In case if your brand has already been in use for years but has not been registered before the local trademark office, and the same or similar name / mark has been registered by someone else preemptively. You must be wondering how to recapture the trademark registration and prevent the one to use it.
There are two completely different principles for the attribution (ownership) of trademark rights under trademark systems around the world, namely the " first-to-file principle" and the "first-to-use principle". As the name implies, "who has filed an application for trademark registration earlier" or "who has been using the mark commercially for earlier" can obtain the exclusive rights to a trademark.
Some jurisdictions are clearly show that the adoption of "first-to-file principle" or "first-to-use principle". However, there are also different opinions in some jurisdictions, for example Hong Kong. Historically, the earliest trademark system follows the "first-to-use principle", especially in common law jurisdictions. Later, due to the judgement of “prior application” is more convenient than "prior use", the "first-to-file principle" has gradually become the majority. Among all, China is the most familiar country that explicitly adheres to the "first-to-file principle", whereas the United States and Canada clearly adhere to the "first-to-use principle".
The United States adopts the "priority of use principle" for the establishment of trademark rights mainly based on the following judgments: -
includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify and distinguish his goods ... from those manufactured or sold by others....15 U.S.C. § 1127 (emphasis added).
The requirements of both adoption and use devolve from the common law; trademark rights in the United States are acquired by such adoption and use, not by registration. Armstrong Co. v. Nu-Enamel Corp., 305 U.S. 315, 334, 59 S. Ct. 191, 200, 83 L. Ed. 195 (1938); United States v. Steffens, 100 U.S. (10 Otto) 82, 92, 25 L. Ed. 550 (1879).
Concomitantly, the right to register a mark flows from and follows its adoption and use in trade. Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265-66, 185 USPQ 1, 5 (5th Cir. 1975).
"Adoption" is a threshold condition to the establishment of trademark rights. See Kohler Mfg. v. Beeshore, 59 F. 572, 576 (3d Cir. 1893) (one must intend "to adopt [the mark] as a trademark").
"Mere invention, creation, or discussion of a trademark does not create priority rights", Gilson, Trademark Protection and Practice Sec. 3.03, at 3-46.5 (citing Rolley, Inc. v. Younghusband 204 F.2d 209, 211-12, 97 USPQ 252, 254 (9th Cir. 1953)).
Hong Kong still adopts common law legal system and recognizes common law rights of unregistered trademarks like other common law jurisdictions. Meanwhile, Hong Kong's Trade Marks Ordinance, Cap. 559, states that the Ordinance only protects registered trademarks (section 10(3) No proceedings lie to prevent, or to recover damages for, the infringement of an unregistered trade mark; but nothing in this Ordinance affects the law relating to passing off.) and "commercial use" is not a requirement for registration, therefore, the prerequisites of obtainment of trademark rights of Hong Kong and the United States are not same.
Contrary to the United States, mainland China clearly adopts the "first-to-file principle" regarding the attribution of trademark rights, which is mainly based on the following provision of its Trademark Law: -
Article 31 Where two or more applicants of trademark registration apply for identical or similar trademarks on the same or similar goods/services, the trademark that was first to file shall be preliminarily approved and published; if the applications are made on same date, the trademark that was first to used shall be preliminarily approved and published, the applications of others shall be rejected and not published.
However, the situation of prior use of an unregistered mark in Hong Kong will be considered in accordance with "honest concurrent use" under Section 13 of the Trademark Ordinance. In case of sufficient evidence, the Registry will accept an earlier in-use mark become registered even if any earlier registrations exist. Meanwhile, the prior use of an unregistered mark is clearly an exception to Article 19 that do not constitute an infringement of a registered trademark.
(1) Nothing in section 12 (relative grounds for refusal of registration) prevents the registration of a trade mark where the Registrar or the court is satisfied—
(a)that there has been an honest concurrent use of the trade mark and the earlier trade mark or other earlier right; or
(b)that by reason of other special circumstances it is proper for the trade mark to be registered.
(2)The registration of a trade mark under or by virtue of subsection (1) shall be subject to such limitations and conditions as the Registrar or the court thinks fit to impose.
(3)Nothing in this section prevents the Registrar from refusing to register a trade mark on any of the grounds mentioned in section 11 (absolute grounds for refusal of registration).
A registered trade mark is not infringed by the use by any person in the course of trade or business in Hong Kong of an unregistered trade mark or other sign in relation to goods or services if the unregistered trade mark or other sign has been so used in Hong Kong by that person or a predecessor in title continuously from a date preceding the earlier of—
(a)the date of first use in Hong Kong of the trade mark which is registered; and
(b)the date of registration in Hong Kong of that trade mark.
Therefore, we believe that Hong Kong adopts a hybrid system between the two principles, although, it is a common law jurisdiction. Even in any common law jurisdictions, challenging the trademark right of an earlier application / registration on the ground of earlier right of an unregistered mark, which is a helpless move, since there are certain requirements and difficulties on burden of proof, hence, the cost will be huge. Moreover, the rights of trademark protection may contain limitation or condition even you get the registration through such challenging. All in all, please keep in mind that the best way to protect your brand is to register it as early as possible, no matter which principle is being adopted where you are.
