Trademark laws, to a certain extent, are universal. We have international treaties, international registration systems, similar classification systems, etc. Then, there are two major legal systems in this world, common law and civil law. So should we bother with the two systems, from the perspective of trademark laws?
Short Introduction of Common Law and Civil Law
We didn’t have space to talk through adequately here how these two systems differ from each other. To make sure we are on the same page, here comes a very brief summary:–
1. Common Law jurisdictions: The United Kingdom, the United States, Canada, Australia, New Zealand, India, Israel, Singapore, Hong Kong, Nigeria, South Africa etc.
2. Common Law in One Sentence: Short and simple legislations subject to judicial interpretation and application (case laws).
3. Civil Law jurisdictions: Europe, China, Japan, Taiwan, Russia, Brazil, Turkey, Egypt; etc.
4. Civil Law in One Sentence: A comprehensive and codified set of legal statutes created by legislators, defining what cases can be brought to court, the procedures for handling claims, and the punishment for an offence.
First-Use vs First-File – The Major Difference
Coming back to our question, a short answer is yes. Legal System Matters! It is particularly worth mentioning a major difference between the two legal systems regarding trademark laws, namely, “first-use” and “first-file”.
In common law jurisdictions, trademark right is based on “first-use”. By way of contrast, trademark right stems from “first-file” in civil law jurisdictions. To illustrate, we set up the following scenario for easy understanding.
Amy’s “Pinky Girl” Journey
Amy retired from her management role in 2015 and turned her hobby into a small business of cakery workshop in Hong Kong. As Amy was always with a pink apron in classes, she is given the nickname “Pinky Girl”. In answering strong requests from her students, Amy started to sell a few signatory cakes to her students and their friends in 2016, which were very warmly received. Naturally, the boosted Amy started social media promotion with a Facebook/ Instagram page under Pinky Girl and expanded her Pinky Girl business to the adjacent mainland China. Unfortunately, without proper advice, Amy failed to appreciate the importance of registering her valuable “Pinky Girl” trademark either in Hong Kong/ China back in 2015/2016.
Since or around 2018, an Italian dessert shop called “Pinky Girls” (with waitresses in pink) has become an instant hit globally. In 2019, Pinky Girls landed Hong Kong and China with 20 shops opened. The Italian giant was very keen on brand protection and registered its “Pinky Girls” trademark globally including Hong Kong and China since its first launch in 2018.
A few days ago, Amy pumped into Jenny (a trademark lawyer) on the street. When learned about Amy’s “Pinky Girl” business, Jenny reminded Amy about trademark registration and offered to help Amy on a pre-application search (Should I Conduct a Pre-Application Search), which revealed that the possible “Pinky Girl” trademark applications in Hong Kong and China will likely be blocked by the earlier “Pinky Girls” registrations. So, what are Amy’s positions now in Hong Kong (a common law jurisdiction) and China (a civil law jurisdiction)?
With a “first-use” system in Hong Kong, when Amy started using the “Pinky Girl” mark commercially back in 2015, certain kinds of “trademark” rights were created. Specifically,
1. Since Amy started using “Pinky Girl” earlier than the “Pinky Girls” 2018 registration, the Italian brand could enforce its “Pinky Girls” trademark rights against the whole world but Amy.
2. Amy might even be able to secure “Pinky Girl” registration in Hong Kong by establishing “honest concurrent use”.
By way of contrast, Amy’s trademark situation will be proved much harder in China (“first-file” system). While China trademark laws, in general, protect “earlier rights”, there is a lack of specific provisions protecting Amy’s right to keep using her “Pinky Girl” brand in China even with Italian’s “Pinky Girls” registration. It is all but unknown if “evidence of use” help Amy’s case much given the high similarities between “Pinky Girl” and “Pinky Girls”. Even Amy started using “Pinky Girl” in China first (comparing to “Pinky Girls”), very limited rights will be available to her.
Common Law is better than Civil Law?
You may feel happy that Amy can still secure certain trademark rights on her own turf, but can we then safely conclude that the common law system should be preferred?
Admittedly, the common law system produces “fairer” results. Even Amy failed to register her “Pink Lady” trademark (how risky!!), she is able to enjoy some trademark rights. This should be right as trademark laws after all are borne to serve our business community, and good-faith commercial use plays an integral part.
Having said that, have you thought about putting your shoes into the Italian Dessert Shop? Before they secured the “Pinky Girls” registration in 2018, they might have incurred substantial costs to conduct a pre-application search globally to try to clear the risk. It would have been beyond their imagination that ends up they have to settle for the co-existence with the “Pinky Girl” mark. To say the least, the common law system produces “less certain” results for trademark registrations.
You TRAde SO you tradeMARK (TRASOMARK). To try to avoid complications in the future, file your trademark ONCE you start using it, regardless of common or civil law jurisdiction.
