Judicial Determination Of The Proper Use Of Place-name Trademarks

Trademark,a symbol composed of various elements,indicates the origin of goods or services.Apart from forming a trademark,some of these elements also function as words to describe certain characteristics of goods such as quality,geographic origin in public domain.These functions will not disappear after the registration of a trademark.Many countries and regions such as the United State,the European Union and the United Kingdom,have successively stipulated the fair use system in trademark legislation in order to protect the original function of these elements,as have the Trademark Law of People's Republic of China.Article 59 of the Trademark Law of People's Republic of China is about the fair use of trademark,which has stipulated the fair use of descriptive vocabularies,such as geographical names.Nevertheless,the fair use system of the trademark law in China still has some deficiencies,especially in the the theoretical and practical researches about the fair use of trademarks concerning geographical names.First of all,there are still controversies among scholars regarding the nature of trademark fair use.Different understandings of this basic issue have caused variances in the identification of trademark fair use.In order to have a better understanding and application of this system,a study on this fundamental issue is essential.Secondly,the regulations about trademark fair use in China is a general provision which has only confirmed the legitimacy of trademark fair use,including the fair use of descriptive vocabularies like geographical names.It hasn't further stipulated the factors that need to be taken into consideration in the identification of trademark fair use in accordance with different characteristics of different geographical name trademarks.Hence,there are few regulations to refer to in juridical practice,which has made the results of cases with similar facts inconsistent.Therefore,the study on trademark fair use system has both theoretical and practical significance.On the basis of existing domestic and external researches,this paper is divided into four parts.The first part is related to basic theories of trademark fair use.The concept,characteristics and types of geographical names,the nature of trademark fair use and the relevant legislative status are systematically discussed in this part.Geographical name trademark in this paper refers to a trademark,the component of which contains geographical names,including ordinary trademarks consisting of geographical names and geographical indications registered in the form of collective trademarks or certification trademarks.The geographical name trademark is a weak mark in terms of distinctiveness.As a result,there are more restrictions on the registration of this kind of trademark and the scope of protection of this trademark is narrower compared with ordinary trademarks.The trademark fair use system is an indispensable mechanism to define the scope of protection of geographical name trademarks and that of public domain.This paper argues that the fair use of trademarks refers to the use of certain elements of trademarks by the third parties without identifying the origin of goods and services.The nature of trademark fair use is the boundary between trademark rights and public domain.Behaviors regulated by this system is out of the validity boundary of trademark rights.It is commonly believed that the fair use of trademarks is mainly divided into commercial fair use and non-commercial fair use,wherein commercial fair use is divided into descriptive fair use and nominative fair use.Since geographical names are descriptive words,the fair use of this kind of vocabulary concerns mainly the descriptive fair use.Therefore,the discussion about trademark fair use in geographical names trademark centers mainly on descriptive fair use.The second part of this paper focus on the judicial status of the trademark fair use identification in both the ordinary trademarks consisting of geographical names and geographical indications registered in the form of collective trademarks or certification trademarks from the perspective of consideration factors.There is a summary on consideration factors during the identification of fair use of these two types of trademarks based on case studies.Whereafter,the identification of each factors is introduced in details and the impacts these factors have on the results of trademark fair use identification are analyzed also in this part through the comparison of various cases.The point of this paper is that,for ordinary trademarks made up of geographical names,the way of using geographical words and the comparison of popularity that the geographical words have as a place name and as a trademark are consideration factors.Meanwhile,in the fair use identification of geographical indications registered in forms of collective trademarks or certification trademarks,the specific quality and the way they're used are two factors that should be taken into consideration.The third part of this paper concentrates on the fair use identification of ordinary trademarks made up of geographical names.Based on the views proposed at the end of the second part,this paper argues that whether the use of geographical names constitutes fair use or trademark infringement depends on the perspective of consumers.Therefore,in this part,the analysis of how the way of using geographical words and the comparison of popularity that the geographical words have as a place name and as a trademark influence the results of fair use identification,which is conducted in combination with principles of cognitive psychology.The last part of this paper is about the fair use identification of geographical indications registered in forms of collective trademarks or certification trademarks.The connotation and the impacts of "specific quality" which is the special point of such trademark and also the key point in the protection of this kind of trademark compared with ordinary trademarks in fair use identification are discussed at the very beginning of this part.On this basis,the article proposes to divide the operators in the area indicated by the geographical names into two types according to the presence or absence of specific quality,and proceed with the analysis on the conditions required for these two types of operators in trademark fair use identification separately.