Viewpoints | The reform of the Trademark Law has brought these effects to applicants-from the principle of prior application to the emphasis on the obligation to use.
Published:
2023-12-13
China's trademark law has always been dominated by the principle of prior application. However, in recent years, some provisions in the current trademark law have gradually challenged this principle. The draft of the revision of the Trademark Law further emphasizes the obligation of use, protects the right of prior use, and clarifies the specific circumstances of reasonable use, correcting the tendency of emphasizing application over use in the past.
At the end of the year, the author recently received instructions from a number of regular law units to sort out the existing trademark system and plan ahead for next year's trademark work. Among them, many mentioned the main mark for defensive registration or registration of joint trademark requirements. However, on January 13 this year, the State Intellectual Property Office issued the "the People's Republic of China Trademark Law Revision Draft (Draft for Solicitation of Comments)" (this article is referred to as the "Draft for Solicitation of Comments"), which has made substantial amendments to the principle of prior trademark applications. It will have a greater impact on the trademark strategy of all trademark owners, so I will make a brief analysis here and hope to remind them.
China's trademark law has always been dominated by the principle of prior application. However, in recent years, some provisions in the current trademark law have gradually challenged this principle. The draft of the revision of the Trademark Law further emphasizes the obligation of use, protects the right of prior use, and clarifies the specific circumstances of reasonable use, correcting the tendency of emphasizing application over use in the past.
1. from the principle of prior application to emphasize the obligation of use.
The traditional trademark law is dominated by the principle of prior application, that is, whoever applies for a trademark first has the exclusive right to use the trademark. However, this principle has been challenged in current trademark law. For example, the provisions of Article 13 on unregistered well-known trademarks and the provisions of Article 15 on agent preemptive registration provide a basis for prior use. In addition, the provisions of Article 32 on prior rights and prior use with certain influence further expand the scope of protection of prior use.
The draft for comments on the revision of the Trademark Law further emphasizes the obligation of use. Article 5 of the draft stipulates that the use or promise of use of a trademark is a major prerequisite for trademark registration. This means that an empty application without actual use will be considered an invalid application. In addition, Article 14 of the Exposure Draft prohibits the repeated registration of the same trademark, which reflects respect for the use of existing trademarks. At the same time, Article 61 of the draft for comments obliges trademark registrants to submit instructions for use every five years to ensure that the trademark is truly used.
2. the right to protect prior use
In addition to emphasizing the obligation to use, the Exposure Draft further protects the right to prior use. Article 23 expands the protection of prior rights or interests, which is also the protection of prior use to a certain extent. Many prior rights want to be protected, must be through a certain degree of practical use to achieve a certain degree of visibility, such as the right to name, name and so on.
3. specify the circumstances of fair use
Article 62 of the draft for comments pays attention to the situation that a registered trademark has no right to prohibit others from using it, and further clarifies that a registered trademark cannot exercise power for specific bona fide use, fair use, and prior use. This provision reflects the respect and protection of the law for reasonable use behavior, and it is also a correction of the tendency to emphasize application and neglect use in the past.
The promulgation of the draft for comments on the revision of the Trademark Law undoubtedly further emphasizes the importance of the obligation of use and relatively weakens the importance of registration applications. This not only reflects the law's adherence to the principles of fairness and justice, but also reflects the law's respect and protection for actual use. Although it is only a draft for soliciting opinions and has not been formally adopted and entered into force, it is already obvious that there is a tendency to attach importance to actual use. Therefore, when trademark applicants carry out trademark layout in the future, they should proceed from the actual situation, determine their own purpose and scope of use, and avoid the practice of all types of registration in the past, so as to avoid the situation that they bear excessive actual use obligations or their authorized trademarks are invalid due to the inability to prove actual use after the trademark law is formally revised.
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