Prior use, also called the prior-use right, is the limited channel the Trademark Law leaves open for unregistered trademarks alongside the principle of registration-based acquisition: where a party has already used an identical or similar trademark on identical or similar goods before another's application for registration, and the use has reached a certain degree of influence, that party may continue using it within the original scope even after another later obtains registration. It is not an independent right capable of opposing registration, but a continuation-of-use right of limited scope.
Legal Basis
The third paragraph of Article 59 of the Trademark Law provides: before the trademark registrant filed the application for trademark registration, another party had already used a trademark identical or similar to the registered trademark on identical or similar goods before the registrant, and the trademark had gained a certain influence—the owner of the exclusive right to the registered trademark has no right to prohibit that user from continuing to use the trademark within the original scope of use, but may require the user to attach an appropriate distinguishing mark.
Constitutive Elements
CNIPA stated in its reply (Guo Zhi Fa Bao Han [2021] No. 77) that applying this paragraph requires all five elements to be satisfied simultaneously:
- Prior use: use had already begun before the trademark registrant filed the application;
- Use before the registrant: the prior use should in principle predate the registrant's own use of the trademark;
- A certain degree of influence: the use before the registrant's filing date had reached a certain degree of influence;
- Not beyond the original scope of use: the use must not exceed the original scope of goods or services, territory, and similar boundaries;
- Attaching a distinguishing mark: where the registrant requires an appropriate distinguishing mark to be attached, the prior user shall attach it.
The five elements are cumulative—none can be missing. Proving only "I was earlier than the other" is insufficient; a certain influence must also be shown.
Understanding "A Certain Influence" and "Original Scope of Use"
"A certain influence" is the most critical and most difficult element to prove in the prior-use defense. It means the prior use had accumulated a source-identifying function for the trademark among the relevant public, usually supported by sales data, advertising, media reports, and exhibition materials of continuous use. Occasional transactions confined to a very small area or a very short time are hard to establish as meeting this threshold.
"Original scope of use" is generally determined in judicial practice by combining the territorial scope and scale of the trademark use. Caution is needed: opening new branches, expanding to new cities, or extending to new product lines after the other party obtained registration may all be found to exceed the original scope. Use outside the existing scope falls back into infringement analysis.
Distinction from Neighboring Concepts
- From prior rights: prior rights are existing rights or interests lawfully enjoyed before the filing date, proceeding under Article 32; prior use protects the state of use of an unregistered trademark itself and is a defense, not an independent right;
- From non-use cancellation: non-use cancellation is a compulsory cancellation proceeding initiated against a registered trademark that has gone unused for three years after registration—an active attack; prior use is a defensive tool when accused of infringement;
- From fair use: fair use concerns generic names, place names, and descriptive elements contained in a trademark—paragraphs 1 and 2 of Article 59; prior use concerns the sign as a whole identical or similar to the registered trademark—paragraph 3.
Practical Points and Common Pitfalls
The most common pitfall is believing that long use naturally yields a defense. In practice, the other side often rebuts on the two points of "use before the registrant" and "a certain influence," and courts also consider whether the prior user knew or should have known that the registrant had been using the trademark—if evidence shows the prior user knew or should have known, the defense is generally not upheld.
Two practical suggestions for enterprises. First, file your own trademark application as early as possible: the prior-use right is only limited relief, covering neither new markets nor new categories, nor the scenario of proactive enforcement. Second, preserve earliest-use evidence from day one: first-run packaging bearing the trademark and dates, delivery notes, invoices, listing screenshots, and advertising contracts, archived by year. These materials will be used repeatedly in non-use cancellation defenses, opposition, invalidation, and infringement defenses.
How these concepts apply in specific cases still involves detailed differences; you may consult a registered agent via MyTMBee for case-specific analysis.