Research On Original Scope Of Use Of The Defense Rule Of Prior Use Of Trademark

The system of defense of trademark prior use is an important part of the protection system of unregistered trademark,which is stipulated in Article 59.3 of the Trademark Law of China,and the determination of the "original scope of use" is one of the core elements of the defense of prior use right.In judicial practice,there are problems in determining the "original scope of use" such as "different understanding of whether to include it as a constituent element of the right of first use","the standard of identification is not clear","the burden of proof is not uniform","specific considerations and the criteria for determining each factor are not uniform",and so on.As a matter of fact,many difficult issues in the determination are handled in a way of passing by or even avoiding the discussion;and even for those judgments that attempt to make detailed arguments,there also exist various problems mentioned above to a certain extent.In terms of the prior use defense,it should be made clear that the "scope of prior use" has a dual significance,not only as a means of restriction in the process of continuous use by the prior user,but also as an element of the prior use defense.In addition to the"scope of first use",in order to invoke the defense of first use of a trademark,the dual identity or similarity of the mark and the goods or services should be satisfied in order to achieve preliminary infringement;in addition,the elements of first use of a trademark include the existence of prior use,and such use should also be in good faith.Finally,the defense of prior use should adhere to the standard of "having certain influence",because it is not only an important part of the basis of the legitimacy of the defense system of prior use,but also has a fundamental guiding role in the identification of the "original scope of use".In the process of determining the "original scope of use",we should start from the essence of the prior use right system,take into full consideration the value of the act of use,take the theory of balance of interests as the basic analysis,emphasize fairness while taking efficiency into account,and balance the interests of the prior user of the trademark and the subsequent registrant;and in the process of balance of interests,based on the social public attributes of the trademark system,the interests of the prior user of the trademark and the subsequent registrant should also be taken into account.Finally,from the perspective of preventing the waste of resources,the result of the balance should be able to increase rather than decrease the total wealth of the society.Based on the consideration of the balance-of-interest theory,it should be further clarified that although the right of first use system originates from making up for the shortage of the registration system,the registration system is still the optimal choice in China’s current trademark system.While realizing the right of first use system,the foundation of the registration system should not be shaken,otherwise it will be suspected of putting the cart before the horse and undermining the foundation of the trademark system.In addition,although China’s patent law also provides for the right of prior use and there is a corresponding judicial interpretation of the "original scope of use" of the right of prior use of a patent,but because of the large difference between the patent right and the trademark right in terms of the attributes of the right and the way of realization,the"original scope of use" of the right of use of a patent is not directly applicable.In the process of determining the "original scope of use",although the issue of time node is a prerequisite and fundamental element,its determination in practice is quite tangled,and it is more reasonable to take the date of registration as the time node for determination.The scope of subjects that can continue to claim the right of first use should be limited to the principle of the prior user of the trademark himself,with the exception of the complete successor subject of the original business recognized under the necessary circumstances.In the case of marks,the prior user should be allowed to make changes that are conducive to distinguishing the prior trademark from the registered trademark without making substantial changes,i.e.,without modifying the distinctive identifying part;and in the case of goods or services,the restrictions should be strictly in accordance with the categories of goods or services already used and it is not appropriate to allow any form of expansion.In the determination of the original territory,it should be combined with the rationality of the prior use right system,and the scope of influence should be used as the identification standard,instead of simply limiting to the actual use of the territory.As for the scale,it is not the main consideration of the"original scope of use",and it has already been given sufficient limitation of scale under the premise of limiting the territory.As for the determination of the original use,the scope of influence should also be taken as the identification standard,while taking into account the development trend of society and technology and making a reasonable determination in each case based on the balance-of-interest theory.