• Korea Trade Review
• /
• v.41 no.3
• /
• pp.157-176
• /
• 2016

This study is to investigate Trademark Prior Use Defence of prior use party under Trademark Law of the People's Republic of China. Chinese Trademark Law was amended for the third time and this Law shall enter into force on 1 May 2014. This third amendment introduced Prior Use Defence Right of Trademark for the first time. Article 59(3) gives the right to the prior use party for the continuous use of such trademark under the condition that first, an identical or similar trademark has been used in connection with the same goods or similar goods by others before the registrant's application, second, such trademark should have a certain influence in certain market, and third, such aforesaid trademark should be used within the original scope continuously. Then the exclusive right holder of said registered trademark shall have no right to prohibit others from continuous use of such trademark. Korean companies should be aware that it is almost impossible to search prior use trademark before a dispute arises, since the prior use trademark has never been registered. The best way to control the prior use trademark is to superintend aforesaid trademark for the use within the original scope.

• THE INTERNATIONAL COMMERCE & LAW REVIEW
• /
• v.69
• /
• pp.699-720
• /
• 2016

In the past 10 years, there have been lots of misuses of the trademark system in China. For example, some Chinese companies have registered same or similar oversea's well-known trademark as a prior rights holder, and oversea's companies lost a chance to register their own trademarks or commence cases to acquire their own trademark determination in China. So Chinese government revised Chinese Trademark Law in 2014 to remedy these mistakes. Article 30 is intended to crack down on preemptive registration and compensate for the possible unfair consequences resulted from the principle of prior registration. Under the principle of prior registration, only where the unregistered trademarks of prior use have certain influence, and where the applicant of latter applied trademark knows or should know the prior trademark and the applicant has the bad faith of obtaining unjustified interests from goodwill of such unregistered marks, it shall be curbed by Article 30. Furthermore, trademark oppositions could be filed by anybody previously. Under the revised Trademark Law Article 44, oppositions based on absolute grounds can still be filed by anyone, but oppositions based on other available grounds can only be filed by a prior rights holder or a materially-interested party with undefined but similar to the standing requirement for filing nullities under Article 41 of the old law, and likely intended to cover trademark licensees and successors.

• Journal of Information Technology Services
• /
• v.13 no.3
• /
• pp.129-148
• /
• 2014

Generally, the Internet Address Resources Act is intended to protect the public from acts of Internet "cybersquatting", a term used to describe the bad faith, abusive registration of Internet domain names. In determining whether a person has a bad faith intent, a court may consider factors such as, (1) the trademark or other intellectual property rights of the person, if any, in the domain name, (2) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person, (3) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services, (4) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name, (5) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site, (6) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct.