The Development of Trademark Reverse Theory

Since the "Maple Leaf" v. "Crocodile" incident occurred in my country in 1994, people have begun to study the issue of reverse counterfeiting. Whether to include reverse counterfeiting in the legislation of my country's "Trademark Law" has always been controversial, and some people are in favor of it. , there are also opponents. Article 52 of the new amendment to the Trademark Law passed on October 27, 2001 stipulates the reverse counterfeiting clause, but the debate has not stopped, so it is necessary to fully understand the theory of reverse counterfeiting of trademarks.

1. The development of the theory of reverse passing off of trademarks

Counterfeiting was first introduced into British common law illegal conduct. In some cases, competitors' deception or misleading caused the plaintiff to lose its own consumers. Counterfeiting lawsuits protect the goodwill between operators and consumers. As long as operators continue their business activities, they have the right to oppose counterfeiting. In this case, it can be seen that trademark, as a commercial identifier, can be regarded as an intangible property that can express the goodwill of the operator. In other words, the basis for the existence of a counterfeiting lawsuit is the existence of goodwill.

Trademark counterfeiting is when the defendant puts someone else’s trademark on the goods it produces, and then passes it off as the plaintiff’s goods through simple substitution. However, the opposite situation also exists. The defendant claims that the plaintiff's goods are actually produced by itself. That is, after the operator legally obtains goods with registered trademarks owned by others, he changes his registered trademark without the consent of the trademark owner. This constitutes Reverse impersonation.

2. The rationality of the theory of reverse counterfeiting of trademarks

Trademark The basis for reverse counterfeiting to constitute infringement is: first, the defendant made false representations about the source of the goods purchased by consumers and deceived consumers. The important function of a trademark is to distinguish one product from other products. The defendant falsely represented information about the source of the product and misled consumers into making purchases. This was obviously fraud. Second, the defendant falsely represented the source information of the goods and obtained benefits from the goodwill of the goods. The reason why the defendant wanted to carry out reverse counterfeiting was to "free ride" in order to obtain unfair benefits. Consumers use the information provided by trademarks about the source of goods to obtain high-quality and low-priced goods or services. Consumers who have a satisfactory experience with the product will remember some trademarks and may continue to choose this brand in the future. Consumers use trademarks to obtain the goodwill created by previous consumption. ①The important way to create goodwill is consumers’ purchasing experience. General trademark counterfeiting is to use the quality information represented by the trademark to gain profits, while reverse trademark counterfeiting is to take advantage of the low price and excellent quality of the goods.to gain goodwill. The reverse passing off theory expands the scope of infringement. Whether to adopt the reverse passing off theory is closely related to the understanding of trademark functions. ② The function of a trademark determines the scope of protection of the trademark. The traditional theory believes that the trademark is to distinguish the source, while the modern theory believes that the trademark also has the function of anti-dilution. The most basic function of a trademark is to distinguish the products of different companies. Specific products are associated with specific trademarks, and people rely on this to choose products. From this, another function of trademarks is derived, that is, the function of identifying the source. When people buy goods, they have reason to believe that goods with the same trademark have the same source. Trademark owners have the exclusive right to use their trademarks and protect themselves by prohibiting competitors from trying to take advantage of the trademark's status and influence the illegal sale of goods. Such protection not only provides manufacturers with an incentive to develop and improve their goods, but also ensures stable users. Consumers can obtain the same goods from the market every time they return to the market, and prohibits certain Merchants use the same trademark as the trademark owner's trademark to sell inferior similar goods to prevent unfair gains. Therefore, my country’s Trademark Law regards any behavior that causes confusion about the source of a trademark as an infringement.