The Analysis On The System Of Trademark Concurrent Use

The purpose of this article is the analysis on the origin, types and development of the concurrent trademark use under trademark law. Unlike current research that does not follow the guidance of the purpose of trademark law, this paper aims at the reason and the justice of the protecting concurrent trademark use and follows the rule of interactions among the law, economy, culture and technology to conclude the operation mode of concurrent use and the agreement about the adaption of concurrent use rule in the internet age. In addition, the article emphases on the importance of rule evolution resulting from the unique characteristics of internet, and then discusses the supply and demand relationship between current concurrent use and internet market.In addition to a short introduction, the rest of paper is seven chapters. As a keystone part, the first chapter discusses the nature and characteristic by applying the path of finding the essence of various phenomenons and the relationship of concurrent use between Chinese legal practice and United States. Furthermore, this chapter will figure out the original rules and considerations after discussing history of concurrent trademark use. Stemming from common law, Tea Rose-Rectanus Doctrine aims at protecting trademark user with good faith and pursuing fairness as well as market order. The first case related with concurrent use is Hanover Star Milling Co. v. Metcaff which found that the effect of trademark right is limited in specific area. In the United Drug Co. v. Theodore Rectanus, Co., the court held senior trademark user has no right to prevent the junior user with good faith from using trademark in a particular area. After decades later, the Lanham Act set up the procedure of registration which attributes into a big change which is that the allegation of good faith would be disfavored by the notice effect of registration. The rule held in the Dawn Donout Co. v. Hart's Food Stores is that the register has no right to prevent the junior user from using trademark if they use their trademark in differently remote area respectively, and if there is no evidence to prove the nature explanation from the register's area to the area of junior user.The second chapter outlines the conception and the oriented value. As objective phenomenon, concurrent use embodies legal and illegal cases, and legal cases are the object of this chapter. Under the rule of registration, trademarks can be classified as registered mark and unregistered mark. According to this standard, there are four kinds of concurrent use: registered trademark v. registered trademark, registered trademark v. junior trademark use, prior trademark use v. registered trademark, unregistered trademark v. unregistered trademark. Under trademark law, the conception of concurrent use is as follows: if there is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used when the junior user does not know the trademark use adapted by senior user or even though junior user knows the adaption by prior user, there is no evidence to show he attempts to palm-off the goodwill from prior user, rule of concurrent use is valid. For the oriented value of concurrent use, the fairness and order is the target.The third chapter argues the history of trademark and the ground of protection of trademark concurrent use. Initially, trademark is a kind of mark without the function of indicating source of goods or services. When it comes to that trademark is equally viewed as the source of goods or services, the advantage of using trademark in trade is gradually obvious. In order to take full advantage of trademark interests, the nature of trademark being changed from mark to property is a good method which does not differentiate trademark use in different area. Another way enforcing the use of trademark interests is the trademark registration which leads to the different rights between registered mark and unregistered mark. There are three kinds of entitlement: “the first registration”, “the first use” and the combination between registration and use. Even though trademark right can be deduced from the statute of registration, the law practice denies this deduction and holds that registration is a facie evidence of entitlement along with an exclusive right for register uses using its trademark in limited period, generally three years. Furthermore, register has no right to allege compensation for infringement, rather awarding an injunction when infringement meets specific conditions under trademark law and procedure law. We can conclude that the justice of protection trademark is goodwill that stems from trademark use in trade area. Hence, trademark law entitles user exclusive right to avoid consumer confusion in particular area, which shows the equity.The forth chapter defines the components of entitlement of trademark concurrent use. In general, the application to concurrent use is limited in the same or similar products or service with the same or similar trademark. The specific components are the remote use and good faith as well. Following above analysis, the nature of trademark right is limited right based on use areas which can be divided into actual goodwill area as well as natural expansion area. Even though consumer recognition, as a substation, can solve some disputes to the some extent, it fails to make sure the logic that goodwill area is based on actual market penetration and also to deal with delimitation of trademark right when trademark presents in internet. As to elements, actual market penetration is primary based on dollar value of the senior user's market area at the time the junior user enters the market, the number of customers serviced by the senior user in the area compared to the area's total population, length of time since significant sales, and possible market penetration by means of products brought in from other areas. Goodwill area is based on the amount, the nature and the methods of advertisement. The natural expansion is based on previous expansion, presently-planned expansion; and, where applicable, the growth trends(both positive and negative) in the area and the subject of senior trademark use. The judgment of trademark right and elements paves a path to analyze the trademark use in internet.The fifth chapter concludes sources of concurrent trademark use. The one is coexistence agreement; the other is common law and statutes law. Coexistence agreement is still in question. For its nature, there is no assignment for its right because the law does not entitle it. When it comes to consumer confusion, coexistence of concurrent use is facie evidence that can prove no confusion. In fact, it will look for the traditional way to deal with the situation that cannot be imaged. From macroscopic aspect, coexistence agreement will contributes much more economic benefits. From microscopic aspect, coexistence agreement is a good choice to obtain the maximum profits, instead of lawsuit. For Chinese legal practice, courts focus on the background of concurrent trademark use and the share of market and so on.The sixth chapter, from an internet aspect, states the predicament and response. The considerations include not only the application for the tests of trademark right under physical market into internet market, but the rethinking about the unique operation mode based on the specific characteristics in internet. Due to the same principle of the judgment of trademark protection, the judgment of internet trademark use is based on methods of use and the effect. Unlike the previous research, this part regards internet as the fact of related price that leads trademark user to look for new rules of allocation of resources when current rules cannot satisfy its needs. Some scholars insist on applying the special jurisdiction for adjusting internet trademark use rather than the general jurisdiction. At the same time, the two core components of concurrent trademark use are under challenges due to the transfer from physical market to internet market. In this chapter, the proof of accessibility of concurrent trademark use in internet is the first step. Specifically, the rule of case by case in confusion possibility, the legal term of consumer, the characteristics of consumer-- entireness and diversity are consistent with the unique characteristic of internet behavior, which can prove the possibility of applying concurrent trademark use in internet. The test of good faith in internet should consider “no actual knowledge” as one important factor, instead of totally based on it. Regarding to “use in remote area”, trademark law should add the rule of internet trademark use and request trademark user to make a disclaimer on their obvious place in websites, and then provide the super linking in each site.The response, rethinking and expectation are the targets of the seventh part. Even though coexistence agreement is increasingly accepted in legal practice, it does still not satisfy the requirement of application for concurrent use. Currently, the courts make decisions under the guidance of co-growth theory. The determinant of whether the trademarks can be coexisted is that whether there exist confusion, which is deeply affected by the rule of “objective stable market order and structure”, which is included into the concept of “inclusive growth” by court for the guidance of judgments in regards to trademarks coexistence. However, its normativity contributes to the risk of instability of judgment in the same case. The nature of the judgment standard of “The stable market order and structure has been formed objectively” is kind of transition from physical judgment on trademark to comprehensive judgment on the similarity of trademarks, which is the dislocation of objectivity as well as the distortion of fairness. The main source of dilemma of trademarks coexistence is the relationship between trademark registration and trademark right that is not well dealt by trademark law and judicial practice. For the purpose of maintaining value of registration, protecting trademark owner, constructing the stable judicial practice and realizing fi nial fairness, it is suggested to perfect the rule of “objective stable market order and structure”, realize the Kaldor-Hicks' improvement by conducting the principle of competiton and equity and fairly dealing with the interests between trademark owner and opposition applicant.