Introduction: island Coffee has originated from Taiwan and become fashionable for a time with its bourgeois sentiment in the word, which won great favor to pursue the fashion taste of life people. However, around the island of trademark, intellectual property protection details of neglect, brewing on the later reign of terror disputes.

I.The current legal provisions
China’s current “Copyright Law” Article 24 (a) provides that “the use of others’ works shall conclude a licensing contract with the copyright owner, this law can not, except by permission.”
As can be seen from the above provisions, the use of others’ works should conclude a contract with the copyright owner, it is crucial to keep written evidence.

II.Case review
In 1986, Chen Wenmin registered “on the island and the map” trademark in Taiwan. In 1997, Chen Wenmin came to the mainland, together with several other Taiwanese businessmen on the preparations for the establishment of Hainan Island Company (Shanghai on the island’s predecessor). During the preparations for the company, for the establishment of corporate identity, Johannes provides pattern “on the island and the map”. The company decided to invest in one person A has a company in Tianjin Kwong Tai International Trade Co., Ltd. (referred to as wide-Thai company) registered in the name “on the island and the map” trademark, after then transferred to the new company.
In the same year, the same company logo and Chen Wenmin registered in Taiwan “on the island and the map” trademark application for registration of a trademark with the Trademark Office, after being approved for registration (No. 1,207,183, Class 30).
In 1998, the company was founded on the island of Hainan, competent chairman Chang Yu, Johannes president. In 1999, approved a wide-Thai company will be “on the island and the map” trademark transferred to the company on the island of Hainan.
On July 29, 2000, the company held a board meeting on the island of Hainan, decided to transfer to the company headquarters in Shanghai. On the same day also signed the “UCC registered trademark transfer agreement”, states: “On the island of Hainan’s original trademark registration, the registration is completed after the Shanghai company, unconditionally transferred to the Shanghai company.” Johannes signed consent. The following year, the Shanghai Company was established on the island.
In 2001, Johannes quit Shanghai Company on the island, and incorporated the company on the island of Hangzhou in Hangzhou. In 2003, Johannes and Hangzhou on the island signed a license agreement, the license on the island of Hangzhou companies use “pattern on the island,” art works, and to ensure that no right to license the use of “pattern on the island,” the grant to any third party.
In 2002, approved by the Trademark Office, on the island of Hainan, the company will “on the island and the map” a registered trademark of the company transferred to Shanghai Shangdao Company.
In February 2003, Shanghai, Hangzhou Industrial and Commercial Bureau on the island to report on the island told Hangzhou trademark infringement. Johannes and Hangzhou on the island to be outdone, on the one hand bring a lawsuit to the Shanghai Second Intermediate People’s Court that Shanghai on the island will be “on the island pattern” as a trademark, infringes on the island’s Hangzhou and Johannes copyright. Meanwhile, the Shanghai company transferee on the island by the Thai company wide application for registration No. 1207183 “on the island and the map” trademark (referred to as the disputed trademark) made an application to withdraw the judges.
Shanghai Second Intermediate Court found that the company and Johannes Hangzhou on the island called “pattern on the island” art works have been registered as a trademark and the transfer, without the permission of the copyright owner Johannes argument, did not get the appropriate supporting evidence. Johannes fully understands the “pattern on the island,” Art has been used for the first 30 categories of goods trademark registration, also agreed to the transfer of the relevant registered trademark of the company on the island to Shanghai. It is determined that Shanghai on the island did not violate their copyright.
However, the judges have a different attitude, it ruled that: According to the relevant provisions of copyright law, permission to use the copyright belongs to type legal acts, the use of others’ works shall be subject to the express permission of the copyright owner, and entered into a licensing contract with the copyright owner. Shanghai company on the island, said Johannes known trademark registration process in dispute, but did not submit copyright licensing contract “on the island and the map” original registrant wide trademark and copyright holders Johannes Thai company entered into, or Johannes Chan Kwong Tai explicit permission the company will it work “on the island and the map” pattern written authorization application for trademark registration documents or other evidence to prove that Johannes authorized registered. Thai companies can be found widely in the case of unauthorized, unauthorized copyrighted prior to Johannes “on the island and figure” logo design application for trademark registration, their behavior violated the rights of Johannes earlier enjoyed. According to the provisions of Article 31 of the Trademark Law, revoked by the broad Thai company registered “on the island and the map” trademark.
Shanghai company on the island refused to accept within the statutory time limit Beijing First Intermediate People’s Court administrative proceedings. Since then, the Beijing Intermediate Court and the High Court has made a completely different decision.

Beijing Intermediate Court held that although Article 24 of the Copyright Law, the use of others’ works shall conclude a licensing contract with the copyright owner. But it does not follow, there is no written contract, to deny the existence of licensed legal relations. Canton Thai company on the island of Hainan after the company was founded on the island of Hainan trademark transferred to the company, but also the trademark unconditionally transferred to Shanghai company on the island, Johannes Chan as general manager of the company on the island of Hainan, director conference participants as well as trademark the transfer of beneficiaries, it is not only aware of the fact that the transfer of the disputed trademark, but also actively contributed to the use and transfer of the trademark dispute, which can prove a registered trademark dispute has been recognized by Johannes Chan, Johannes Chan no damage prior rights enjoyed. For the recognition of trademark acts, necessarily implies a trademark registration for the behavior before ratification. No. 1,207,183 to maintain the final decision “on the island and the map” trademark continue to be valid.
Trademark Review and Adjudication Board, Hangzhou and Johannes were on the island’s first instance verdict, the supreme Court of Appeal respectively.

Supreme Court considers: the case that the focus of controversy in 1997 when the Thai company wide application for registration of a trademark dispute whether the prior consent of the license Johannes. In the present case, both the trademark review process or proceedings, although the Shanghai company on the island, a lot of the evidence submitted to the Trademark Review and Adjudication Board and the Court of First Instance To prove Johannes registered trademark dispute and transfer of known and recognized. However, just in case the most critical of the fact that the company is in advance Guangtai get “on the island and the map” trademark application Johannes himself expressly authorized implemented after registration behavior could not be confirmed, but can prove are “on the island and map “is a registered trademark of Johannes after the transfer and use of the trademark meaning representation. In the July 29, 2000 shareholders’ meeting on the island of Hainan Johannes Chan agreed to unconditionally transfer to Shanghai UBC registered trademark of the company on the island, it can be presumed Johannes later learned their works have been registered as a trademark, and not expressed opposition, but to win the license can not be considered in advance when Johannes-Thai company to apply for trademark registration disputes. Existing evidence suggests that when the Thai company wide application for registration did not win Johannes disputed trademark license, a violation of copyright Johannes Chan, the illicit nature of their behavior. July 29, 2000 Johannes that their work is to apply for registration as a trademark is not expressed opposition to the views expressed on the meaning Johannes Chan has no legal binding force. After the two sides dispute, Johannes Chan on April 22, 2003 for the revocation of a trademark dispute within the statutory period of limitation of actions, Trademark Review and Adjudication Board shall hear and revoke the trademark dispute was not inappropriate. Shanghai company on the island to Johannes violation of good faith, estoppels grounds of defense, the Court will not support.

On the surface of Hangzhou on the island won a temporary victory, but two of the fight is far from over. When the trademark copyright encounter, how to balance the trade-offs, leaving it much thought.

III The analysis and summary
The author believes that the seemingly complex case can in fact be simplified. Article 46 in China’s “Civil Law” states that the “who advocates, who the burden of proof,” the burden of proof principle. Author “on the island and the map” Johannes assert its ownership of the copyright in the work, the existing evidence can also be proved. Shanghai on the island to claim their registration “on the island and the map” trademark consent of the author Johannes consent, it bears responsibility for the corresponding evidence. According to the original “Copyright Law” Article 23 states: “It should be made with the use of others’ works contract or permission of the copyright owner, this law cannot, except by permission.” On the “permission”, should not be simply interpreted as long as the two sides had been in contact, the authors hope that the desire to use the other side “has made a license” unless the author’s intention is very clear. Furthermore, the two sides did not explicitly use the work methods, scope, period, remuneration standards, laws and other copyright licensing content under contract in the most basic premise licensing contract shall be deemed to have not yet established.
2001 amendments to the Copyright Act after licensed use of the specification, Article 24 (a) provides that “the use of others’ works shall conclude a licensing contract with the copyright owner, this law can not, except by permission.” the new law removed the original copyright law “permission” provisions expressly required to sign a licensing contract.

Lessons on the island dispute is painful, huge losses of intellectual property protection resulting from neglect details, we can only pay by negligence party.

Meanwhile, on the island dispute also gives the spectator a vivid lesson.
As a party to the copyright owner, the licensing process works should be careful to whom. If you pay attention to protect their work is likely to become a foregone conclusion and others. In his work permit others to use, the value should not only immediate, but should be signed by paid flexible, sustainable development of contracts to maximize the protection of their own interests.
As the user side, to obtain permission to use the works of others but cannot effect, or only do awake for others. Written license contract is indispensable to carry out the details of the contract should also be strict control, cannot be taken lightly.

 

Author:BOB IP Registration Division Yao Xiaoqing

Sep 28th,2014