Research On Application Of Trademark Prior Right

The senior user is entitled to the trademark prior right by using a mark that isidentical to or similar with a registered mark in commerce. The prior trademark rightconfers the senior user the right to continue using such a mark under being accused ofinfringement by the registrant. In a registration-based country, registration is the onlyway for granting the trademark other than the prior use. For purpose of balancing thebenefits between the registrant and senior user and avoiding the prejudice to the senioruser, registration-based countries generally establish trademark prior right principle.China is one of registration-based countries, and the Amendment of PRC TrademarkLaw (draft), added the provision of trademark prior right. Under such background, thisarticle mainly focuses on the practical issue regarding how to apply the defense of theprior trademark right as to make contribution to the trademark practice in China.Part I provides an overview on the defense of trademark prior right. Subsection Ianalyzes how trademark acquisition system influences the prior use and howregistration-system affects the nature of trademark prior right. Subsection II presents thetheoretical fundament on application of defense of trademark prior right underregistration-based system. The subsection III presents the current situation andcontroversies on the defense of trademark prior right in China, and this subsectionconnects the discussion on the requirements and limitation of the trademark prior right. Part II and III are the vital parts of this article, which discuss the enforcementrequirements and applicative limitation on the issue of trademark prior right. Theenforcement requirements provide the standard to determine whether the trademarkprior right is established. The limitation sets the use restrictions when being entitled tothe trademark prior right. Part II mainly discusses the requirements for trademark priorright from the view of procedural factors and substantial factors. The substantial factorsencompass the eligible use of a trademark, the extent of recognition, the prior use, andthe use in bona fide. Part III focuses on the subsequent use restrictions, which mainlycontains the original scope of use and the way of continuous use.The general ideas of Part II and III are to discuss on the necessity of eachrequirement and limitation on application of trademark prior right and provide specificrules regarding the trademark prior right. Based on the fundamental theories oftrademark prior right, Part II and III present the rational appearance of the requirementsand limitation on the trademark prior right defense through empirical study andcomparison study. The learnable experience summarized from the research of foreigncountries’ trademark acts and cases can be used to improve PRC Trademark Law ontrademark prior right.Part IV proposes some applicative rules regarding how to use trademark prior rightdefense. By commentating new provision with respect to the trademark prior right inthe Amendment of PRC Trademark Law (draft), this part makes the conclusion on theeffect the new provision imposes on the trademark legislation and practice. Part IV alsoprescribes the basic principles and specific requirements and limitation on trademarkprior right defense.