Professional IP team
Junlong law firm have been committed to the professional and extensive practice of intellectual property law, and have been striving to become a leading patent boutique firm in China.
We offer extensive experiences in all facets of intellectual property service, litigation and dispute resolution, portfolio management, due diligence, securing and maintaining worldwide IP rights, and worldwide intellectual property licensing.
Our intellectual property team includes 30+ experienced attorneys-at-law and patent attorneys, and 60+ skilled technical experts, focusing on telecommunication, customer electronic, semiconductor mechanical, and biomedicine.
Our goal is “Bridging IP Rights and Successful Business”.
If a registered trademark at issue is not actually put into commercial use, the infringer may be sentenced to cease the infringing behavior when the infringement is found to exist. However, when determining monetary liability for compensation, the Judge pointed out that consideration should be given to whether the mark at issue has been put into use. Generally, the plaintiff will be granted litigation costs, including the litigation fee and attorney fees. However, if it is not possible to determine actual losses or other damages, there will be no damage rewarded to the plaintiff. In particular, if the trademark owner has no intention of using the mark in commerce, but rather use it as a threat to get money illegally, no damage will be granted. If the registered trademark has ceased to be used for three consecutive years as stipulated in the trademark law, no compensation will be granted.
The damage award in the case where a registered trademark is not actually used is a complicated issue and needs to be addressed with caution. There is no one-fits-for-all resolution. In this case, the judge explained that not only the actual circumstances as to why it is not used should be carefully reviewed, but also how the judge’s decision may affect the future similar cases should be evaluated.
Lack of actual use certainly has impact on determining liability. The life of a trademark lies in its actual use. There can be no profit losses if the trademark at issue has not been used in commerce. In other words, if the registered trademark has not been actually used to engage in commercial activities, the registrant has no actual market share. The use of the mark by others can in no way damage the owner’s competitive interests or squeeze out the plaintiff’s market share. As a result, the defendant’s profits cannot be regarded as the plaintiff’s losses.
The intention of the registrant needs to be considered. If the registrant or assignee of a registered trademark has no intention of actual use, but simply used the registered trademark as a tool for profiting from litigation and other opportunistic tools, no compensation will be considered. This is particularly true for those marks which have not been used for three consecutive years.