Legal understanding

(1) The concept of prior right to use trademarks

Article 59, paragraph 3, of the new Trademark Law clearly stipulates that trademarks Priority-to-use system. According to relevant provisions, the right of prior use of a trademark means that before the trademark registrant applies for a registered trademark, the prior user of an unregistered trademark has used the same or similar trademark as the registered trademark before the trademark registrant on the same or similar goods. A trademark that has certain influence. In this case, the prior user of the unregistered trademark has the right to continue to use the trademark. The owner of the exclusive right to a registered trademark has no right to prohibit the prior user of the unregistered trademark from continuing to use the trademark within the original scope of use. Use the trademark, but you can require the user of the unregistered trademark to attach appropriate distinguishing marks. It can be seen that the "right of prior use of a trademark" is an exception to the principle of trademark registration. Its purpose is to protect trademarks that have an identification effect due to actual prior use, and to balance the rights between later trademark registrants and earlier trademark users. conflicts of interest among the parties and protect the market order of fair competition.

(2) Components of the right of prior use of a trademark

It can be seen from the above concepts that the right of prior use of a trademark is different from the trademark right. It is only a right of defense. It is a right used to counter a trademark that has been registered later, so as to continue to use the trademark within the original scope of use. To exercise this right, the author believes that the following elements must be met according to the provisions of the new Trademark Law.

1. Before the trademark registrant applies for trademark registration, the unregistered trademark user has already used it.

"Prior use right of trademark", as the name implies, should be used first. According to the general prior use requirements, the time of use shall be based on the first commercial use of the earlier trademark, and this time shall be earlier than the application date of the later registered trademark; if it is later than the application date of the later registered trademark, , there is no basis for the prior use right to exist.

2. The prior use of an unregistered trademark user shall precede that of the trademark registrant.

According to the provisions of the new law, the prior user of an unregistered trademark should not only use it earlier than the application date of the later registered trademark, but also earlier than the first commercial use time of the trademark registrant. That is to say, if the application date for a later registered trademark is January 1, 2015, and the earliest time of use by the trademark registrant is January 1, 2014, then if the user of the unregistered trademark wants to exercise the right of prior use of the trademark To fight against a later trademark right, you need to prove that it was in prior use before January 1, 2014, not January 1, 2015.

3. The trademark used earlier is identical or similar to the trademark registered later, and the goods or services used are the same or similar.

There is no doubt that the basic conditions for exercising the right of prior use of a trademark should be that the trademark is identical or similar, and the goods or services are identical or similar. Because, if the previously used trademark is not identical or similar to the later registered trademark, or the goods or services used are not identical or similar, then the user of the unregistered trademark and the later trademark registrant have no conflict of rights, and both parties should Can live in peace.

4. The previously used trademark must have certain influence.

The so-called prior use and certain influence means that the prior user has already used a certain trademark in China and it has been known to the relevant public within a certain geographical area. If the prior user can only prove that the trademark was actually used before the filing date of the trademark registered by others and before the earliest use of the trademark by the trademark registrant, but cannot prove that the trademark has had a certain influence, the prior user will not be entitled to The trademark owner has the prior right to use the trademark and cannot continue to use the trademark. The reason why it is required to have a certain impact is that the basis for the prior use of the trademark is the prior use and the identification of the trademark after having a certain impact. If this prior use is not protected, it will be obviously unfair to the prior user. It exists as a supplement to the trademark registration system. If only prior use without certain influence is required to enjoy the right of prior use of a trademark, the interests of later trademark registrants will not be protected, thus shaking my country's established trademark registration system.

5. The prior use must be in good faith.

In order to clarify whether good faith is a necessary component, we can first look at the relevant regulations of other countries and regions. Japan and Taiwan, which belong to the civil law system, have clarified "good faith" as a condition for the prior use right of a trademark in the form of statutory law, while the United Kingdom and the United States, which belong to the common law system, have not made any literal provisions on the subjective status of the prior user. Regulation. U.S. trademark law pays more attention to the requirement that the consequences of use "will not cause confusion, misunderstanding, or deception." From these provisions, we can see that certain requirements should be put forward for the subjective aspects of the prior user. Although there is no written statement in the provisions of the new law that prior use must be in good faith, the author believes that the right to use a trademark prior to use is based on the prior use in good faith, and good faith should belong to the prior use right of a trademark. One of the inherent requirements is that it is hoped that the relevant requirements for "good faith" can be reflected in the "Implementing Regulations" and relevant judicial interpretations accompanying the new law.

(3) Exercise of the prior right to use a trademark

According to the provisions of the new Trademark Law, if the above-mentioned constituent elements are met, the owner of the exclusive right to a registered trademark has no right to ban the user. The trademark can continue to be used within the original scope of use, but it can be required to be attached with appropriate distinguishing marks. Specifically, when exercising the right of prior use of a trademark, the following requirements should be noted.

1. Continue to use it within the original scope of use.

How to understand the "original scope of use", the author believes that it involves three aspects. The first aspect is geographical scope. Since the later registered trademark has been registered, in order to balance the interests of both parties, the user of the earlier trademark should only continue to use the trademark within the original area of ??use, and should not expand the area of ??use at will. Regarding the understanding of the area of ??use, we should adhere to the standard of "certain impact". Only in areas where the prior use has "certain impact" can the prior trademark user enjoy the right to use the trademark. Of course, due to the current booming development of e-commerce, how to determine the geographical scope of sales models such as Taobao and Alibaba, which are mainly online sales, still needs to be further clarified in judicial practice. The second aspect is the scope of the trademark. The user of an earlier trademark shall only have the right to use the previously used trademark and shall be prohibited from changing the trademark without authorization. If the prior trademark user changes its previously used unregistered trademark in order to better distinguish it from a later registered trademark, such a situation should be allowed. The third aspect is the scope of the goods or services. The scope of use of the trademark by the prior trademark user shall be limited to the goods or services previously used, and shall not be extended to other similar goods or services without authorization.

2. The later trademark registrant may require the earlier trademark user to add appropriate distinguishing marks.

If the later trademark registrant believes that the trademark used by the earlier user is likely to cause confusion and misunderstanding among the relevant public as to the source of the goods or services, it may require the earlier trademark user to continue using the unregistered trademark. When applying for a trademark, add appropriate distinguishing marks. From a legal perspective, this is a right of claim that gives the subsequent trademark registrant a right to balance the prior use rights of the trademark. The prior trademark user should attach an appropriate logo after the trademark registrant's request to facilitate the relevant public to identify and identify the two trademarks. differences among those. If the prior trademark user cannot add appropriate distinguishing marks, he or she will not have the right to use the trademark prior to use and may not continue to use his or her trademark.

So, if the trademark registrant fails to exercise this right of request, should the prior user bear the corresponding obligation to prevent confusion? The author believes that the principle of fairness is one of the basic principles of my country's civil law. The existence of the prior right to use a trademark should also be based on the premise that it does not constitute an infringement of the later registered trademark rights. The exercise of the right to use must be restricted. Only in this way. Only then can the legitimate interests between the prior user and the trademark registrant be balanced. Therefore, in order to protect the interests of subsequent trademark registrants and ordinary consumers, even if the trademark registrant does not exercise this right of request, the earlier trademark user should be given the obligation to proactively prevent confusion.

Conclusion

The trademark prior use right system has been widely used in many countries and regions and has achieved good legal effects.

As a basic trademark system, the establishment of the trademark prior use right system in my country fully reflects the principle of legal fairness, fully considering and balancing the prior users of unregistered trademarks, later registered trademark rights holders, and the general public. The legitimate interests of the three parties of ordinary consumers. At the same time, we can also see that by establishing the trademark prior use right system, a very important relationship in the trademark field, that is, the relationship between use and registration, has been clearly adjusted. The protection of unregistered trademarks has practical guiding significance for the majority of trademark users to pay more attention to actual use in the future.