Genuine Use of Trade Marks: Criteria and Assessment
Sammanfattning: The obligation to use a registered trade mark stipulated in trade mark law exists almost in every jurisdiction. It states that once a trade mark has been registered, the owner must show within several years that the mark has been put into genuine use in respect of the goods or services for which it has been registered. However, the interpretation of the term ‘genuine use’ is vague and it is unclear when this ‘genuine use’ is truly ‘genuine’. It is particularly crucial to have a concrete definition of this legal concept when disputes are involved. When it comes to one specific trade mark registry and jurisdiction, the criteria and assessment used by different administrative offices and courts may vary, which can make this issue even more controversial.
This thesis begins with an overview of the history of trade mark protection, seeking the roots of the establishments of trade mark rules. The second chapter presents an outline of the development of trade marks’ functions and connects it with the changing of laws and, subsequently, the assessment of the term ‘genuine use’.
Rules and practices in the European Union and China are the main subjects of this study. The current situation in China is particularly analyzed in the third chapter. While criteria such as the use should be ‘commercial’, ‘public’, ‘legitimate’ and ‘genuine’ were specifically settled in the applicable rules, there are generally two different approaches to understanding these criteria: a direct literal interpretation, and an in-depth interpretation that tests the underlying functions a mark was put into play. Although disparate decisions were held by different courts and administrative offices, it could be deduced from the Supreme People’s Court’s opinion that a considerably literal interpretation is predominating. This approach of assessment is not only rigid, and is ineffective to bring the entire regime’s function into play, but also leads to a constrained requirement of ‘legitimate’, which is incompatible with the entire system.
The fourth chapter deals with the situation in the European Union, which is basically the interpretation of ‘genuine use’ in the Trade Mark Directive. Followed by a stream of case law, the assessment of ‘genuine use’ is gradually being shaped out. When this assessment was based on the case-to-case circumstances, the ECJ, OHIM, CFI, and other national courts and offices used subjective or objective approaches respectively. Some principles to assess ‘genuine use’ in the EU, such as to exclude token use and to take all facts and circumstances into consideration are generally accepted and applied. It is still unclear whether the ECJ holds a pure subjective approach, yet the approach is persuasive and prevalent.
After analyzing the practices of the EU and China, the author collects evidence for reaching a general resolution. In addition to the situation where trade marks are undergoing an development in its functions, the study on the justifications of trade mark protection indicates that lower levels of requirements for ‘genuine use’ should be imposed since ‘investment’ somehow equals to ‘use’ from the proprietors’ perspective. Moreover, the author argues that trade marks become more informative, and therefore should be instead regarded as private assets and infinite resource, leading to a less restrictive interpretation of ‘genuine use’.
The author further concludes that both the EU and China should apply a broader interpretation of ‘genuine use’. The current Chinese system is comparatively simple and loose where use is rather easy to be proved by applying ‘literal’ interpretation of ‘genuine use’. However, a broader interpretation does not equal to loss of control. Chinese legislators can learn from the experience of the European Union. In the EU, the ECJ’s subjective approach is reasonable and sound. Following the rationales set forth in the previous chapter, the author argues that excluding token use, which is apparently out of the scope, ‘genuine use’ should be recognized as broadly as any ‘investment’ made.
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