Article 15 of the Constitution of the Republic of China stipulates that the right of property shall be guaranteed to the people. This stipulation aims to assure that in the continued existence of ones’ property, people can exercise their rights to freely use a thing, collect profits therefrom and dispose their rights without being infringed by others’ legal acts. Bona fide prior use of a trademark give rise to a legal benefit which is a type of property rights. According to Article 15 of the Constitution, this benefit should be guaranteed. Consequently, under the condition that the State may not violate Article 23 of the Constitution, the State may only restrict the exercise of bona fide prior use of the trademark by law, and stipulate the range of the allowed restriction by law or orders authorized by law. In this way, the principle of proportionality stipulated in Article 23 of the Constitution and the protection of property right stipulated in Article 15 of the Constitution would be well-served.

The Trademark Act does not provide that after the licensing agreement between the bona fide prior user and the trademark right holder is signed, the legal benefit of the bona fide prior user shall cease to exist. Moreover, trademark licensing is not an assignment of a trademark. A licensee does not obtain the whole trademark rights. Therefore, there would be no question of merger of the rights even if the bona fide prior user and the trademark right holder is the same person.In a word, although the appellant corporation simultaneously owns the privilege deriving from bona fide prior use of the trademark at issue and is licensed to use the trademark during the term of the license, the legal benefit conferred by the Trademark Act can coexist with the trademark right.

As a licensee, the appellant corporation can exercise the trademark right which exceeds the range of bona fide prior use during the term of the license of the trademark at issue. After the licensing relationship expires, the appellant corporation can continue to exercise the legal benefits of a bona fide prior user, without being restricted by the right of the trademark at issue. The appellee may only, based on the actual need of trade, request the appellant corporation to affix appropriate labels to distinguish from the appellee’s trademark.

Property Rights、Bona Fide Prior Use、The Principle of Proportionality、Merger of Rights