Research On The Legal Application Of The Prior Trademark Right In China

As a registration-based country, only the registered trademark can be protected by the Trademark Law. And the registrant has the exclusive right to use this trademark and is entitled to forbidden others using the same or similar trademark on the same or similar goods.While as to the senior user of the same trademark,who used the trademark before the registrant and had used it for a long time,with building their own awareness with the consumer, it is absolutely unfair to forbidden them from using this trademark.For purpose of balancing the benefits of the registrant and the senior user, most registration-based country build the prior right of trademark principle,which entitled the senior user continue using the trademark legally when he or she is accused of infringement by the registrant.In China,the new Trademark Law came into effect on May 1st, 2014, added the third paragraph of Article 59, “before registrant registered in the trademark office, other people has used the same or similar trademark on the same or similar goods and service, the registrant has no right to abandon him/her continue using the trademark inside the original limits, but the right holder can request the user to add different marks.” It means rule of prior trademark right established in China first time.While the new Trademark Law doesn’t ruled it in some detail, and there’s no more related cases, so it is necessary to discuss the legal application of the prior right of trademark.This article included four parts, the author discussed the theoretical basis,constitutive requirement,limitation and several opinions of the author.The first part is about the theoretical support of the prior trademark right,which included the legislative background and the legal nature.The prior right is a kind of civil rights, with the function of defense. Firstly, because during the use of the trademark, the senior user had build up the “goodwill”on his goods,and the “goodwill”is a kind of property right.Moreover, the prior right of the trademark was a restriction to the exclusive right of the registrant. When the senior user was accused of infringement, he or she can defense for himself with the prior right, which makes the registrant ‘s right of claim be illegal and void before the fact.In the second and third paragraph,we discuss the constitutive requirement and the limitation of the prior trademark right.According to the law, there should be three constitutive requirements,namely1) first to use,2)using the same or similar trademark on the same or similar goods and services,3)the trademark already has a certain influences. Two limitations for the later using,including the original scope and adding some different marks on his or her goods if it is necessary.The question is once the senior user get prior right of trademark, there will be two same or similar trademark in the market,which will most likely confuse the consumer.So it is necessary for us to discuss the legal application of the prior right principle. In the article,the author will analyze every constitutive requirement and limitations,in order trying to give some suggestion for application of the prior right principle in china.