Trademark prior use right system. Article 59, Paragraph 3 of the Trademark Law stipulates that before the trademark registrant applies for trademark registration, if others have already used a trademark that is identical or similar to the registered trademark and has certain influence on the same goods or similar goods before the trademark registrant, the registered trademark shall The exclusive right holder has no right to prohibit the user from continuing to use the product within the original scope of use, but may require the user to attach appropriate distinguishing marks. This provision is also known as the "Registered Trademark and Prior Use Trademark Usage System." [2] Regarding the purpose of adding this provision in the current revision of the Trademark Law, some people believe that if the use of a previously used trademark is blocked because someone else registers the same or similar trademark, the prior user will inevitably be It is unfair to cause losses to the prior user without any fault, so it is allowed to continue to be used; however, in order to avoid confusion, it is necessary to attach appropriate distinguishing marks. [3] The author believes that when exploring the fundamental purpose of a certain legal system, the systematic explanation method cannot be ignored. Judging from the legislative framework of the revised Trademark Law, Article 59, paragraph 3, of the Trademark Law is included in the chapter "Protection of the exclusive right to use registered trademarks", and Article 57 "Infringement of the exclusive right to use registered trademarks" After listing. Judging from the legislative logic of Article 59 itself, paragraphs 1 and 2 are regulations regarding the fair use of trademark components. It can be seen that the legislator’s purpose of placing the issue of prior use right after the infringement identification clause and in the fair use defense clause is obviously to use it as one of the defense grounds for non-infringement of trademark rights, rather than to grant the prior user the right to invoke This clause entitles you to exclusive protection. Compared with the "trademark exclusive use system", the "trademark prior use defense system" seems to be more in line with the legislative purpose of Article 59, paragraph 3, of the Trademark Law.

Conditions applicable to the defense of prior use of a trademark

According to the provisions of Article 59, paragraph 3, of the Trademark Law, the prior user’s use occurred before the filing date of the registered trademark. , the object of use is the same or similar trademark on the same or similar goods and has a certain degree of popularity. If the prior user’s use after the registration date is limited to the original scope and other conditions are met, the prior user can claim the trademark Use your right to defend first. Below, the author makes a brief analysis of the application of the trademark law's prior use defense system based on the judgments of some typical cases.

(1) The fact of prior use

The use behavior of the prior user is prior in time, which is the factual basis for the defense of prior use. my country’s trademark law still regards registration as the basic principle and way of trademark protection. The protection of unregistered trademarks must meet the protection conditions clearly stipulated by the law. The prior use defense system is one of the ways to protect unregistered trademarks provided by the Trademark Law. The prior nature of use is the basis for the legitimacy of unregistered trademarks against registered trademark rights under certain circumstances. The Trademark Law of Taiwan also clarifies that one of the conditions for the right of prior use not to be subject to the exclusive right to use a trademark is that it must have been used before others apply for registration of the trademark. Regarding the time point for determining prior use, there seem to be two relevant statements in Article 59, paragraph 3, of the Trademark Law. The first is "before the trademark registrant applies for registration of the trademark", and the second is "prior to The trademark registrant uses a trademark that is the same as or similar to the registered trademark and has a certain influence." Judging from the above two statements, there seem to be two understandings of the judgment of precedence of conduct, one is "before the filing date of the registered trademark", and the other is "before the trademark registrant uses the registered trademark". The author believes that in principle, the prior user’s usage behavior should be earlier than the filing date of the registered trademark. However, if the trademark registrant has actual use behavior before the application date, the use behavior of the prior user should be earlier than the actual use time of the trademark registrant. Considering that the prior use right defense system is set up to make up for the shortcomings of the registration principle and balance the interests between the trademark registrant and the prior user, therefore, if the trademark registrant also has actual use behavior before the application date, and in In fact, if the registered trademark has exerted its identification function before the filing date, the party claiming the right of prior use defense cannot avoid the consequences of market confusion even if it still only uses it within the original scope, thus losing the defense of non-infringement and continued use. Justification basis for use.

In addition, the determination of the prior use time node also plays an important role in determining the subjective state of the party claiming prior use defense.

The actual use by the prior user is earlier than the actual use by the trademark registrant, which is an important fact to determine that the prior use right is a legitimate interest based on good faith prior use. As pointed out in the judgment of the "Qihang Postgraduate Examination" trademark infringement case: "In the application of Article 59, paragraph 3, of the Trademark Law, although literally, the prior use should precede the trademark registrant's use of the trademark. Act of use, however, because the essence of this requirement is to exclude the malicious intent of the prior user through this requirement, so when grasping this requirement, whether the prior use was done in good faith should be an important consideration and should not be limited to The clause itself refers to the literal terms of time points. (2) The object of earlier use is the same or similar trademark on the same or similar goods.

According to Article 1 of the Trademark Law. Article 56 stipulates that the scope of the exclusive right to register a trademark is limited to the trademark approved for registration and the goods approved for use. On this basis, in order to avoid confusion as a principle, what can be prohibited by the exclusive right of a registered trademark is the use of the same or similar trademark on the same or similar goods. Therefore, only the user's use within the scope of the registered trademark's prohibition rights may infringe the interests of the owner of the exclusive right to the registered trademark, and it is necessary for the trademark law to set up a conditional infringement exemption system for the first user. The use or use of dissimilar marks on non-similar goods does not involve the scope of rights of the registered trademark owner, and there is no need to exercise the right of defense in this regard.

(3) The previously used unregistered trademark has a certain degree of popularity

As mentioned above, my country’s trademark law takes trademark registration as the basic principle. Unregistered trademarks can only meet certain requirements. Only under certain conditions can they be protected by law. “Having a certain degree of popularity” or “having a certain influence” is one of the important conditions for trademark law to provide legal protection for unregistered trademarks.

Article 32 of the Trademark Law also clearly stipulates that applying for trademark registration shall not damage the existing prior rights of others, nor shall unfair means be used to preemptively register a trademark that has been used by others and has a certain influence.