The Study Of Legal Issues On Using Other’s Registered Trademark As Trade Name

Recently, increasingly the registered trademarks are used by others as trade name. The causes of this phenomenon are varied, such as imperfect laws and regulations, the unsound administrative management system, the characteristic of Chinese cultural factors, and so on. Sometimes such use may lead to the mistake of relevant public, and thus cause damage to the proprietary of registered trademark.In order to regulate this problem, in 2013, the article 58 of the newly revised "trademark law" stated that, the use of other’s registered trademark as trade name shall be regulated in accordance with anti-unfair law provided that such use has caused mistake of relevant public. Combining with the legislation and judicial practice of past experience, it can be concluded that, the use of other’s registered trademark as trade name may be regulated according to two different law in two different situations. When the trade name is used in a prominent way, such use may be judged according to trademark law. When the trade name is used in a standard way, then such use may be examined according to anti-unfair law.The above distinction may has its positive side. However ignores the nature of infringement of registered trademark, namely,the use shall constitute infringement o f registered trademark as long as it caused confusion. The regulation of confusion involved with registered trademark by using anti-unfair law could not provide enough protection to the proprietary of registered trademark. Moreover, the misunderstanding of courts to trademark counterfeiting rules may worsen the problem of the lack of protection of the registered trademark. Specifically, this article is divided into four chapters.In the first chapter, this article introduces the present situation of regulation and generalizes the relevant cases. After analyzing the related judicial practice, it found that the proprietary of registered trademark received different level of protection in two different situations. For instance, using the registered trademark with no popularity in a prominent way may be banned, while using it in a standard way would not. In addition, when the user is of “no intention to free-hiding”, the use in prominent way shall still be forbidden, while the use in standard way may not. The proprietary of registered trademark should have enjoyed equal protection in these two different circumstances. However, from the perspective of the result of the judicial practice, this situation has not been fulfilled. Guess in this paper. On the one hand, the reason may be that the trademark law and anti-unfair competition law itself is different, on the one hand the reason may be the existence of deviations in understanding of the law. In the following chapters, these two kinds of situations would be analyzed respectively.The second chapter is analysis of using the registered trademark with no popularity as trade name. In these two situation, the court has made different decision on whether provide protection to registered trademark with no popularity. After the analysis, this article suggests that, by reason of the difference in protected object and protective mechanism between trademark law and anti-unfair law, the latter could not afford equal protection to registered trademark with no popularity as the former. Specifically, trademark law protect not only the inherent distinctiveness also the obtained distinctiveness. Trademark counterfeiting rules, on the other hand, only protect the obtained distinctiveness.The third chapter is the analysis of using the other’s registered trademark as trade name with no intention to free-riding. At first, this article analyzed the cause of the problem. According to the analysis, it can be concluded that the phenomenon of such use may occur all over the world, and is inevitable even in the future. Then a following question is discussed in this chapter that, since such use is inevitable, whether the law should ban it when it cause possibilities of confusion. After studying the article 57 of the trademark law and trademark counterfeiting rules respectively, this article suggests that the trademark law and anti-unfair competition law is consistent in this problem – such use must be banned. However, the reasons why these two laws forbidden such uses are different.The last chapter is suggestions aimed at solving the above problem of the insufficient protection to registered trademark. Based on the analysis of the above chapters, this articles argues that the division of "prominent use" and "standard use" and application of two different legal regulation mode is not desirable. To provide adequate protection for registered trademark holder, on the one hand, under the existing legal rules, the court should examine these two situations both in accordance with trademark law by using the judicial discretion. On the one hand, our country should draw on the experience of amendment of the EU trademark directive, delete the article 58 of trademark law and revise the relevant situations into article 57 as specific situation of trademark infringement.