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BONA-FIDE PRIOR USE OF TRADEMARK IS NOT A LICENSABLE RIGHT
Article 30 Paragraph 1 Subparagraph 3 of the Trademark Act provides that if, prior to the filing date of an application for registration of a trademark, another person or entity, acting in good faith, has used an identical or similar mark on the same or similar goods or services, then the prior user is not bound by the exclusive right of trademark use acquired by the subsequent registrant. But is bona-fide prior use as referred to in this provision merely grounds for defense against an accusation of trademark infringe-ment, or is it a right that can be assigned or licensed? This has been an important point of dispute in practice.
In an interpretation dated 27 February 2008, the Intellectual Property Office stated that bona-fide prior use is merely a ground for defense that may be relied upon to absolve a prior user of liability when sued for trademark infringement; it is not a right established under the Trademark Act. Accordingly, if a prior user is a manufacturer, such a defense applies only to bona-fide prior use by the manufacturer itself, and a "licensing" arrangement cannot make the same defense available to another user of the mark.