In dealing with trademark practice, we often encounter the phenomenon of trademark co-ownership, and we are often asked: can trademarks be co owned? Do trademark applications have to be a single entity, and do we have multiple individuals or two or more enterprises jointly apply for a trademark? The answer is certainly yes. Trademarks can be independently applied for by a single entity, or jointly applied for by multiple entities, and can be shared like tangible objects. A trademark itself is a symbol used in commercial activities to distinguish the source of goods or services, and a business activity can be independently completed by a single market entity or jointly completed by multiple market entities, jointly operating and sharing labor achievements; In reality, business activities are often completed through cooperation among multiple people, especially family business activities, individual business activities, and partnership business activities. The goodwill assets formed by the use of a trademark as a common labor result can also be jointly applied for and enjoyed by multiple entities.

Furthermore, trademark rights are both private and property rights, and in terms of the type of rights, they are also property rights, which can be enjoyed independently or jointly owned by two or more people. Article 5 of the Trademark Law clearly stipulates that two or more natural persons, legal persons, or other organizations may jointly apply to the Trademark Office for the registration of the same trademark, and jointly enjoy and exercise the exclusive right to use the trademark.

Due to the diversity of practical business forms and the complexity of cooperative operation, the ownership of trademarks belongs to the collective ownership of everyone. The ownership of trademarks should not have been agreed upon in advance, or the agreement is unclear, or due to weak awareness of trademarks, trademark rights can be divided into property. Disputes often arise in the ownership, use, transfer, and disposal of shared trademarks, which is much more complex to handle than a single subject trademark, There is a significant difference in opinion between the two parties, and the multiple procedures that need to be gone through can also have a significant impact on their business operations. To avoid such disputes, it is recommended to agree on the ownership, use, revenue, disposal, and other matters of the trademark at the beginning of the cooperation. As trademark rights belong to private rights, the law respects the agreement of the parties, and the agreement takes precedence. There is no agreement that once the trademark is registered by one party or others, It is necessary to solve the problems of trademark ownership, use, profits, and disposal in accordance with the relevant provisions of the Trademark Law and Civil Code. The solution is very complicated, and the procedural time is also long, often laboring and exhausting.

This article will combine cases that have occurred in economic life to sort out relevant legal viewpoints, providing reference for trademark owners who have already unilaterally or jointly owned trademarks to handle disputes in cooperation.

Case One

The trademark ownership case of the "Tujia people" (Supreme Court ruling 2010 Minjian Zi No. 407) stipulates that the ownership of the trademark is agreed upon in the cooperation, and the law determines the trademark ownership according to the agreement.

The case clearly states that trademark ownership disputes belong to civil disputes, and the court has the authority to accept and hear this case in accordance with the Civil Procedure Law. In this case, there is evidence such as a signed "Production and Marketing Responsibility Agreement" between the plaintiff and the defendant, which stipulates the ownership of the trademark No. 3006185 involved, so the trademark rights belong to the defendant Xiangxi Company.

Case Two

The "TMT" trademark ownership dispute case has formed a trust fact that belongs to the entrusting party, and the law should respect it (Supreme Court (1998) Zhizhong Zi No. 8 Judgment)

The plaintiff's affiliated company entrusted the defendant to process and export the TMT and other products involved in the case, and requested the defendant to register the relevant trademarks in China. There is evidence in this case to prove that the trademark in question was registered in China by the defendant Light Industry Company based on the commission and request of the outsider Dongming Company. The defendant Light Industry Company is the nominal registrant of the trademark in question, and the plaintiff is the substantive trademark owner of the trademark in question. If the defendant requests to seize the plaintiff's exported products, the plaintiff has the right to return them to the plaintiff in accordance with the relevant provisions of the General Principles of Civil Law. The subsequent disputes arising shall not affect the plaintiff's determination of the right to claim the return of the involved trademark in accordance with the factual agreement.

Case Three

In the dispute over the "Mingqu" case, there is an agreement on the ownership of the trademark in the cooperation, and the law should respect the agreement on the ownership of the trademark (Supreme Court (2019) Minshen Decision No. 3915)

In this case, Guo, Li, and Zhou agreed at the beginning of their partnership to register the "Mingqu" trademark No. 7098601 in the name of Zhou. The three parties are the trademark holders, sharing rights and obligations, risks, and profits. Zhou transferred the trademark to an outsider, Xinxiang Mingren Company, without the consent of Guo and Li. The retrial court clearly stated that the "Agreement" involved in the case reflects the true intention of the parties The second instance court should first determine the ownership of the trademark in accordance with the provisions of the "Agreement", and then determine the transfer effectiveness of Zhou's unauthorized transfer to the outsider Xinxiang Mingren Company without the consent of Guo and Li based on the case, and whether the transfer of Xinxiang Mingren Company constitutes a good faith acquisition.

Case Four

In the "Tian Ba" case (Supreme Court (2015) Minshenzi No. 3640 ruling), co owners have the right to license the common trademark to others through ordinary licensing.

In this case, Zhang and Zhu jointly established Kefeng Company. In the bankruptcy liquidation of the company, it was agreed that the "Tianba" trademark registered by Kefeng Company was jointly owned by Zhang and Zhu. Later, Zhu licensed the "Tianba" to the Tianba Company operated by Zhu without Zhang's consent. Zhang claims that Zhu and Tianba Company constitute joint infringement. The viewpoint of the Supreme Court's retrial: Trademark rights are a private right, and in the case of joint ownership of trademark rights, the rules for exercising their rights should follow the principle of autonomy of the rights holders, and be exercised by the joint owners through consultation and consensus; If consensus cannot be reached through consultation and there is no legitimate reason, no co-owner shall prevent other co-owners from licensing others to use it in an ordinary manner. According to this viewpoint, Zhu has the right to separately license the use of Tianba Company without the consent of the co owner Zhou, and therefore Tianba Company does not constitute trademark infringement. The viewpoint of this case follows the principles of management, use, and disposal of shared property in the Civil Code, and the exercise of shared copyright in intellectual property also follows these rules in copyright law.

Case Five

The trademark applied for by the partners in the "Dragon Brother" case (Guizhou High Court (2006) Qiangaomin Erzhong Zi No. 39 judgment) belongs to the joint property of the partnership and can be transferred together with the shares of the partnership property.

In this case, the plaintiff and defendant jointly organized a hotel. During the preparation period, all partners authorized Huang to apply for the registration of the "Dragon Brother" trademark on their behalf and agreed that Huang would withdraw 2200 yuan from the partnership funds to pay the trademark registration fee. The Trademark Office accepted the registration application for the trademark, and the court determined that "Dragon Brother" belonged to the joint property of all partners. Later, due to hotel management issues, multiple partners withdrew, and Yi Huang and other partners transferred their partnership shares to Li for independent operation after Li paid the consideration. Li changed the "Dragon Brother" trademark to his own name. Huang and other plaintiffs believed that the hotel transfer did not involve the disposal of the "Dragon Brother" trademark, and their application rights still belong to all partners of Huang. The court of second instance held that Huang and other partners should exercise necessary care in the scope of their shares when transferring the transferred shares. Unless otherwise agreed, upon receiving the consideration paid by the transferee, all rights and obligations of the transferor in the partnership are transferred to the transferee, and they no longer have any rights in the partnership, including tangible and intangible property rights. In this case, when Huang and all other partners transferred their shares held in Dragon Brother Hotel to Li for compensation, there was no special agreement. Therefore, the transfer should be all the rights enjoyed by Dragon Brother Restaurant, including the right to apply for the "Dragon Brother" trademark. It was determined that Li had the right to apply for the "Dragon Brother" registered trademark.

Case Six

The "Fool" Guazi Case (Anhui High Court (2002) Anhui Min Er Zhong No. 12 Judgment) independently registered trademarks can be transferred to be jointly owned and used, and co owners should comply with the rules of common ownership.

On August 4, 2000, a tripartite agreement was signed between Nianzi, Foolish Factory, and Foolish Company, stipulating that the Foolish Factory and Foolish Company would acquire the "Foolish" registered trademark from Nianzi, and the Foolish Company would be responsible for handling the trademark transfer procedures. The Foolish Factory would be allowed to enjoy the long-term joint ownership of the "Foolish" registered trademark for free, and the Foolish Company would file the record with the competent authority, After being transferred by Foolish Company, the trademark involved in the case promises to be filed. Later, Foolish Company denied the trademark use rights of Foolish General Factory, and Foolish General Factory filed a lawsuit to claim the joint use rights of the trademark involved in the case. The court of second instance determined that the exclusive right of the trademark in question occurred during the transfer process of the registered trademark, not during the application process, and that it is "prohibited by law and not illegal". The "Registered Trademark Transfer Agreement" complies with the provisions of the Trademark Law and Contract Law at that time, and the registered trademark exclusive rights of the involved trademark are jointly owned, which is the true expression of the intentions of the three parties. The trademark right is a civil right that does not violate the prohibitive provisions of the original Trademark Law and its implementation rules, nor does it harm the interests of others and the public. From the perspective of civil law principles, two or more subjects should be allowed to jointly enjoy the same trademark right; Providing an agreement is not only a private law act, but also an appropriate law act under the principle of party autonomy. Therefore, this agreement is not illegal and should be valid.

Case Seven

The case of "Haodeli" trademark (Supreme Court 2010 Minshenzi No. 976) is a joint trademark formed by a partnership. After withdrawing from the partnership, the partners can request the division of the rights and interests of the joint trademark.

In this case, the plaintiff and defendant acquired the processing factory of an outsider and the trademark still under application through transfer. After the approval of the "Haodeli" trademark, it was continuously used by the processing factory (Tang) operated by the plaintiff and defendant Zhou Ying and Tang Jianying. After being approved by the Trademark Office on December 7, 2000, the processing factory jointly funded by the plaintiff and defendant used the trademark in question. It is determined that the defendant Zhou Ying and Tang Jianying jointly owned the trademark involved in the case. The plaintiff Zhou Ying's lawsuit request in the first instance of this case is to confirm that both parties have the exclusive right to use the "Haodeli" trademark. However, considering that the partnership between the two parties has been terminated and that Zhou Ying has also engaged in the same type of clean vegetable processing after leaving the processing plant (soup), if the involved commercial trademark is not divided, it will still be determined that it is jointly enjoyed by Zhou Ying and Tang Jianying, which will lead to confusion between the source of goods and the operating entity, Unable to achieve the function of trademark indicating the source of goods. Therefore, in this case, it is not appropriate to classify the "Haodeli" trademark as jointly owned by both parties, and instead, it should be divided and processed. Considering that the "Haodeli" trademark has been in actual use by Tang Jianying since Zhou Ying left the processing plant (Tang), and Zhou Ying also agreed to assign the registered trademark to Tang Jianying personally in the second instance, therefore, when dividing the trademark in question, the "Haodeli" trademark should be assigned to Tang Jianying personally. The value portion of the trademark involved that Zhou Ying deserves will be compensated by Tang Jianying at a fixed price. As an intangible asset, the growth of trademark value mainly relies on long-term use and diligent cultivation. Although Zhou Ying is the co owner of the "Haodelai" trademark, she has not used the trademark since leaving the processing plant (Tang) on August 5, 2001. The trademark has been actively cultivated and promoted by Tang Jianying, and due to Tang Jianying's long-term use and hard cultivation, the commercial value of the trademark has been greatly improved. Therefore, when determining the amount of compensation for the valuation of the "Haodeli" trademark, it should be based on the trademark value of 410000 yuan when Zhou Ying left the processing plant on August 5, 2001, taking into account Tang Jianying's main contributions in the process of enhancing the intangible assets of the trademark involved, and Zhou Ying's remaining co owner of the trademark until the dispute over the trademark involved is resolved. Tang Jianying is determined to compensate Zhou Ying with a valuation of 420000 yuan. Although the partnership between the two parties was dissolved on August 5, 2001, the exclusive right to use the trademark in question should still be jointly owned by both parties before it was disposed of as partnership property. Zhou Ying is still the joint owner of the trademark. Therefore, without Zhou Ying's consent, Tang Jianying arbitrarily used the processing factory (Tang) as the transferor and his personal transferee to transfer the "Haodeli" trademark, which has certain flaws. However, as mentioned earlier, if Zhou Ying and Tang Jianying jointly enjoy the exclusive right to use the "Haodeli" trademark, it will cause confusion between the source of goods and the operating entity; Moreover, Tang Jianying used the trademark in question for a long time after Zhou Ying left the processing plant, but Zhou Ying personally never used it; Zhou Ying also agreed to attribute the trademark in question to Tang Jianying's personal ownership, and has finally confirmed that the "Haodelei" trademark will be attributed to Tang Jianying. Tang Jianying will pay Zhou Ying 420000 yuan as compensation, thus confirming that Tang Jianying's transfer of the "Haodelei" trademark is ineffective and unnecessary. In summary, the judgment of the Higher People's Court of Jiangsu Province: 1. Revoke the civil judgment of Suzhou Intermediate People's Court (2004) Su Zhong Min San Chu Zi No. 0110; 2、 The registered trademark of "Haodelai" in the case belongs to Tang Jianying personally; 3、 Tang Jianying shall pay Zhou Ying RMB 420000 within ten days from the effective date of this judgment.

Our court believes that the value of a trademark is mainly reflected in its popularity and the goodwill it carries, while popularity and goodwill mainly stem from the continuous use, promotion, and cultivation of the trademark. In this case, Zhou Ying and Tang Jianying jointly obtained the involved trademark through acquisition, but the joint operation time was not long. After Zhou Ying left the processing plant (Tang) on August 5, 2001, the trademark in question has been used and cultivated by Tang Jianying. Therefore, in determining the compensation for the valuation in the second instance judgment, based on the evaluation price of 410000 yuan for the trademark involved when Zhou Ying left the processing plant (soup), and considering other factors, the discretionary compensation of 420000 yuan for Zhou Ying is fair and reasonable, which fully reflects the protection of Zhou Ying's joint rights and interests. Zhou Ying's request for compensation based on the evaluation price of the trademark in question in 2004 or even now is unfounded. Regarding Zhou Ying's claim to confirm the invalidity of Tang Jianying's transfer behavior, as Zhou Ying's lawsuit request in this case is to divide the involved trademark, the second instance judgment respects Zhou Ying's expression of intention on the basis of confirming that the involved trademark belongs to Zhou Ying and Tang Jianying jointly. The final judgment is that the involved trademark belongs to Tang Jianying personally, and Tang Jianying will compensate Zhou Ying at a fixed price. In this case, confirming that Tang Jianying's transfer behavior is invalid is no longer meaningful.

Case Eight

In the case of the "Millennium Baby and the Picture" (2019) Supreme Law Xingshen No. 756 and 2018) Supreme Law Minshen No. 4361, when the joint trademark was renewed, the joint owners did not explicitly waive the joint ownership rights and would not lose the trademark joint ownership rights.

In this case, the co owner of "Millennium and the Picture" No. 1732839 was transferred from the original trademark owner and jointly owned the involved trademark. However, when the trademark was renewed, no consensus was reached between the two parties, resulting in differences. The court has determined that trademark co-ownership is a legal fact and should not be changed without legal procedures.

In the 2019 Supreme Court ruling No. 756, it was determined that only a portion of trademark co owners submitted trademark renewal applications, which does not necessarily result in a change in the status of trademark co ownership. Chen Zhen failed to submit evidence to prove that Liu Hengzhong had abandoned his application for renewal of the trademark in question, and Liu Hengzhong had already submitted his application for renewal, and he still had joint ownership of the trademark in question.

In the Supreme Court ruling No. 4361, it was determined that Chen Zhen and Liu Hengzhong jointly enjoyed and used the "Qianxiwa" trademark. Given the lack of agreement between the two parties regarding the use, maintenance, and management of the trademark, it is indeed inappropriate for Liu Hengzhong to actively negotiate and jointly handle the renewal matters with Chen Zhen upon the expiration of the registered trademark validity period. However, Chen Zhen failed to provide sufficient evidence to prove that Liu Hengzhong has waived the exclusive right to use the trademark. The first and second instance courts found that Liu Hengzhong is still a co-owner of the trademark and it was not inappropriate. At the same time, Chen Zhen did not jointly apply for renewal with Liu Hengzhong despite knowing that Liu Hengzhong was a co owner of the trademark and that the Trademark Office had clearly informed him that the co owner of the trademark needed to sign the renewal application form, attach a valid identity document (copy), and issue the "Renewal Application Correction Notice" to him three times, which hindered the renewal of the trademark and also caused mistakes. At present, the registered trademark has been reviewed and renewed by the Trademark Office, and is still jointly owned by Chen Zhen and Liu Heng. The legal fact should not be changed without legal procedures.

Case Nine

The trademark case of "Xiaokun Rice Noodles" (2020 Supreme Law Minshen No. 6521, (2020) Yuzhi Minsheng No. 243), which was registered by one party during the coexistence period of the husband and wife relationship, belongs to the joint property of the husband and wife. After the dissolution of the husband and wife relationship, it can be converted into a joint trademark and jointly enjoy the rights.

In this case, the trademarks involved in the case were jointly owned by Qiu Yu and Cheng Kun, who were once married and registered by Cheng Kun during their marriage. Qiu Yu and Cheng Kun were divorced by the court on November 28, 2016 and transferred to the joint ownership of both parties in 2020.

As the co owner of the trademark in question, licensing Cheng Shunli to use the trademark in question in the Xiaokun Rice Noodle Store he operates and licensing the franchise store to use the trademark in question does not affect the co owner of the trademark, Qiu Yu, to continue using the trademark in question. Moreover, Qiu Yu has not submitted evidence to prove that Cheng Kun and Cheng Shunli have prevented them from continuing to use the trademark in question. Therefore, the second instance court determined that the above license is an ordinary use license, It is not inappropriate to not infringe on Qiu Yu's trademark rights in the case. On this basis, Cheng Shunli's licensed use of the trademark in question does not constitute an infringement on Qiu Yu's exclusive right to use the trademark in question.

Although Cheng Kun's exclusive permission to use the trademark in question does not constitute an infringement of the trademark rights involved, Qiu Yu enjoys corresponding rights in accordance with the law for the profits obtained from the trademark during the marriage relationship between Qiu Yu and Cheng Kun. According to the evidence in the case, Qiu Yu and Cheng Kun were divorced by a court ruling on November 28, 2016. Cheng Kun transferred the Xiaokun Rice Noodle Store to Cheng Shunli's name, Xu Kecheng used the involved trademark for business, and allowed some franchise stores to use the involved trademark earlier than the aforementioned time. Qiu Yu has the right to claim the profits from the licensing of this part of the trademark. Due to the fact that in Civil Judgment No. 383 (2018), the court had determined that Cheng Kun would compensate Qiu Yu for the related loss of profits of 30000 yuan based on the overall situation of the case. Therefore, this part of the content will no longer be reviewed and processed in this case. The second instance court did not support Qiu Yu's claim for this part of the lawsuit and it is not improper. After the divorce of Qiu Yu and Cheng Kun, the profits obtained based on the trademark involved were not supported by the second instance court due to Qiu Yu's failure to provide evidence to prove them.

Case Ten

The trademark used during the partnership period in the case of infringement of the "Yue Yang" trademark (2017) Jimin Zhong No. 111 and (2017) Supreme Law Min Shen No. 1921) should have a clear ownership when dividing the joint property of the partnership. If there is no clear ownership, it does not naturally belong to the joint common trademark and joint property.

In this case, the plaintiff Yang Lixin and the defendant Yao Wanli are brother-in-law, and Yao Wanli is Yang Lixin's brother-in-law. Yang Lixin began working with his father in the ancestral fried food processing and retail industry around 1980, and later inherited his family business. With the continuous expansion of production scale, Yang Lixin and his relatives gradually joined in. By the end of 2014, a partnership model led by Yang Lixin was gradually formed, with a total of seven people including Yang Yusheng, Wang Fenghai, Wang Fengshan, Liu Baochang, Yao Wanli, and Zhang Zhensheng. The plaintiff applied for the registration of the "Yueyang" trademark on March 19, 2002, and the "Yueyang" trademark fresh melon seed products were recognized as well-known products in Baoding City by the Baoding Administration for Industry and Commerce.

On October 30, 2014, defendant Yao Wanli established another defendant in this case, Yueyang Company, which is a "limited liability company (solely owned by a natural person)" with a business scope of "fried food and nut products". Subsequently, Yueyang Company began producing and selling fried melon seeds, and marked the use of the "Yueyang" registered trademark on its product packaging.

The defendant Yao Wanli entrusted Hebei Shengshi Trademark Affairs Co., Ltd. to apply to the National Trademark Office for revocation of the trademark involved on April 21, 2014. The National Trademark Office rejected Yao Wanli's application for revocation

On December 28, 2014, Yang Lixin, Yang Yusheng, Wang Fenghai, Wang Fengshan, Liu Baochang, Yao Wanli, and Zhang Zhensheng signed the "Share Agreement", which stipulated that the deposits under the names of Yang Yusheng, Yao Wanli, and Zhang Zhensheng belonged to the seven people, all IOUs and cash in the two safes of Yueyang belonged to the seven people, all household equipment and two cars belonged to the seven people, and the shares of the seven people were the same. The issue of ownership of the trademark involved was not involved.

The first instance court held that the share agreement submitted by Yao Wanli and Yueyang Company could only confirm that the ownership of tangible assets such as deposits, cash, vehicles, and production equipment was clearly defined by Yang Lixin and Yao Wanli, and did not explicitly include the "Yueyang" trademark rights. Therefore, the first instance court did not support the defense opinion that the "Yueyang" trademark proposed by Yao Wanli and Yueyang Company belongs to the seven people.

The court of second instance held that based on the facts that have been identified in this case (i.e. the registered trademark certificate in question shows that the registrant is Yang Lixin, and the "whether there is a common trademark" column in the trademark file states "no", Yao Wanli admitted that the registration procedures for the trademark in question were handled by him. Before the seven people signed the "Stock Agreement" on April 21, 2014, Yao Wanli applied to the National Trademark Office to revoke the trademark in question), it can be seen that before the signing of the "Stock Agreement", Yao Wanli is aware that the trademark owner in question is Yang Lixin. If Yao Wanli believes that the trademark in question should belong to a seven person partnership, he should assert it when signing the "Share Agreement" and include the disposal of the trademark rights and other property in the agreement. Considering that the "Stock Agreement" clearly specifies the bankbook number, amount, car number and other assets, but does not specify how to handle the trademark involved, Yao Wanli and Yueyang Company's claim that "the distribution of property in this agreement includes the distribution of the trademark rights involved" clearly contradicts the above facts. Therefore, regardless of whether the seven individuals were in a partnership relationship before the signing of the Share Agreement, they had no objection to the ownership status of the involved trademark when distributing property under the Share Agreement, that is, the trademark owner in question was Yang Lixin.

The retrial court held that before the signing of the "Share Agreement" in question, Yao Wanli had applied for the revocation of the trademark in question. It can be seen that Yao Wanli is aware that the trademark owner in question is Yang Lixin. If he believes that the trademark in question should belong to a seven person partnership, he should clearly state it when signing the "Share Agreement". However, the Stock Agreement did not address the issue of the trademark involved. Yao Wanli and Yueyang Company have not provided evidence to the contrary to prove that the trademark rights involved in the case do not belong to Yang Lixin. Therefore, the first and second instance courts found that Yao Wanli and Yueyang Company could not rely on the so-called trademark co ownership defense not to infringe on the trademark rights involved, and it was not inappropriate. The reason for the retrial application of Yao Wanli and Yueyang Company cannot be established.

From the above cases, it can be seen that the existence of "shared trademarks" in actual business activities is inevitable, and a large number of them exist in our economic life, especially among family businesses and friend cooperative businesses; The resolution of disputes is very complex, with lawsuits going through first instance, second instance, and retrial, endless and endless, and the emotional harm between rights holders is very significant. In the form of cooperative operation, joint trademark users should agree on the ownership, use, management, and division of trademark rights in advance to avoid subsequent trademark ownership disputes, in order to better achieve win-win cooperation and achieve good social benefits. (Author: Chen Bing)