On The Right Of Defense Prior To Using Unregistered Trademarks

Here world Clothing and shoes The Xiaobian of the network tells us that we should protect the prior rights, and take the right way of defense.

The fifty-ninth article and third paragraph of the new trademark law stipulates: "before a trademark registrant applies for trademark registration, others have already used a trademark identical to or similar to the registered trademark before the trademark registrant on the same commodity or similar commodity, and the exclusive right holder of the registered trademark has no right to prohibit the user from continuing to use the trademark in the original use scope, but it may require the appropriate trademark to be added to the trademark."

This provision is the first time that China's trademark law has made provisions on the prior use defense of trademarks, which is generally considered by the intellectual property industry to be of great significance.

Prior right to use is a right of defense.

As we all know, according to the Trademark Law of our country, the right of trademark is obtained by means of registration. Only the trademark approved and registered by the Trademark Office of the State Administration for Industry and Commerce has the right to protect the exclusive right to trademark. Because the principle of voluntary registration is implemented in China, the legality of unregistered trademarks is also recognized theoretically. Therefore, there are two different trademarks in registered trademarks and unregistered trademarks in real economic life. For unregistered trademarks, protection can only be obtained under specific circumstances.

The fifty-ninth article and third paragraph of the new trademark law clearly stipulate the system of prior use of trademark. Zhao Lei, partner of Beijing Jia Jia law firm, told reporters that "trademark first use right" is an exception to the principle of trademark registration. The purpose of its establishment is to protect the trademark that has been recognized because it has actually been used before, and balance the interests conflict between the trademark registrant and the prior trademark user, so as to protect the fair competition market order.

In the interview, a number of lawyers believed that the use of the right of defense under the seventh chapter "protection of the right to exclusive use of registered trademarks", from the perspective of the basic law, provided a clear stipulation for the reasons for the prior use as a tort defense, and absorbed the essence of the relevant judicial interpretation. It is an important modification to extend the defense to all trademarks.

In an interview, Professor Li Shunde, director of the Department of law and intellectual property of the Faculty of humanities, University of Chinese Academy of Sciences pointed out that the provision of certain provisions for the protection of unregistered trademarks before being used is a major highlight of the revision of the trademark law. He said that in the world, registration, protection and use of these two systems have shown a trend of continuous integration and mutual reference in recent years. China's revision of the trademark law has increased the protection of unregistered trademarks on the basis of the first two amendments, which is consistent with the international trend of development.

Why does the new trademark law increase this provision?

China's trademark law is based on the principle of registration. It has attracted much attention for the protection and protection of previously used unregistered trademarks, but there are great differences between academia and judiciary.

One idea follows the absolute principle of registration priority, that is, once a conflict occurs, only the registered trademark is protected by the trademark law, and the first used trademark must not be used. In judicial practice, some courts pursue strict legalism. They believe that the registered trademark has a statutory exclusive effect. Even if the registered trademark has not been used before, it can not continue to use it.

An industrial and commercial cadre told reporters that there had been a long history of catering enterprises in the region. They used a trademark for many years, but later they were subjected to trademark infringement lawsuits. Although the enterprise was used first, they were still judged to be compensated.

Another view is that the previously used unregistered trademarks should be respected and protected. In practice, some courts have put forward the right to exclusive use of registered trademarks without fully exclusive effect under the premise of protecting the unused registered trademarks which meet certain conditions.

In this new edition Trademark law In the process of revision, quite a few scholars proposed to give certain protection to the unregistered trademark that was first used. For example, Wang Lianfeng's "on the protection of good faith first use of trademarks - from the perspective of Dujia chicken trademark infringement case" proposed that the third amendment of the trademark law should increase the first use right of the trademark and define the scope of the prior right of use. Feng Xiaoqing, a professor at the school of civil economics and law, China University of Political Science and Law, also proposed to recognize "the right to continue the use of unregistered trademarks" in the third revision of the trademark law.

Based on historical and practical considerations, China's revision of the trademark law has specially considered the issue of the right to continue to use the trademark first, and it can continue to be used in the case of a previously used trademark in compliance with certain conditions.

How to identify constraints?

It is worth noting that although it is necessary for the law to give certain protection to the unregistered trademarks that are previously used, the trademark registration system is still the main form in China, so the protection level for unregistered trademarks should not be too high. The prior right to use the trademark is different from the trademark right. It is only a kind of defense right, and it is a right to resist the trademark right after registration, so that it can continue to use the trademark in the original scope of use. Therefore, the fifty-ninth article and the third paragraph of the new trademark law stipulate certain restrictions on the unregistered trademarks used for protection. How to identify these conditions is very critical and has become the focus of attention of the industry.

According to the provisions of the fifty-ninth and third sections of the new trademark law, the first use of unregistered trademarks should continue to be used, and 3 restrictions must be met: first, before the trademark registrant applies for trademark registration, the user of the unregistered trademark has already been used first and has a certain market influence; two, the unregistered registered trademark can only be used within the original scope of use; three, the exclusive right holder of a registered trademark may request an unregistered trademark to be added to the appropriate trademark to avoid confusion.

The reporter understands that the first concern is how to understand the scope of the original use, especially the geographical area. Huang Hui, senior partner of Beijing Wan Hui Da Intellectual Property Agency Limited, believes that, in the light of the situation in the European Union and the United States, the defense should be limited to the specific geographical area of the prior use. In the case of "duck king", the Supreme People's court also held that "the prior rights and interests formed before the use of Beijing duck king should be protected, and it has the right to continue to use its first duck king logo in Beijing." Huang Hui believes that once the first use is applied to the post trademark registration application, it is equivalent to being frozen immediately in the area already used, and it can no longer go beyond the scope.

Zhao Lei lawyers put forward another situation that needs attention. Due to the vigorous development of e-commerce, it is still clear how to determine the geographical scope of the first use of trademarks, such as Taobao and Alibaba. Huang Pulin, a cadre of Fuzhou industrial and commercial bureau of Jiangxi Province, also pointed out that whether the original trademark user used the e-commerce platform to sell the goods to customers outside the geographical area through the e-commerce platform, or to attract foreign customers to accept services in their original geographical area, is reasonable, which deserves attention.

In addition, how to "add the appropriate distinction mark" has also become a specific problem in the application of this clause.

Huang Pulin believes that, with reference to the notice on the issue of the continued use of service marks, "continue to use the actual confusion with the users of registration, causing consumers to mistaken, and continue to use the provisions of the geographical names and signs to distinguish them from the registrants' service marks when the service marks are used."

Huang Hui believes that after the trademark registrant thinks that the trademark used by the former user is likely to cause confusion or misidentification of the relevant public to the source of the goods or services, the prior trademark user may request the appropriate trademark to be used when using the unregistered trademark. Moreover, in order to protect the interests of the registered trademark registrants and ordinary consumers, even if the trademark registrants do not exercise the right of claim, they should also be asked to take the lead. trademark Users voluntarily assume the obligation to prevent confusion.