Relief To Infringement By The Use Of Registered Trademark: Solution Other Than Trademark Cancellation

The confliction between trademark rights and the prior rights has been a hotlydebated topic in the field of judicial practice. In particular, under the provisions inthe trademark that law after5years as of the trademark registration the prior rightholder cannot file an application of trademark revocation, can the holder of the priorright obtain civil remedy of injunction or damage through civil procedure, and how dothey obtain such remedy? The governing laws do not provide in this regard, whichresults in a paradox that the supreme people’s court and judicial administrations try toachieve the fairness and righteousness in every case under the current frame of lawsand regulations, whereas the judicial interpretations released by the supreme people’scourt are inconstant with the administrative enforcements by the judicialadministrations. Under current laws, the trademark law only provides the rules forthe trademark registrations infringing prior rights, and the anti-unfair competition lawbarely does so in general in terms of using the marks others have rights on. Theselaws, however, do not provide the rules of civil remedy for the confliction betweentrademark right and the rights which can identify the sources of goods or service. Tomake this pitfall up, the supreme people’s court has released several judicialinterpretations, where the opinions on the remedy for the prior holder have been gradually switched from "administrative revocation prior to civil remedy" to"independent civil remedy". Currently no consensus among the regulations andjudicial interpretations, especially in Opinions of the Supreme People’s Court onCertain Issues towards Ensuring that Trial of Intellectual Property Rights Cases Servethe Overall Interests of China in the Current Economic Situation where grants theremedy for the holders of the prior rights, but unreasonably distinguishes differentprior rights and deprives the exclusiveness of the prior rights. The fundamentalreason behind these practice and opinions lack of legal logic is the vacancy of legalprovisions in this regard.Legally speaking, the nature of the trademark use infringing prior rights is theconfliction between rights. Therefore, principles, including the ones of respectingprior right, protecting public interests, balancing the interests, etc., related heretoshould be sufficiently considered applying in handling this problem. On one hand,the law should provide protections for the prior rights; on the other hand, the lawshould provide, for protecting the reliance interest on the marks used for a long timeby the public, the time limit for the civil remedy of the holders of prior rights in caseof prior right misuse. In this point, referring to Joint Recommendation ConcerningProvisions on the Protection of Well-Known Marks Directive2008/95/EC of theEuropean Parliament and of the Council of22October2008to approximate the lawsof the Member States relating to trademarks, and Council Regulation (EC) No207/2009of26February2009on the Community Trade Mark, the author advises thatthe laws can provide the remedy time limit of the prior rights holder is5years, thesame length as the trademark revocation time limit.