With the increasing popularity of NFT products, there is a common problem in the current NFT industry that plagues companies: if cultural heritage and natural landscape are authorized by the management agency, can they directly cast NFT products? For example: A Natural Landscape Administration issues a letter of authorization to a company to authorize A company to use a series of trademarks, among which “XX Mountain” is the registered trademark of the management office, and “XX gift” and “XX culture” belong to the unregistered company A Trademark. In this case, what is the legal effect of the casting NFT? What are the legal risks?
Today, Sister Sa’s team will talk to you about this issue.
Authorize the use of registered trademarks of others
As the spiritual business card of an enterprise, trademarks play a role in distinguishing the origin of goods or services. According to Article 3 of the “Trademark Law”, trademarks can be divided into registered trademarks and unregistered trademarks, and trademarks approved for registration by the Trademark Office are registered trademarks, and the trademark registrant has the right to exclusive use of the trademark.
Authorizing the use of registered trademarks of others. In the above example, it refers to the trademarks of “XX Gift”, “XX Culture” and other trademarks authorized by Company A to be used by Company B and belong to the trademarks of Company C that are not parties to the contract and have been registered and are within the validity period.
Regarding the validity of the act of authorizing the use of another person’s registered trademark, the Civil Code does not provide for it. However, according to Article 646 of the Civil Code, if the law has provisions on other paid contracts, follow those provisions; if there is no provision, refer to it. The relevant provisions of the sales contract.
Since Company A is not the registrant of the trademark, it usually does not have the right to authorize others to use the trademark. The act of A company authorizing B company to use the trademark is similar to non-authorized disposal, and you can refer to the relevant non-authorized disposal provisions in the applicable sales contract.
Regarding the validity of the contract without the right to dispose of, before the “Civil Code” comes into effect, according to Article 51 of the Contract Law, a person without the right to dispose of another person’s property shall be obtained after the right holder ratifies or the person without the right to dispose of the contract concludes the contract. The contract shall be valid if the right to dispose of it. That is, the validity of the contract without the right to dispose of is yet to be determined. The “Civil Code” has made new regulations on this.
According to Article 597 of the Civil Code, if the ownership of the subject matter cannot be transferred because the seller has not obtained the right of disposal, the buyer can terminate the contract and request the seller to bear the liability for breach of contract, that is, the sales contract without the right of disposal is valid. With reference to the non-authorized disposal provisions in the sales contract, the contract authorizing others to use the registered trademark should also be a valid contract.
If the authorization contract is valid, can company B obtain the right to use trademarks such as “XX Culture” and “XX Gifts” according to the contract? This depends on two conditions. One is whether the authorization of company A can be ratified by company C, the trademark registrant, and the other is whether company A has entered into a contract with the trademark registrant, company C, to obtain the right to permit others to use the trademark. As long as any one of the two conditions is met, company B can obtain the right to use trademarks such as “XX Culture” and “XX Gifts” in accordance with the authorization contract with Enterprise A.
If both conditions are not fulfilled, the use of “XX Culture”, “XX Gifts” and other trademarks on similar products by Company B on the same product or in a way that may cause confusion on similar products falls under Article 57 of the “Trademark Law”. The infringement of the exclusive right to exclusive use of a registered trademark as stipulated in the Article shall, in addition to compensating for the loss of the infringed enterprise C, must also bear corresponding administrative and even criminal liabilities. In addition, the authorization act of A company also infringed the exclusive right of C company’s trademark, which is a trademark infringement.
Authorize the use of unregistered trademarks of others
In the above example, if the “XX gift” and “XX culture” that A company authorizes B company to use are not registered trademarks of others, is the authorization contract valid? Can company B use the trademark legally?
Validity of authorization contract
As far as the effectiveness of the authorization contract is concerned, many people may think that a trademark that can be licensed must be a registered trademark, and an unregistered trademark has no exclusive rights and cannot be licensed to others. However, according to the Supreme People’s Court (2012) Minshen Zi No. 1501 Retrial Ruling, the trademark licensing contract stipulates that the licensor will license the unregistered trademark to others based on the true intentions of both parties in the contract. There is no prohibition on the trademark license to others, and the contract should be a valid contract.
The case clarified that unregistered trademarks can also be used by others. Therefore, in the above example, the authorization contract between the A company and the B company is valid.
The legality of the use of unregistered trademarks
As far as the legality of company B’s use of the unregistered trademark is concerned, if “XX Gift” and “XX Culture” are trademarks similar to those already registered by others, then Company B will use the same product on the same product, or it may cause confusion The use of trademarks similar to others’ registered trademarks on similar goods in the same way is also an act of infringement of the exclusive right to use a registered trademark as stipulated in Article 57 of the “Trademark Law”.
Regarding the judgment standard of “similar”, according to Article 9 and Article 10 of the Supreme Court’s “Interpretation on Several Issues Concerning the Application of Law in Trial of Trademark Civil Disputes”, trademark similarity refers to the trademark accused of infringement and the registered trademark of the plaintiff. In comparison, the font, pronunciation, meaning or composition and color of the graphics, or the overall structure after the combination of their elements are similar, or their three-dimensional shape and color combination are similar, which may easily cause the relevant public to misunderstand the source of the goods or It is believed that its source has a specific connection with the goods whose trademarks are registered by the plaintiff.
The determination of trademark similarity shall be carried out in accordance with the following principles:
(1) Taking the general attention of the relevant public as the standard;
(2) Both the overall comparison of the trademark and the comparison of the main parts of the trademark must be carried out. The comparison should be carried out separately in a state where the comparison objects are isolated;
(3) To judge whether the trademarks are similar, the distinctiveness and popularity of the registered trademarks requested for protection shall be considered.
If “XX Gift” and “XX Culture” are not trademarks similar to the registered trademarks of others, the use of the unregistered trademark by Company B will be subject to certain legal protection, but it also faces legal risks.
The legal protections for the use of unregistered trademarks include:
(1) The owner of an unregistered trademark that has been used and has certain influence has the right to prohibit others from applying for or registering a trademark in accordance with Article 32 of the “Trademark Law”.
(2) The owner of a trademark that has been previously used and has a certain influence has the right to make a defense based on Article 59(3) of the “Trademark Law”.
(3) The user of the name, packaging or decoration of the product or service that has a certain impact has the right to prohibit others from committing confusing behavior based on Article 6 Item 1 of the Anti-Unfair Competition Law.
(4) The owner of an unregistered well-known trademark has the right to prohibit others from applying for or registering a trademark in accordance with paragraph 2 of Article 13 of the “Trademark Law”.
(5) The owner of an unregistered trademark has the right to prohibit certain related parties from applying for or registering a trademark based on Article 15 of the “Trademark Law”.
However, the use of unregistered trademarks also has legal risks that cannot be ignored. If a trademark used by an enterprise is not registered, the most fatal thing is that the user of the trademark does not have the right to exclusive use of the trademark. That is to say, if you use this trademark, others can also use this trademark, which affects the basic function of the trademark to indicate the source of goods or services, and also causes the trademark to represent the quality and reputation of certain goods or services. In addition, once others preemptively register the trademark, the first user of the trademark may not be able to continue to use the trademark. The lessons in this regard are quite profound.
Write at the end
“Trademarks are a weapon in commercial warfare and a pioneer in market development.”
When signing a trademark authorization contract between enterprises, whether it is a trademark licensor or an authorized person, it is necessary to fully understand the legal status of the target trademark. For a trademark licensor, authorizing the use of a registered trademark of another person is usually a trademark infringement.
Authorizing the use of unregistered trademarks also runs the risk of causing the termination of the contract and the need to bear partial liability for fault. For the authorized person, it is necessary to fully understand the legal status of the target trademark when signing a trademark authorization use contract, otherwise, they may bear huge commercial losses due to the use of the authorized trademark.
Posted by:CoinYuppie，Reprinted with attribution to:https://coinyuppie.com/can-big-ip-such-as-cultural-heritage-directly-cast-nft/
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