Article 30, Paragraph 1, Subparagraph 3 of the Trademark Act before the 2011 Amendment stipulates that “a person having a bona fide intent to use an identical or similar mark in connection with identical or similar goods and services, prior to the filing date of another’s registered trademark, should not be prohibited by the trademark owner.”

The exact provision could be found in Article 36, Paragraph 1, Subparagraph 3 of the current Trademark Act, without any changes on the legal text. The regulatory purpose of prior and bona fide use of a trademark is to strike a balance between the registrant and the prior user of a mark under the first-to-file principle.

In consideration of the regulatory purposes of the Trademark Act, which are to protect trademark rights and the interests of consumers, to maintain fair competition in the market, and to facilitate the development of industry and business, the term “bona fide intent” not only indicates lack of knowledge of the other’s trademark registration, but also indicates lack of knowledge of any prior user of the mark and without any intent of unfair competition. If a person is aware of the other’s prior trademark use but still use a mark identical to or similar to the other’s unregistered trademark in an attempt to piggyback on the goodwill established by the other, such person does not have a “bona fide” intent. Even though such person’s trademark use is prior to the other’s filing date, the “bona fide intent” requirement is not met.

prior and bona fide use, free riding on another’s goodwill