PRIOR USE. Is the right of prior use on the trade mark bounded by the particular product or it embraces all products of the same sort?

НМ 20,08,2014

In case when one suddenly faces the need to identify measures of the prior use right one should strictly stick to the scope of rights indicated in the Certificate of the trade mark owner. The idea of the prior use right presupposes that certified owner must not have the right to restrict the use of the mark to those who have started use of the particular trade mark for some particular goods and /or services in good faith before the certificate was granted to the current owner; or to those who have performed profound preparation to produce such goods or to offer such services. The prior use right may be found in Court after consideration of proofs and evidence provided by Mr. X who wants to get this prior use right. Those proofs and evidence presented by the granter (Mr. X) of the prior use right may refer to the particular goods and services (indicated in the Certificate as those under protection) or as well to those that belong to the same sort of goods and / or services indicated in the certificate.

In case if Mr. X uses this designation (trade mark) for the goods and services that are not indicated in the Certificate of the trade mark current owner and performs such action before the date when the said Certificate was granted then the Certificate’s owner does not have any right to restrict / forbid Mr. X to use the trade mark for those goods and services.

On the other hand if Mr. X who has the right of prior use would start use the designation (trade mark) for another goods and services (for those he was not granted the prior use right) and perform such actions after the date when application was filed by the future Certificate’s owner then the owner of the Certificate will gain the right to restrict / forbid such use.

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