The Logo that has been Used for a Long Time is not a Registered Trademark, But the Trademark has been Registered by Others. Can the Original User Continue to Use the Logo?

2020/1/8

As long as it is still in the original range of use. To illustrate the situation, let's take an example: A opened a pastry shop in 2001 and it is doing very well. The pastry shop has been using the plum blossom pattern as its trademark, but it has not been registered. In 2007, B took the plum blossom design to register the trademark, and the use of the trademark is for clothing. Can A continue to use the trademark?

The third paragraph of Article 59 of the Trademark Law provides: "trademark registrant prior to application for trademark registration, others have been on the same kind of goods or similar goods ahead of a trademark registrant with identical with or similar to a registered trademark and has a certain influence of the trademark, the right to exclusive use of a registered trademark of people have no right to prohibit the user within the scope of the original use continue to use the trademark, but may require the additional appropriate difference." This section protects the rights of the prior user.

However, it should be noted that the provisions of the above paragraph have certain restrictions: Above all, prior user needs to precede the use of others, namely A must precede B to use. If B already began to use plum blossom trademark in 1999, A cannot be protected. Second, the time of use of the prior user must precede the time of registration of the trademark by others. This means that the usage time of A should be earlier than the registration time of B. If B was not registered in 2007, but registered the Plum Blossom trademark in 1997, then A would not be protected. Third, the intensity of use need to have a certain impact, that is, to be known in a certain geographical range.

If the above conditions are met, even if the trademark is registered by others, it can continue to be used in the original scope of use. The original range of use means that the original range of use is not exceeded. For example, the original use of the trademark on pastry, the future use must also be limited to pastry, can not be used to open a clothing factory or a car shop.