the trademark owner and the licensor shall specify the term agreement in the trademark license contract, so as to avoid the occurrence of the term exceeding and disputes. In addition, trademark renewal is also an important means for trademark owners to safeguard their rights and interests. Trademark owners can discuss with the licensors on the renewal of trademark registration and licensing issues, reach a unified opinion and formulate a reasonable plan.
When signing a trademark license contract, the trademark owner needs to consider the possibility of future trademark renewal, and properly plan the related matters of trademark renewal to avoid similar disputes.
The validity period of the trademark registration certificate is the basis of the term of the trademark license contract, and the term of the trademark license shall not exceed the validity period of the trademark registration certificate. In the case that the trademark license period exceeds the validity period of the trademark registration certificate and the trademark owner renews the trademark, the trademark license contract is still valid. Trademark renewal is an important way to extend the term of trademark registration rights, and trademark owners and licensees should specify the term of the trademark license contract in order to properly handle the relevant issues.
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