What trademark prior use defense?

Trademark prior use right system. Trademark law, article 59, paragraph 3, before the trademark registrant applies for trademark registration, others have been in the same goods or similar goods before the trademark registrant to use the same or similar to the registered trademark and have a certain degree of influence of the trademark, the exclusive right to the registered trademark shall not have the right to prohibit the use of the use of such goods within the scope of the original use of the continued use of the goods, but can be required to attach the appropriate distinguishing marks. This provision is also known as the "registered trademark and prior use of the trademark **** use of the system. [2] for the trademark law in the process of amending the intention of adding the provision, there are views that, for the prior use of the trademark, if others register the same or similar trademarks and block its use, will inevitably cause losses to the prior user, the prior user is not at fault, this is unfair, and therefore allowed to continue to use; however, in order to avoid confusion, it is necessary to attach the appropriate distinguishing marks. [3] the author believes that, in exploring the fundamental purpose of a certain legal system set up, can not ignore the systematic interpretation method. From the revised "trademark law" legislative framework, "trademark law" article 59 paragraph 3 is included in the "protection of the exclusive right to registered trademarks" chapter, article 57 "infringement of the exclusive right to registered trademarks" after the enumeration. From the perspective of the legislative logic of Article 59 itself, paragraphs 1 and 2 are about the proper use of the constituent elements of the trademark. Thus, the legislator will be set in the infringement of the right to prior use of the provisions after the determination of the legitimate use of the defense provisions of the purpose, obviously as a non-infringement of trademarks as one of the defenses, rather than granting the first user to invoke the provisions of the right to obtain exclusive protection. Relative to the "trademark **** use system", "trademark first use right defense system" seems to be more in line with the trademark law, article 59, paragraph 3 of the legislative purpose.

Conditions for the Defense of Trademark Right of Prior Use

According to the provisions of Article 59(3) of the Trademark Law, if the use of the trademark by the first-user occurs before the date of application for registration of the trademark, and the object of the use is the same or similar trademarks on the same or similar goods with a certain degree of recognition, and if the use of the trademark by the first-user after the date of registration is limited to its original scope, the first-user may claim that the trademark is not used by the first-user, but the first-user may claim that the trademark is not used by the first-user. If the conditions are met, the first user can claim the defense of the right of prior use of the trademark. In the following, the author combined with some of the typical cases of the decision, the trademark law on the application of the first right to use the defense system, to make a brief analysis.

(a) the fact of prior use

first-user's use of the behavior of the time is prior to the factual basis for claiming the defense of prior use. China's trademark law is still registered as the basic principles and ways of trademark protection, the protection of unregistered trademarks need to meet the protection conditions specified in the law. Prior use defense system is one of the trademark law to provide protection for unregistered trademarks, the use of the prior nature of the act, it is the unregistered trademark in a particular case to fight against the legitimacy of the registered trademark right basis. The Trademark Law of Taiwan also makes it clear that one of the conditions for the right of prior use not to be bound by the right of exclusive use of a trademark is that the fact of use must have existed prior to the application for registration of the trademark by another person. As to the time point of judging the prior use, Article 59(3) of the Trademark Law seems to have two expressions related to this, the first one is "before the trademark registrant applies for the registration of the trademark", and the second one is "prior to the trademark registrant to use the trademark which is identical with or similar to the registered trademark, and which has a certain degree of influence. ". From the above two expressions, it seems that there are two understandings of the judgment of the prior nature of the act, one is "before the application date of the registered trademark", and the other is "before the use of the registered trademark by the trademark registrant". In the author's view, in principle, the use of the prior user should be earlier than the application date of the registered trademark. However, if the trademark registrant in the application date before the actual use of the act, the use of the prior user should be earlier than the actual use of the trademark registrant. Considering that the first-right defense system is set up to make up for the defects of the principle of registration, and balance the interests between the trademark registrant and the prior user, therefore, if the trademark registrant also has the actual use of the act before the application date, and in fact, make the registered trademark before the application date that is to play the function of identification, the party who claimed the defense of the right of first-use even if the original scope of use, can not avoid the consequences of market The consequences of confusion, thus losing the defense of non-infringement and continue to use the basis of legitimacy.

Additionally, the determination of the time point of prior use is also important in determining the subjective state of the party claiming the defense of prior use. The actual use of the first-user earlier than the trademark registrant's actual use of time, is to determine the right of first use is established in good faith on the basis of the prior use of the legal rights and interests of the important facts. As pointed out in the judgment of the trademark infringement case of "Qihang Exam", "in the application of Article 59(3) of the Trademark Law, although the literal meaning of the prior use shall be earlier than the use of the trademark by the trademark registrant, the essence of the requirement is to exclude the prior use through this element, therefore, the right of prior use is established on the basis of the legal right of good faith. However, since the essence of this requirement is to exclude the case of bad faith on the part of the user through this element, therefore, in grasping this element, whether the prior use is in good faith should be taken as an important consideration, and should not be confined to the literal language of the provision itself regarding the sequence of the time point."

(2) The object of prior use is the same or similar trademark on the same or similar goods

According to Article 56 of the Trademark Law, the scope of the exclusive right to use a registered trademark is limited to the trademark approved for registration and the goods authorized for use. On this basis, the principle of avoiding confusion, the exclusive right to use a registered trademark can be prohibited is the use of the same or similar trademark on the same or similar goods. Therefore, it is the use by the user within the scope of the prohibited right of the registered trademark that may infringe upon the interests of the owner of the exclusive right to use the registered trademark, and it is only then that the Trademark Law is necessary to set up a conditional infringement exemption system for the first user. The use of non-similar goods or the use of non-similar signs, and the scope of the rights of the registered trademark owner has nothing to do, and no need to exercise the right to defense.

As mentioned earlier, China's trademark law to the basic principle of trademark registration, the unregistered trademark can be protected by law only if certain conditions are met. "Have a certain degree of popularity" or "have a certain impact" is the trademark law to provide legal protection for unregistered trademarks is one of the important conditions.

Article 32 of the Trademark Law also clearly stipulates that the application for trademark registration shall not jeopardize the existing prior rights of others, and shall not preempt the registration of trademarks that have been used by others and have a certain degree of influence by improper means.