Research On Restricting The Original Scope Of Prior Use Trademark

Article 59 of the current “Trademark Law” in China stipulates three types of exceptions that do not constitute trademark infringement,of which the third paragraph is called defense of trademark prior use right.That is,an unregistered trademark user who satisfies the specified conditions can continue to use the trademark under certain restrictions and can use the provisions of the clause to defend himself against the infringement claims of the trademark owner.This clause not only affirms the reasonableness of the vested interests obtained by the trademark prior users using their trademarks,but also limits the scope of their continued use of the trademark to maximize the balance between the interests of both parties.However,the “Trademark Law” and the judicial interpretation relating to the trademark do not specify the “original use scope” of the prior use trademark,resulting in various disagreements between different courts in applying this clause to the ruling.In the existing system of trademark prior use right,the existence of time limitations for the first-use trademark “existing scope of use” and the specific limitation factors are not clear,which may lead to the fact that the prior use right of trademark system cannot play its practical role in balancing each party's interests.This defect may also lead to a lack of clear understanding of the boundaries of priortrademark use rights.It is also impossible to completely resolve the contradictions and conflicts between the user of prior trademark and the registered trademark owner.At present,although there are many cases in China's judicial practice that involve the trademark prior use right defense,only a few courts explicitly define the“original use scope” of the prior use trademark in the judgment.This article summarizes the existing cases and finds that the specific differences that most courts have in judging the “original use scope” of the trademark are mainly focused on:Firstly,the subject which have the trademark prior use right of defense is inconsistent.In addition to the trademark prior user himself,whether his business successor,business collaborators,licensees can also enjoy the trademark prior use right;secondly,to determine the "original" range of time nodes are inconsistent,some courts require the user of prior trademark to continue using his trademark within the scope before the “trademark application date” of the registered trademark,while some courts determine reasonable scope by considering the influence and geographical location of the prior trademark.In addition,a small number of courts that analyzed and defined the “original use scope” of the prior trademark in the judgment also differed in whether there was a need to limit the scale of production,the use area and the usage mode of the prior use trademark.This article aims at the problem that the “original use scope” of the trademark is not clear and based on the existing theoretical results and related cases,putting forward the following points: 1.The “original use scope” is not a component of the prior use of trademark rights.That is,when judging whether the trademark prior rights defense is established,the trademark should be used within the “original scope” was not a pre-judgment element,it should only be the limiting element for the continued use of the prior use trademark;2.The time point to define the “original use scope” is appropriate on the date when the trademark right holder claim his right.It is therefore more appropriate to change the “original use scope” of the legalprovision to “existing scope”;3.On the basis of the date of trademark right holder's claiming right,the use scope of the subject,goods or services and the geographical scope can be demarcated accordingly.The most important limiting factors are the geographical scope and the use scope of goods or services.The geographical scope includes two aspects,for the trademarks using on the goods,the geographic scope should be limited to the scope of the existing sales territory of the goods;for the trademarks using on services,the geographical scope should be limited to the region in which the influence of the trademark is used.The restriction of the scope of the goods or service means the goods or services the trademark can be used in the future should be consistent with the goods or services the trademark prior use.On the basis of restricting the use scope of the areas and goods or services,the use scope of the subject and usage mode of prior use trademark should be determined on whether it satisfied the requirement of “bona fide use”.This article aims to clarify the limited factors of the “original use scope” of the prior use trademark by researching the literature results,empirically analyzing the existing cases,and comparing the experience of extraterritorial experience.This article is divided into three chapters:The first chapter of this paper puts forward the current situation of judicial practice in the prior use right of trademark system that restricts the use of the trademark "original use scope".The main problems include: the time point of determining the scope of the prior trademark users can be continue using is not clear;the subject who can enjoy the defense of trademark prior use right is not clear;the limited factors defining the “original use scope” is not specific.The second chapter mainly analyzes the necessity and rationality of restricting the “original use scope” of the prior use trademark and introduced other countries or regions' relevant legislative and judicial experience like the United States,the United Kingdom,Japan,and Taiwan area of China.Analyzing how to balance the interests of two conflicting trademark users by restricting the scope of use throughcomparative research.The third chapter summarizes the specific factors that need to be considered in restricting the original scope of trademark prior use right system in China,including the subject of trademark prior rights defenses,the types of goods or services used in trademarks,geographical scope,production scale,etc.The deficiencies in the legislation proposed suggestions for improving the system to provide certain reference for judicial practice.