A Study On The Understanding And Application Of Trademark Use In Trademark Infringement

The core function of trademark is to indicate the source of a specific goods or service.The trademark law is not to protect the trademark symbol itself,but the goodwill contained therein.Different from original work and patent,trademark symbols themselves are not intellectual achievements,it is only when they are combined with a specific goods or service and are accessible by the public,will the “Good Will” which are protected by trademark law be generated and accumulated.The concept of“trademark use” was first introduced to China through the 2013 revision of the Trademark Law.It has been stipulated that the essential element in determining trademark use is whether it is used for source indication.However,the law did not specify on what is “source indication”,which leave space for judicial interpretation and discretion.The emergence of new formalities of trademark use also adds to the complexity of trademark cases,resulting in the inconsistencies of judicial decisions.For instance,in the intensely discussed cases concerning Original Entrusted Manufactures(“OEM”),Ad Words,Game Names and TV Program Names,different courts have reached very different decisions based on similar facts.This thesis hold that,the key to resolve today's divergent and sophisticated trademark cases,is to deepening the understanding and application of “Use as a Trademark”.By analyzing the existing academic studies and judicial decisions,the main disputes surrounding “Use as a Trademark” could be summarized as follows:(1)there is no generally accepted interpretation of “Use as a Trademark”,this concept is frequently mixed with “use to maintain a trademark”;(2)it is controversial whether “Use as a trademark” is a prerequisite for trademark infringement,this also involves the question of whether “Use as a Trademark” was embodied in the “Likelihood of Confusion” test;(3)the elements on the determination of “Use as a trademark” is unclear.Trademark is a product of commodity economy development and historical evolution.To resolve the first issue,we must think from a historical perspective,and explores the essence of trademark infringement.The modern trademark law originates from the United Kingdom,by studying the earlier cases,it could be concluded that the law has no intention to protect trademark symbols as property,rather,it was to protect the special connection between the trademark owner and his trademark.On that basis,this thesis proposed a correct understanding for “source indication”,that is,whether the trademark was used to indicate the origin of the trademark user,to distinguish the product or service of the trademark user from the products or service from others.Furthermore,this thesis discuss the second issue from two perspectives: “the law as it is” and “the law as it ought to be”,both of which supported the view that “Use as a Trademark” shall serve as a prerequisite for trademark infringement.First,use as a trademark distinguishes “Use as a Symbol” and “Use as a Trademark”,this helps to prevent the monopoly of trademark symbols and conforms to the object and purpose of trademark law.Second,“Use as a Trademark” serves as “Gate-keeper” in infringement suits,it helps the court to filter non-infringing use,and saves judicial recourses.Third,the trademark law originates from the “Passing-off” suits,similar legislative history and background has led to the blurred boundary between the trademark law and the anti-unfair competition law.This thesis proposes that the best way to distinguish the application scope of these two laws is the standard of “Use as a Trademark”,if fulfilled such test,the alleged infringement could be regulated through trademark law,if not,it shall only seek relief from anti-unfair competition law.Additionally,from a comparative law point of view,main countries and regions including the United Kingdom,Australia,the United States,as well as the European Union have adopted “Use as a Trademark” as a prerequisite in determining trademark infringement cases.With regard to the third issue,this thesis has proposed three elements for determining“Use as a Trademark”.First,the court shall examine use of the mark from an object perspective,whether it constitutes “prominent use” as well as “use in commerce”.Specifically,when determining “prominent use”,the court shall consider whether such use is visible to consumers,as well as the frequency and consistency of such use.Second,the court shall consider the distinctiveness of the trademark,the higher the distinctiveness,the more likely it is to be considered “Use as a Trademark”.Third,the court shall also examine the intention of the user,whether he intends to indicate his own goods or service through using the trademark.