Recognition of Prior Use of a Trademark and Inheritance of the Prior User’s Rights

——Dispute over Trademark Right Infringement between Nantong Yuancheng Shipping Co., Ltd., and Shanghai BOGEASENI Enterprise Development Co., Ltd., etc.

[Abstract]

The trademark prior use system is established to supplement the trademark registration system and protect the interests of the prior user of a trademark. From another perspective, the system may serve as a legal tool for the prior user of a trademark to defense in good faith against malicious rush registration of the trademark. The recognizing of the prior use of a trademark shall comply with the purpose of Section III, Article 59 of the Trademark Law, fully meet the requirements specified therein, and consider whether the prior user of a trademark follows the principle of good faith. Meanwhile, in case of a change of control of the prior user of a trademark, depending on the purpose of the trademark prior use system and the continuity and consistency of the successor’ compliance with the principle of good faith and use, the successor may inherit the “prior user’s right of defense” arising from the prior user’s use of the trademark.

[Case Review]

Plaintiff: Nantong Yuancheng Shipping Co., Ltd.

Defendant: Shanghai BOGEASENI Enterprise Development Co., Ltd (hereinafter referred to as “BOGEASENI”)

Defendant: Shanghai No.1 Yaohan Co., Ltd (hereinafter referred to as “No.1 Yaohan”)

Defendant: Guangzhou Jinlin Leather Articles Co., Ltd. (hereinafter referred to as “Guangzhou Jinlin”) 

Recognition of Prior Use of a Trademark and Inheritance of the Prior User's Rights (I)

Recognition of Prior Use of a Trademark and Inheritance of the Prior User's Rights (II)

Recognition of Prior Use of a Trademark and Inheritance of the Prior User's Rights (III)