Prior-use-right defense has just been recognized in China following the latest amendment of China Trademark Law in May, 2014. Ever since then, victims of trademark piracy in China have been anxiously waiting for an established case concerning such a defense. Luckily enough, a very first case came out very recently.
Shang Danni Hairdressing Center (the defendant) was established in 2008 and has been using “SHANG.DANI STYLING in Chinese characters” as its mark ever since then and has acquired certain reputation through various promotion channels. The plaintiff, Ms. Tan, whose husband was a former employee of the defendant, applied for registration of the trademark “SHANG DANI in Chinese characters” in August 2012 and obtained registration in January 2014. Right after that, the plaintiff lodged a lawsuit at a district court in Beijing against the defendant for trademark infringement and demanded a damage of 200,000 RMB YUAN. Through trial, the court affirmed that the conducts of the defendants fall into the category of prior use. Moreover, the plaintiff did not put her registered mark into actual use. Accordingly, the court rendered the first-instance judgment that the plaintiff is not entitled to prohibiting the defendant from continuously using the mark at issue.
With the case still opening for appeal, there are several issues remaining unsolved by this case:
- The case has not given a clear definition as to how many years of use prior to the filing date of the trademark application can constitute “prior use”;
- According to the trial, the plaintiff had not used her registered mark by the time when she lodged the lawsuit. So the question is how would the case end if the plaintiff had put the mark into use.