Requirements Of Use For Registered Trademarks Under The TRIPS Agreement

This dissertation aims to study on the requirements of use for registered trademarks under the TRIPS Agreement. After exploring the significance of trademark use and of the TRIPS Agreement in international harmonization of the requirements of use for registered trademarks, the introduction defines the scope of study. Under the approach of the study, this dissertation discusses the subject matter by following four chapters.Chapter one focuses on the treaty obligations of the requirements of use for registered trademarks. Firstly, it introduces the framework of treaties on the requirements of use for registered trademarks, demonstrating the progress and significance of the TRIPS Agreement in international cooperation on the issue of use requirement. Then, it analyzes in detail the drafting history, the nature of treaty obligations, the contents and logic arrangements of the use requirements under the TRIPS Agreement. The requirement of use in trademarks registration is an optional obligation under the TRIPS Agreement. However, once a Member adopts the requirement of use in this phase, the Member shall be subject to the obligations set by the TRIPS Agreement. It includes that the actual use of a trademark shall not be a condition to file an application for registration, and an application shall not be refused merely on the ground that intended use has not appeared before the expiry of a period of three years from the application date. The requirement of use for registered trademarks in registration maintenance is also an optional obligation under the TRIPS Agreement. To the Members which regulate the use requirement in this phase, they shall abide by the rules of the TRIPS Agreement on the use subject, non-use period, reasons for non-use and legal consequences for non-use, etc. In the end of this chapter, based on the comparison with other treaties and analysis of the obligations under the TRIPS Agreement, it draws the conclusion that the TRIPS Agreement currently is the topmost achievement of international harmonization on the requirements of use for registered trademarks, while it has its limitations at the same time.Chapter two conducts comparative studies on the requirements of use for registered trademarks of the main WTO members. The chapter explores the corresponding legislation and practice of selected representative members including the United States, European Union, the United Kingdom, Germany, and France, and makes a thorough and delicate analysis especially on the definition of trademark use, circumstances of trademark use, non-use period, proper reasons for non-use, legal consequences for non-use and relevant procedures. On the conception of trademark use, the selected members make different legislation, but tend to reach a common idea of the fundamental meanings of trademark use, i.e. use as a source indicator. Not all the selected members make the regulations on the requirements of use in trademark registration and exercise of trademark rights, due to the different acquisition systems for trademark rights, legislative traditions and trademark protection systems. However, all the selected members set the requirement of use in trademark registration maintenance. They share the similarities on the use subject, transformative use, legal consequences for non-use and burden of proof for trademark use, but differ in the regulations on non-use period, response to rush use and party to start the cancellation procedure, etc. Commonness and individuality of the systems above lay the foundation for theory studies and provide reference for China’s legislative improvement.Chapter three generalizes the main theory of the requirements of use for registered trademarks on the basis of treaties analysis and national comparison. Section one investigates the cause of the use requirements from the perspectives of reasonable allocation of trademark resources and justification of trademark protection. Section two analyzes the basic conception of the requirements of use for registered trademarks. In the first place, this section discloses the origin of registration and different meanings under the two systems of trademark rights acquisition, and explains the dual meanings of registration under the TRIPS Agreement. Then, it defines the conception of trademark use, clarifies its intension as a source indicator and analyzes its extension from the perspectives of subject, content, object, way of trademark use. Lastly, it studies on the issues of non-use based on the relationship between use and non-use, and focuses on the definition and determination of non-use, proper reasons and legal consequences of non-use. Section three addresses the core relations reflected in the use requirements for registered trademarks. The harmonization between registration and use and the intrusion into private right by public power have been explored.Chapter four analyzes the current system and existing problems of the use requirements for registered trademarks in China, and proposes the suggestions for legislative improvement. In section one, the status quo of legislation and practice on the requirements of use have been fully investigated from the four aspects:the definition of trademark use, the use requirement in registration, that in registration maintenance and that in exercise of trademark rights. Section two points out the deficiencies in China’s present systems of use requirements. In section three, the following detailed suggestions about the improvements of use requirements for registered trademarks in China have been put forward under the observance of TRIPS Agreement and influence of the relevant regulations from other members.1. The conception of trademark use should be defined both from the intension and extension. 2. The requirement of intent to use in trademark registration should be established.3. Regulations on proper reasons for non-use, the response to rush use and time for cease of registered trademark rights, etc. should be revised.4. The use requirement for exercise of the procedural rights on registered trademark should be added and that for exercise of the substantive rights should be enhanced.