Research On The Identification Of Trademark Squatting

With the development of market economy, the competition between the market players is becoming more and more intense. Trademarks carrying the reputation of the enterprises have played an irreplaceable role to the development of the enterprises. Trademarks are not only used for identifying the source of each merchandise, but also a kind of intangible and valuable asset to transactors. The huge value contained in trademark induces a lot of people basing on improper purpose attempt to reap huge profits through the trademark squatting. Because of the imperfection of the legal institution of regulating trademark squatting, people become unscrupulous while they are doing trademark squatting. In recent years the issue of trademark squatting has become a challenge that has to be faced and settled in our judicial practice. Current “trademark law” was revised the third time in 2013, and a lot of additions and modifications of the relevant provisions of trademark squatting had been done, including the addition of principle of honesty and credibility clause, the addition of the provisions of punitive damages, the addition of the provisions of forbidding trademark squatting while there is business relationship between each other and one knows that the other has used the trademark, and so on. "Regulations on issues of administrative cases of authorization and confirmation on the right of trademarks" was as well published online on October 14 th, 2014, which has made great progress on regulation of trademark squatting. But the provisions of identification of trademark squatting are not good enough, and the view of judge still can not be uniform. To regulate trademark squatting, the first premise is to figure out how to identify 2 trademark squatting. the provisions of the identification of trademark squatting shall mainly be seen in Article 32 of the trademark law, I think that it is necessary to do analysis on the application of the provisions. I will do analysis on the application of the provisions combined with the judicial practice at home and abroad, based on the existing progress, and put forward some suggestions to improve provisions of identification of trademark squatting.This essay includes four sections.In the First Section, thesis will give an elaboration on the essential issues for the trademark squatting. Firstly, this thesis will introduce the different definitions of trademark squatting in the academic field, with concluding two definitions in broad and narrow senses. The scope discussed in this thesis will be limited to the trademark squatting from narrow sense. Secondly, this thesis will have do an analysis on the reasons why the phenomenon of trademark squatting exists from social and legal angles. The reasons from social point of view include the lack of awareness of protection of trademark of people who use the trademark first and the temptation of the interests of the trademark itself. The reasons on the legal part included the inherent defects of the principle of the registration, the insufficient protection for trademark caused by the territoriality of trademark right, and the imperfection of the relevant regulations of preventing the trademark squatting. In the end of this section this thesis will have an explanation on the harm caused by trademark squatting, which includes the infringement on the rights and interests of people who use the trademark first and consumers and the disturbance of the economic order in the market.In the Section Two, this thesis will have a study on how to identify and define the trademark squatting from the point of view of Clause 32 provided by Trademark Law. The second half of the Clause 32 in Trademark Law provides the most explicit regulation on the trademark squatting in narrow sense, literally based on the provision, this thesis will divide the the provision into factors as "unfair means", "prior use", "having some effects" and "trademark" and so on, and then give an analysis on each of them with using cases through which the conclusion on the standard for how to identify and define each factors in judicial practices will be made along with putting forward the scope of protection for the unregistered trademark. Among the afore-mentioned factors the relatively most controversial part is the defining for "prior use", therefore this thesis will give an analysis on this point from the aspects of the place of use, means of use, and passive use, and an elaboration on the phenomena of original equipment manufacturing and passive use. On the basis on the aforesaid study, finally in this section this thesis will have a summary for the relevant experience in judicial practices with introducing cases and then have a further clarification on the general standard.In the Section Three, this thesis will give a study on the relevant legal provisions and practices of regulating the trademark squatting in the US and Japan and explain its significance to our country. At first, this Section will introduce the providing related to “intense to use” and its “Hanover-United Drug” rule in judicial practice, in the meantime, summarize the factors taken into consideration when dealing with the issues of common use and common registration. Later, this section will have an introduction on the provision of the protection of the unregistered prior-use trademark in Japan and the system of intense to use and information offering.In the Section Four, this thesis will proposes some advices for improving and perfecting the relevant rules of Trademark Law and Judicial Interpretation focusing on identifying and defining the trademark squatting in our country. The advices include the establishing a provision of definition of trademark squatting, establishing the system of intense to use and information offering, as well as specifying the protection scope for the prior-use unregistered trademark with some effect. The thesis will propose some advices for further perfecting and consummating the two provisions relevant to “trademark squatting on a large scale ” and "standard of identification of malice” provided in the "Regulations on issues of administrative cases of authorization and confirmation on the right of trademarks", and “standard of some effect”.