Guide
Fair use of trademarks includes both narrative use and indicative use, and there are few disputes over narrative fair use in practice, while there are many disputes over indicative fair use due to the lack of statutory and clear judgment standards.
Related Perspectives:
1. There are three main types of indicative fair use
(1) Parallel use. The actor uses the relevant marks of other people's goods on his own goods, and uses them to show that his own goods truly contain the marked goods, which is very common in the field of processing and spare parts. The most typical is that there is often a "Intel" or "AMD" trademark on the computer host, which indicates that the computer's CPU belongs to the "Intel" or "AMD" brand, but the computer as a whole is still its own trademark. Parallel use is a mutually beneficial opportunity for both parties, as consumers will not only not be confused, but will also be more aware of the situation.
(2) Comparative use. The actor may use the registered trademark of another person by comparing his own goods (services) with the goods (services) of the registered trademark owner in the advertisement. Special attention should be paid to the fact that the comparison should be in line with the principle of good faith and business practices, not to belittle and slander the products of others, not to exaggerate the advantages of one's own goods, and not to scandalize and insult the registered trademark. The legality of this type of use is difficult to grasp, and most operators do not easily use other people's trademarks when comparing, but will generalize them.
(3) Reasonable use in maintenance services. When providing services, maintenance service providers or spare parts sellers need to point out to consumers which products their services are aimed at, and what services are available, which is also a requirement for consumers' right to know. Similarly, there are retail vendors who use the trademarks of the goods they sell on their business signs.
(Shen Deyong, ed., The Refinement and Application of Legal Rules: The People's Court's Judiciary and Case Restatement (Intellectual Property Volume), Law Press, 2012, p. 29)
2. Indicative fair use criteria
(1) The criterion is whether to use the words of another person's registered trademark as one's own trademark, or whether it is sufficient to indicate the source of the goods (services). The purpose of the actor's use of words and graphics in the registered trademark of another person is not to show the source of the goods, but only to explain the function or use of his own goods or services, and consumers will basically not confuse their goods with the registered trademark goods simply based on the relevant words or graphics. In other words, if the relevant words, graphics, and other elements are used directly as one's own trademark, or if they are not used as one's own trademark but are used as the name of a product, as long as their function serves to indicate the source, it should be regarded as infringement.
(2) In addition to the use of the words of another person's registered trademark, whether other explanatory words are added to indicate the difference between the two. If the actor uses another person's registered trademark and adds descriptive words such as "main ingredients", "function", "method of use", etc., which greatly reduces the possibility of confusion and should not be regarded as infringement. The most important feature of indicative fair use is that there is some specific connection between the goods (services) of the actor and the goods (services) of the registered trademark owner, such as providing spare parts and maintenance services. The purpose of the annotated explanatory language is precisely to clarify the distinction and connection between the two.
(3) In addition to using the words registered by others, whether it is accompanied by its own trademark at the same time. If the actor uses the registered trademark of another person and his own trademark at the same time, and the distinction between the two is high enough, it will not cause consumers to misunderstand, and it should not be determined as infringement.
(4) Whether the distinctiveness of the words of the other person's registered trademark is deliberately emphasized, or whether one's own trademark or explanatory text is too diluted compared with the registered trademark of another. If the use of another person's registered trademark is prominent, and the descriptive words of one's own trademark or annotation are downplayed, or placed in an inconspicuous place, then it can be presumed that the perpetrator has subjective malice and is suspected of "free-riding".
(5) Based on business practices or opinions of industry associations. As a custom gradually formed by people in long-term practice, the content of business practice is relatively specific and fixed, and it is widely recognized and generally observed. Judicial organs may hear the opinions of relevant industry associations and make determinations of conduct in accordance with commercial practices.
(6) Whether it may lead to a decline in the profits of others and damage to the reputation of others. If the registered trademark owner has definite evidence to prove that the actor's use has directly caused damage to his reputation and a decline in business performance, and when the objective adverse consequences have already occurred, we can infer that the actor has infringed the right holder's trademark rights. In the author's opinion, this criterion should be used with caution, because it is not easy to prove the existence of a direct relationship between the two, and the subjective assumptions of judges should be avoided as much as possible, and the evidence must be direct evidence and accurate and credible.
In addition, it is necessary to combine the popularity and recognition of the registered trademark owner. If a registered trademark has a high reputation, as women and children know, even if the actor does not deliberately highlight the trademark when using it, but does not make a special explanation, the general consumer will subconsciously associate it with the well-known trademark. It should be noted that in specific judicial practice, the above-mentioned factors should be used comprehensively, and only with the help of experience can we make correct judgments.
(Shen Deyong, editor-in-chief: The Refinement and Application of Legal Rules: The People's Court's Judiciary and Case Restatement)
Related Cases
1. If the use of a trademark may cause the relevant public to mistakenly believe that there is a trademark license or other related relationship, it shall be deemed to be an infringement beyond the indicative use
——Shanghai Maisi Investment Management Co., Ltd. v. Victoria's Secret Store Brand Management Co., Ltd., a trademark infringement and unfair competition dispute
Gist of the case: A business operator who has lawfully obtained the right to sell goods may use the right holder's commodity trademark indicatively in the sale of goods, but it should be limited to indicating the source of the goods, and if it exceeds the scope necessary to indicate the source of the goods, it will constitute an infringement of the exclusive right to use the relevant service mark. If the accused infringer widely uses the service mark logo in many places and makes false publicity, such behavior may cause the relevant public to mistakenly believe that the sales service is provided by the trademark owner or has an association with the trademark owner such as trademark licensing, and it should be determined that it has exceeded the scope necessary to indicate the source of the goods sold, and has the function of indicating and identifying the source of the service, which constitutes an infringement of the exclusive right to use the relevant service mark.
Case No.: (2014) Hu Gao Min San (Zhi) Zhong Zi No. 104
Trial court: Shanghai Higher People's Court
Source: 50 Typical IP Cases in Chinese Courts in 2015
2. The comprehensive and prominent use of another person's registered trademark is a trademark infringement beyond the scope of indicative fair use
-- Gu Qinghua v. Lenovo (Beijing) Co., Ltd., a trademark infringement dispute appeal
The gist of the case: The indicative fair use of a trademark should be within a certain range, and the rules of indicative fair use must be observed, and the use of the trademark owner's trademark cannot be arbitrarily expanded on the grounds of description, and the act of going beyond the indicative fair use of the trademark constitutes trademark infringement. The alleged infringer comprehensively and prominently uses the registered trademark of another person in its business activities, subjectively has the intention of clinging to try to mislead consumers into believing that there is a specific commercial relationship, and objectively has also achieved the above-mentioned effect, which is an improper expansion of the right to reasonably indicate the source of the goods, which exceeds the reasonable scope of the indicative use of the trademark, and constitutes trademark infringement.
Case No.: (2014) Su Zhimin Zhong Zi No. 0142
Trial court: Jiangsu Provincial High People's Court
Source: Case Development Research Center, National Judges College, ed., 2016 Cases of Chinese Courts (Intellectual Property Disputes), China Legal Publishing House, 2016 edition.
3. The use of another person's registered trademark is only to indicate the brand information of the goods being sold, which is an indicative fair use of the trademark
Nippon Paint (China) Co., Ltd. v. Shanghai Zhanjin Trading Co., Ltd. and Zhejiang Taobao Network Co., Ltd., a trademark infringement dispute
The gist of the case: The alleged infringer's use of another person's registered trademark is only to indicate the brand information of the goods it sells, rather than to convey the trade name, trademark or business style of the operator, which is an indicative fair use of the trademark; the correspondence between the trademark and the goods approved for use has not been affected, and the alleged infringement will not cause confusion about the source of the goods, does not involve the reduction of the distinctiveness or popularity of the trademark, and has not caused damage to the rights and interests of other trademarks of the registered trademark owner, and should not be determined as trademark infringement.
Case No.: (2012) Hu Yi Zhong Min Wu (Zhi) Zhong Zi No. 64
Trial court: Shanghai No. 1 Intermediate People's Court
Source: Shanghai Court Reference Case No. 7