Abstract: The boundary that distinguishes legitimate use of a trademark from infringing use is still whether the use will cause the relevant public to confuse and misidentify the source of the goods. This judgment can be considered from the subjective aspects of the user, the objective performance of his behavior, the objective results of his behavior, and the distinctiveness and popularity of the used trademark itself. Therefore, the defense of "fair use" is a remedy for good-faith users and cannot be abused by malicious users.

Fair use of trademarks has been a hot topic in the intellectual property community as early as 2007, and has become the first choice reason for defending against trademark infringement. There are also many cases in trademark administrative enforcement and judicial practice that determine that fair use of a trademark does not constitute infringement. The new Trademark Law promulgated on May 1, 2014 also improved the defense of fair use of trademarks and added the defense of "prior use".

But whether all fair uses are legitimate, that is, do not constitute trademark infringement, requires case-by-case analysis.

1. Descriptive use

Relevant legal basis Article 59 of the Trademark Law: the common name, graphics, model, or direct expression of the product contained in the registered trademark The owner of the exclusive right to a registered trademark has no right to prohibit others from using the quality, main raw materials, functions, uses, weight, quantity and other characteristics of the goods, or the place names they contain.

The owner of the registered trademark has no right to prohibit the shape of the goods contained in the three-dimensional mark registered trademark due to the nature of the goods themselves, the shape of the goods required to obtain technical effects, or the shape that makes the goods have substantial value. Fair use by others.

"Beijing Higher People's Court's Answers to Several Issues Concerning the Trial of Trademark Civil Dispute Cases" Article 26: What are the constituent elements of the act of fair use of a trademark mark? To constitute the act of fair use of a trademark mark, the The following requirements:

1. Use in good faith;

2. Not used as a trademark for your own products;

3. Use only to explain or describe yourself of goods.

2. Descriptive and fair use of a trademark

The descriptive use of a trademark means that the content or meaning of the trademark expresses the content of the goods designated by the trademark, or the composition and nature of the goods. , purpose, function, feature, quality, weight, quantity or other characteristics.

The descriptive and fair use of trademarks is mainly to protect the freedom of operators to describe their own products. Usually, the descriptive fair use has a "secondary meaning" and is composed of common names or graphics and place names. A weak trademark. Under normal circumstances, signs that are not distinctive, such as the common name, graphics, model of the goods, or signs that only directly indicate the quality, main raw materials, functions, uses, weight, quantity and other characteristics of the goods, shall not be registered as trademarks. If such a mark becomes distinctive after long-term use and can distinguish the source and origin of goods and services, it can be registered as a trademark. This is the so-called logo that has a "secondary meaning" due to use and can be registered as a trademark. When these common words acquire a "second meaning" and are registered as trademarks, if the non-trademark owner only uses the word in a descriptive sense, and this use will not cause consumers to misunderstand the source of the goods or services or confusing, such use shall be a fair and descriptive use of the trademark.

So, if someone else uses the above-mentioned trademark that has been successfully registered for obtaining "secondary meaning" on their own goods, it is only to express the name, type, location, etc. of the goods in good faith, Such use will not be judged as infringement of the exclusive right of a registered trademark. However, not all descriptive uses can be regarded as "fair uses". For example, as listed above in the "Beijing Higher People's Court's Answers to Several Issues Concerning the Trial of Trademark Civil Dispute Cases", descriptive uses must meet the above three requirements. , can it be regarded as "fair use". Accordingly, the court did not recognize the defense of "fair use" in the following cases:

Qiliangye Case

The plaintiff, Yibin Wuliangye Co., Ltd., is the owner of the well-known liquor brand "Wuliangye" Everyone.

The defendant in this case is Beijing Yinwubao Liquor Co., Ltd. The plaintiff claimed that the defendant mass-produced and sold 53-degree liquor with the name "Qiliangye"; and used "Zhongyuan Qiliangye" on the products it produced, and used "Qiliangye" prominently as a trade name. Therefore, It infringed the plaintiff's ownership of the "Wuliangye" trademark.

The defendant argued that "Qiliangye" and "Zhongyuan Qiliangye" were used descriptively and in the sense of trade names, not as trademarks, so they were fair uses; The liquid is used in good faith and there is no intention to imitate famous brands.

The case was later heard by Beijing No. 2 Intermediate People’s Court: The defendant’s alleged descriptive fair use should meet the following conditions: 1) only to describe its own products; 2) such use is in good faith and reasonable ; 3) It should be used descriptively, not in the sense of a trademark. In this case, the defendant claimed that its product was brewed from seven types of grains, but did not provide sufficient evidence to prove it. Moreover, even if the purpose of introducing, promoting, and explaining to consumers that the liquor produced contains seven kinds of grains, the ingredients can be described by marking them on the ingredient list or explaining them in advertisements and publicity. However, the defendant’s use of the word “Qiliangye” prominently went beyond the reasonable scope of using “Qiliangye” as a trade name to describe product raw materials. Therefore, the defendant’s use of the word “Qiliangye” should be restricted. , descriptive use must be made within a reasonable and legitimate scope, otherwise the plaintiff’s claim cannot be defended on the grounds of fair use.

In the end, the court ruled that the defendant's use of "Qiliangye" infringed on Wuliangye's exclusive trademark rights, and ordered the defendant to stop producing and selling "Qiliangye" liquor products; it also compensated the plaintiff 50,000 yuan in financial compensation. losses etc.

3. Fair use of indicative trademarks

Indicative use of trademarks means that in order to clearly describe their products, the product owner inevitably needs to mention the registered trademark of others. Otherwise the description of its product will be vague. The use of a registered trademark for this purpose can be regarded as fair use and does not constitute an infringement of the exclusive right to use the registered trademark.

There are no clear provisions in the Trademark Law regarding the fair use of trademark indicators. However, in the determination of actual cases, the above-mentioned "Beijing Higher People's Court on the Trial of Several Trademark Civil Dispute Cases" The three elements of "Answer to the Question" are still the main basis for review and judgment.

VOLVO case

The plaintiff, Volvo Trademark Holdings Co., Ltd., is the owner of the registered trademark ?VOLVO?. The defendant, Ruian Changsheng Filter Co., Ltd. of Zhejiang Province, declared to the customs the export of Syrian filters. The product was marked with the words "FORVOLVO" in eye-catching, large English letters, and the word "REPLACE" in small font below; The name of the manufacturer and defendant was not clearly stated on the merchandise or the outer packaging box, nor was there the name of the defendant's customer.

The Shanghai Pudong New Area People’s Court held that the defendant’s behavior did not constitute fair use of the registered trademark. Because the defendant used the word "FORVOLVO" prominently in a larger font on the filters it produced without the plaintiff's permission, and the meaning of the word "FORVOLVO" it used was unclear, and it did not indicate the product manufacturer's name on the product. Words that can identify the source of the goods can objectively make consumers think that the source of the goods has some connection with the registrant of the "VOLVO" trademark. Therefore, the defendant's behavior does not constitute a reasonable use of the registered trademark and constitutes a violation of the plaintiff's registration. Infringement of trademark exclusive rights.

Summary

The boundary that distinguishes legitimate use of a trademark from infringing use is still whether such use will lead to the possibility of confusion and misunderstanding among the relevant public about the source of the goods. This judgment can be considered from the subjective aspects of the user, the objective performance of his behavior, the objective results of his behavior, and the distinctiveness and popularity of the used trademark itself. Therefore, the defense of "fair use" is a remedy for good-faith users and cannot be abused by malicious users.