Intellectual Property Infringement Risks and Preventive Measures of Cross-border E-commerce (Part 2)
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Author: Wang Hongyan Jin Pingxia


In recent years, with the globalization of trade continue to deepen As well as the in-depth development of the "One Belt One Road", my country's cross-border e-commerce business has developed rapidly. At the same time, the fast-growing cross-border e-commerce industry has also brought new challenges to the issues of how the laws of various countries regulate emerging transaction models and protect the relevant rights of domestic operators. Although my country promulgated the "E-Commerce Law" and other relevant laws and policies to regulate cross-border e-commerce business in 2018, the differences in regional culture and the regional nature of intellectual property rights have led to foreign companies suing China for infringement of cross-border e-commerce Incidents emerge in an endless stream, making my country's cross-border e-commerce companies repeatedly be troubled by intellectual property rights infringement disputes during the trade process.

In addition to the same "direct infringement" behaviors mentioned in the previous article as the intellectual property disputes in the domestic trade field, there are also intellectual property disputes in the field of cross-border e-commerce Another type of dispute—"infringement caused by cross-border legal rights", that is, parallel import, refers to cross-border telecoms without the consent or permission of the legal intellectual property right holder of the importing country. Commercial enterprises sell the products they obtained from legal channels to the importing country, thus causing the infringement of the rights of intellectual property owners in the importing country.

1. Parallel import infringement risks and countermeasures

(1) Parallel import infringement risk

As mentioned above, in cross-border e-commerce business activities, there is a special type of infringement of intellectual property rights. The products sold are neither counterfeit products nor smuggled products, but only to a certain extent break the geographical control ability of trademark owners and authorized distributors on the sale of goods. [1] is due to parallelism. Intellectual property disputes caused by import activities. Since all countries generally recognize that patent rights have the characteristic of "one-time exhaustion", such intellectual property disputes generally refer to trademark infringement.

The so-called "Parallel Import" is not a purely legal concept, and many countries have different opinions on this. According to the "What are Parallel Imports" published by the International Trademark Association and the judgment of the Intermediate People’s Court of Hangzhou City, Zhejiang Province (2016) Zhejiang 01 Minzhong No. 2178, we believe that parallel import refers to two or more of the same trademark. The countries and regions in the country are legally protected. Without the consent of the trademark owner, the importer will sell the products on the market in other countries or regions by the right owner or with his consent to the intellectual property owner or exclusive licensee’s country or region. import. This behavior has the following characteristics: 1. Parallel imported goods are branded products produced by the trademark owner or authorized by the trademark owner in the exporting country; 2. The trademark rights of the parallel imported goods in the importing country are owned by the same owner; 3. Parallel imported goods are customized and packaged for sale in the exporting country, not products produced for sale in the importing country, and the import of the goods has not been approved by the trademark owner; 4. Parallel imported goods are imported through legal channels Non-smuggling entry. [2]

For now, except for the Beijing Higher People’s Court’s "Several Legal Issues Need to Pay Attention in Current Intellectual Property Trials" "The issue of trademark rights" made "If the alleged infringing goods actually originate from the trademark owner or its authorized subject, at this time the trademark owner has realized the commercial value of the trademark in the'first' sale, and cannot stop others from doing so." The second “sales or reasonable commercial marketing, otherwise it will hinder the process of establishing a normal free competition order in the market. Therefore, “parallel import" should be accepted by the judicial system and should not constitute an infringement of trademark rights. The Law and the Supreme People’s Court’s Opinions on Providing Judicial Protection for the Construction of Pilot Free Trade Zones do not make clear provisions on the issue of parallel import of trademarks. There are also different opinions in the academic circles. Disputes are everywhere. With the deepening of understanding of the issue of trademark parallel importation, a relatively unified view has been formed in judicial practice. It is believed that based on the principle of exhaustion of trademark rights, parallel importation can be considered legal under normal circumstances, but if it damages the trademark If the trademark source identification function, quality assurance function, trademark reputation function of is beyond a certain reasonable range, it can be determined as trademark infringement.

Take the case of trademark infringement disputes between Dawang Paper Co., Ltd., Dawang (Nantong) Daily Products Co., Ltd. and Hangzhou Junao Trading Co., Ltd. as an example. In this case, Junao Company and Dawang Paper Co., Ltd. both enjoyed legal trademark rights in China and Japan. Among them, Dawang Paper Co., Ltd. authorized the trademark rights of "GOO.N" that it enjoyed in my country to Dawang Nantong. The company authorizes it to be the sole importer and sole general agent of "GOO.N" brand household paper products (including diapers) in mainland China. However, Junao Company imported the "GOO.N" diapers produced by Daio Paper Co., Ltd. in Japan into China through parallel imports, which triggered a dispute in this case. After the trial, the court held that the parallel-imported diapers had no substantial differences with the products sold by Dawang (Nantong) Daily Products Co., Ltd. in terms of product identification, packaging, and quality, and did not cause damage to goodwill, and Junao Company was able to provide Evidence proved that the legal route of imported products and the publicity did not harm the rights and interests of Dawang (Nantong) Daily Products Co., Ltd., so it was determined that the defendant did not constitute trademark infringement. After that, in the "Shanghai First Parallel Import Case of Luxury Goods", the Shanghai Pudong New Area People’s Court Free Trade Zone Intellectual Property Court also rejected the 1 million yuan claim by the plaintiff Fendi Adler Co., Ltd. on the same grounds. Claims for infringement losses. Both of the above two cases applied the principle of exhaustion of trademark rights, and on the basis of fully considering the function of the trademark involved and the undamaged goodwill, the legality of parallel imported products was recognized. However, in contrast to the first case of parallel imports in my country-the Michelin tire case and the "Prada case", the imported products either did not meet the compulsory provisions of the Chinese law, affected the trademark function, or caused the trademark goodwill It has an impact, even if it can prove that the entry channel is legal, it ultimately failed to escape the outcome of being determined by the court as a trademark infringement.

(2) Response to Parallel Import Infringement

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Although China’s judicial practice has conditionally recognized the legality of parallel imported products, for cross-border e-commerce companies, they still need to be highly vigilant when conducting business activities. The possible risks of trademark infringement are to prevent and control legal risks with "internal and external repairs".

From the perspective of "internal repair", first, when cross-border e-commerce companies purchase overseas, they should purchase products through formal sales channels, for example, from trademark owners or their legally authorized distributors , Purchase through large shopping malls, supermarkets or trade fairs to ensure the legality of the source of goods.

Secondly, confirm and verify that the trademark owner in the exporting country is consistent with the trademark owner in the importing country to avoid losing the right to claim trademark rights Prerequisites. As mentioned above, the right holders of the trademark rights of parallel imported goods in the importing country and exporting country are the same right holder. It is one of the four major characteristics of parallel import and also constitutes the basis of parallel import rights. If the original If the trademark owners are inconsistent, the import and sales behavior of cross-border e-commerce becomes a common trademark infringement and cannot be defended by parallel imports.

Again, in accordance with relevant Chinese laws and regulations, complete customs, tax and other related procedures as required to ensure that import customs clearance procedures are legal and compliant, and keep Good corresponding credentials.

Fourth, in addition to my country’s mandatory legal requirements, cross-border e-commerce companies should do their best to maintain the original For valid information such as logos, packaging, and identification codes, do not destroy the identification function of the trademark and the corresponding relationship with the product, causing consumer misunderstanding or confusion.

Finally, fully respect the rights of domestic trademark owners, and clearly indicate the source of the goods sold, possible differences, and the The difference between domestic products is to distinguish the sources of the same products from different channels, so as to prevent consumers from confusing or degrading the quality and reputation of different sources of products. For example, the interface of selling products clearly indicates "parallel import" and so on.

From the perspective of "external training", as an importer, when cross-border e-commerce encounters a parallel import trademark infringement dispute, it can defend itself through the following three aspects according to the specific circumstances: , The products sold have not been changed, the correspondence between the products sold and the trademark has not been destroyed, the identification function of the trademark has not been damaged, and will not cause consumer confusion. Second, to prove that the source of the product received is legal, and there is no substantial difference in quality from the product sold by the right holder in China, and the quality assurance function and goodwill of the trademark have not been harmed. Third, the company has fulfilled the legal customs clearance procedures when importing the accused product, and the way the product enters the domestic market has not violated the law. As a domestic right holder, when a cross-border e-commerce company protects its rights, it can prove that there is a clear distinction between the products sold by itself and the products sold by the domestic right holder, the accused product is substantially different from the right holder’s product, and the accused act caused the right holder The substantive damage of trademark rights and other aspects were launched to demonstrate the establishment of trademark infringement.

Second. Summary

The globalization of trade provides fertile ground for the germination of cross-border e-commerce, and the proposal of the “Belt and Road" initiative has given rise to the rapid development of cross-border e-commerce With the wings of China, cross-border e-commerce trade activities will become more and more active and common. However, whether it is an import e-commerce company or an export e-commerce company, a domestic company or an overseas company, intellectual property defense and defense are always one of the important tasks for companies to carry out cross-border e-commerce trade activities. Companies should increase their awareness of intellectual property protection, deploy intellectual property with a global perspective, do a good job in intellectual property risk investigation, and actively face intellectual property disputes in cross-border e-commerce trade activities to promote the development of the cross-border e-commerce environment Optimize and promote the sustainable and healthy development of cross-border e-commerce trade.

[Note]

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[1]"Analysis of Trademark Rights Issues in Cross-border E-commerce Parallel Imports ": https://mp.weixin.qq.com/s?src=11×tamp=1604080150&ver=2676&signature=igyNdCzk0R4h4Dwr*zhs55xYen--D3kGkFuIuqy7A-kQOyVqiJWdpYyfbsmL3-sSkNSA2WpZarJU3Rcz4x6oBU*FGISahxmgLFo7DuHGvT4HqpBW-jZ79G76VNtiav2K&new=1, last accessed October 2020 31st.

[2] Cui Chunhua: "Trademark Infringement Risk Analysis of Cross-border E-commerce Retail and "Parallel Import" Products", https://mp.weixin.qq .com/s?src=11×tamp=1604080971&ver=2676&signature=8ZlEi9i2b3wGe0t7aywsOBhZE0zABlGUJnKwkLrpooIFlnpXYgPAEe0*79Sh21uPype3j7xHZxF7RkUnKUnoTI8tf9M5, last visit on May 31, 2020MIDAE0*79Sh21uPype3j7xHZxF7Rk2InoTI8tf9MMA, May 31, 2020, May 5, 2020, 4, 5, 4, and 4, 2020, MI, Yu, HZxF7, R,,,, and,,,,,,,,,,,,,,,,,,,,,,,,,,, and,,,,,,, and,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,;


Related reading:

Risk of intellectual property rights infringement of cross-border e-commerce and preventive measures (part 1)

https ://www.toutiao.com/i6895612062580343303/


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