Research On Trademark Prior Use

Since the establishment of trademark registration system, trademarks have been divided into registered trademarks and unregistered trademarks, while protection of the latter proves to be tough problems for different countries. Under the influence of different modes of trademark acquisition, the degree of protection of unregistered trademarks differs among different countries. In China, a country adopting the principle of trademark registration protection, the conflicts between unregistered and registered trademarks have been the knotty problems all the while in judicial practice. Deeply speaking, the lack of coherent and specific legal regulations results in the embarrassing phenomenon that different judgment views were held in the similar cases. Besides, the inconsistency of verdicts in similar cases fails to effectively protect the rights of the registered trademark users and to establish the authority of the judiciary. The new provision, Paragraph 3 of Article 59 of Trademark Law of the PRC(revised in 2013), takes prior use of unregistered trademarks as defense against tort. This piece of revision is of great significance to the legitimate rights and interests of the party who has used the trademark ahead of the trademark registrant.Chapter One introduces the historical reason and value of trademark prior use right. Trademark prior use right is provided for the solution of the conflicts of interest, which is rooted in the registration-based acquisition of trademark, between the unregistered trademark right holders and the registered trademark right holders. Trademark prior use is the protection of goodwill and reflection of the trademark function, and maintenance of the existing order.Chapter Two and Chapter Three focus on the definition and legitimate components of Trademark prior use right, which are the vital parts of this article. Chapter Two define Trademark prior use right through comparison of different legislation provisions and the analysis of the scholars point of view, combined with the provisions of the trademark law. Then discusses the effectiveness of Trademark prior use right. The holder who prior use the Trademark can continue to use the trademark in the original scope. This paper explores the original scope from the scope of the trademark, the range of goods or services, and geographical scope.And analyze the relationship between Trademark prior use right and malicious trademark registered and unregistered well-known trademark. Chapter Three mainly discusses the legitimate components of prior use right. According to China’s latest trademark law, the paper argues that the following factors must be required: a) the fact of prior use; b) using a trademark that is similar to or identical with the registered trademark on the same or similar goods; c) the trademark prior used has its certain influences. The time of prior use should be before the time that a trademark registrant applies for registration of and use of trademark. The use of the trademark requires the actual and continuous use in business activities. As for the requirement of influence, numerous scholars are against the provision of certain influence. This paper argues that it is necessary to limit the trademark awareness and to judge the influence of the said trademark with various elements to be considered.Chapter Four discusses the further improvement of the Trademark prior use right.