The prior rights protected by the Trademark Law refer to rights that exist and are legally valid before a trademark is applied for registration. At the same time, when different entities apply for the same similar trademark on the same similar goods on the same day, or use unfair means to preemptively apply for registration of a trademark that has been used by others and has a certain influence, the Trademark Law also provides protection for previously used trademarks. Protect. Therefore, although the prior use of a trademark cannot form a right in the strict sense, it can also become a quasi-right protected by the Trademark Law under certain circumstances. This article intends to comment on the protection of prior rights (including prior permitted rights) in the Trademark Law from a vertical and horizontal comparison perspective, and to express opinions on the understanding and use of Article 31 of the Trademark Law.

Vertical comparison - the protection clauses for prior rights effectively supplement the registration principle and the first-to-file principle.

China’s Trademark Law enacted in 1982 stipulated the registration principle and the first-to-file principle as the basic principles for determining trademark rights. The 1993 revision retained the above principles. However, due to the historical limitations of the time, the legislation lacked provisions to protect well-known trademarks, rights other than trademark rights, and unregistered trademarks. Theoretical circles also tended to have an absolute understanding of the registration principle and the first-to-file principle. . In 1995, the trademark squatting incident of "Tianping" and "Tiansheng" occurred in Hangzhou. That is, some companies used the "Tianping" and "Tiansheng" trademarks that had been used by others and had formed a certain degree of distinction (famousness or reputation) to preemptively register them on the same trademark. or apply for registration on similar goods/services. In 1998, the incident of trademark squatting by a company in Shenzhen once again attracted people's attention after it was disclosed by the news media. The above-mentioned incidents involve issues such as the protection of well-known trademarks, rights other than trademark rights, and the protection of unregistered trademarks. Since the laws and regulations at the time did not clearly provide for these issues, they not only posed severe challenges to law enforcement agencies, but also caused fierce academic debate. Eventually, it was gradually recognized that the above-mentioned squatting behavior violated the principle of good faith and should be stopped.

Article 9 of the Trademark Law revised in 2001 stipulates: "The trademark applied for registration shall have distinctive features, be easy to identify, and shall not conflict with the legal rights previously obtained by others." From the legislation From a technical perspective, Article 9 is placed in the General Provisions section, which has the significance of basic principles and serves as a declaration. The specific protection measures for prior rights are provided in Articles 13 and 14 (Provisions for the Protection of Well-known Trademarks), Articles 28 and 29 (Protection of Prior Registration, First Application, and Same-day Application). It is detailed in Article 31 (provisions on prior use of trademarks under special circumstances) and Article 31 (provisions on the protection of other prior rights and the prevention of unfair registration), which reflects the legislative technology from abstract to concrete, from general to special. . From the content point of view, the principle provisions of Article 9 and subsequent specific protection measures basically cover issues such as the protection of well-known trademarks, rights other than trademark rights, and the protection of unregistered trademarks, making it absolutely necessary to adhere to the principle of registration and apply in The possible imbalance of interests caused by the first principle has been effectively compensated, which is a clear progress in legislation.

Horizontal comparison - Characteristics and shortcomings of China’s Trademark Law’s protection system for prior rights

The TRIPS Agreement’s focus on prior rights is reflected in Article 16-1 , "The owner of a registered trademark shall have the exclusive right to prevent any third party from using marks that are identical or similar to the registered trademark in trade activities to indicate the same or similar goods or services without permission, so as to cause the possibility of confusion. If it is indeed If the same mark is used for the same goods or services, it should be presumed that there is a risk of confusion. The above-mentioned rights shall not damage any existing prior rights, nor shall they affect the possibility of members to confirm the validity of the rights through legal use. "It can be seen that the TRIPS Agreement. The protection of prior rights is stipulated from the perspective of restricting the exercise of trademark rights, and is an institutional arrangement to resolve conflicts between registered trademarks and others’ prior rights.

The "Japanese Trademark Law" also has similar provisions. Its 29th "Relationship with Patent Rights, etc. of Others" stipulates: "The owner of the trademark right, the owner of the exclusive right to use or the owner of the general right to use, on the designated goods or designated services If the form of use of a registered trademark conflicts with the patent rights, utility model rights or design rights of others before the date of application for registration of the trademark, or with the copyright that has been generated by others before the date of application for registration of the trademark, it shall not conflict with the designated goods or designated services. "The above provisions are closer to the spirit of Article 16-1 of TRIPS and are more operational. At the same time, some other countries stipulate in their trademark legislation that conflict with prior rights is a legal reason for refusing trademark registration, or stipulates it as a legal reason for trademark invalidation or cancellation.

In comparison, the protection of prior rights under China’s Trademark Law is mainly reflected in the trademark confirmation process, including the review process for registration applications that directly conflict with prior rights. As a ground for rejection, the earlier right holder is provided with relief in opposition and dispute proceedings to prevent the later application for trademark from being registered or to cancel its registration. Secondly, the relevant provisions in Chapter 7 "Protection of the Exclusive Rights of Registered Trademarks" can also be understood as the protection of the exclusive rights of prior trademarks. However, the relevant provisions of the Trademark Law on the protection of prior rights still have certain flaws, which are reflected in:

First, the content is not comprehensive enough. The Trademark Law mainly protects prior rights in the process of trademark rights confirmation, but lacks clear and complete provisions on conflicts between trademarks that enjoy exclusive rights and prior rights. For example, the mechanism for resolving conflicts between registered trademarks and others’ prior rights before being revoked is not comprehensive enough, and it does not involve indisputable registered trademarks (that is, registered trademarks that have been registered for five years, and have not violated prohibition clauses and have not maliciously infringed on well-known trademark rights). How to deal with conflicts between trademarks) and other people’s prior rights?

Second, the style is not perfect enough. The 2001 revision of the Trademark Law mainly focused on making the Trademark Law consistent with the TRIPS Agreement in terms of content. In terms of style, it basically quoted the original framework, but lacked in-depth consideration of the complete unification of the internal logic of the relevant provisions. The provisions on the protection of prior rights are as follows: 1. The provisions are scattered and lack organic echoes between each other; 2. The logical level is unclear. For example, Article 31 actually stipulates two types of situations, It should not be used as one provision, or should at least be divided into two sections.

Third, the types of other rights are not listed. Most of the provisions in foreign trademark legislation involving the protection of prior rights enumerate the types of prior rights. Such enumerated provisions are easier to understand and apply in administrative and judicial practice.

Fourth, there are certain problems with the textual expression. For example, the "prior rights" mentioned in Article 31 should refer to other prior rights other than the exclusive right to trademark, but it is difficult to infer the above meaning from the literal expression of this article alone.