Study On The Determination Of "Certain Influence" In The Clause Of Prior Use Right Of Trademarks

Article 59(3)of the Trademark Law provides a non-infringement defence for prior use trademarks,and one of the prerequisites for the application of this clause is that the prior use trademarks need to have “certain influence” in the market.However,in reality,there is no judicial interpretation to explain and clarify the definition of“certain influence” and the practical way of considering “certain influence”.The judicial practice of different courts in the relevant trademark disputes,in fact,are chaotic and nonstandard.“Certain influence” as a legal language is ambiguous in the text of trademark law,but this kind of legal indeterminacy is intentional and useful.The popularity of trademarks with “certain influence” are higher than those ordinary marks and lower than those well-known marks.The term “certain influence” suggests caution to the judiciary by its indeterminacy,at the same time,provides appropriate flexibility in assessing and measuring the value of the trademark as an intangible asset.The interests of prior users and registrants are balanced by setting a threshold for prior use marks.Such legislation recognises the prior use value of trademarks without shaking the foundations of the registration system.Meanwhile,the protection for people who own previously used trademarks will also be beneficial to reduce dishonest bussiness practices in the marketplace and form a good competition order and safeguard the interests of consumers.In addition,the exclusive effect of trademark preemption clause is much less than Article 32 of the Trademark Law and Article 6 of the Anti-Unfair Competition Law due to the clause can only claim continued use within the original scope of use.Therefore,the popularity of “certain influence” in the trademark preemption clause should be lower than the other two.The referee needs to conduct a specific analysis based on the actual situation and follow the principle of balancing interests and benefits when determining “certain influence”.Moreover,in this process,deemsters should pay attention to the elements such as time,region,and relevant public,respect those objective evidence,and introduce a limited degree of freedom when evaluating evidence.First of all,it should be clear that the degree of “certain influence” need not be too high.Secondly,the time when the influence is generated ought to be earlier than the date of the initial announcement of the registered trademark;the use of the trademark is not interrupted,so its impact can be continuous;the scope of the “certain influence” audience should be flexibly determined according to the specificity of the goods or services.Finally,with regard to other factors such as publicity and sales,we should combine a variety of quantitative and qualitative evidence to infer the cognitive level of consumers,so as to judge whether the influence of trademarks is formed or not.