1. Theoretical basis for the nominative fair use of trademarks

Nominative fair use, also known as the mentioned fair use, refers to the business operators’ use in commercial activities. Use others' registered trademarks in good faith and reasonably to objectively explain that one's own goods or services are derived from others' goods or services, or to objectively indicate the purpose, service recipients and other characteristics of one's own goods, which are related to other people's goods or services. This rule was first established by the U.S. Court of Appeals for the Ninth Circuit in 1992 in the case of New Kids On The Block v. News America Publishing, Inc., that is, as long as the defendant’s use of the trademark is intended to describe the plaintiff’s goods, rather than its own For goods, when the following three conditions are met, the (defendant) commercial user has the right to raise an indicative fair use defense: first, the goods or services involved are not easily identifiable without the use of a trademark; second, the use of the trademark must be in order to identify the goods or services to the extent reasonably necessary; and finally, such use does not imply sponsorship or support by the trademark owner. Since then, the judicial practice in the United States has continuously revised this rule. At the same time, the trademark legislative systems of many other countries or regions have also stipulated this rule. For example, Article 12 of the European Homologous Trademark Regulations stipulates that: The owner of a Homologous Trademark has no right to prevent third parties from using in the course of commerce: ...(c) a sign that is necessary to indicate the purpose of goods or services, In particular, trademarks used to indicate the purpose of parts and components of goods; provided that such use is consistent with honest practice in industrial and commercial business. Article 13 stipulates: The owner of the ***Tongti trademark has no right to prohibit the use of the ***Tongti trademark on goods that have been put on the ***Tongti market marked with the trademark by him or with his consent.

Indicative fair use and descriptive fair use constitute the two cornerstones of fair use of trademarks. Different from descriptive fair use, in the first sense, using descriptive words or signs that lack distinctiveness in other people's trademarks to describe the basic information of the goods or services provided by the user itself does not essentially constitute a violation of the trademark law. When using someone else's trademark, fair use indicative means direct use of someone else's trademark, and the trademark directly refers to the trademark owner's goods or services, rather than the user's own goods or services. Judging from current judicial practice, indicative fair use mainly involves two types: one is the use of other people’s trademarks for the purpose of describing the characteristics or uses of goods or services, especially the description of the use of product parts or accessories, services description of the object, etc.; the other is for the exhaustion of trademark rights. Goods put on the market with the permission of the trademark owner or by other legal methods can be resold by others after being purchased, or they can be promoted in advertisements and then trademark for use. In the above two situations, the use of other people's trademarks is necessary, otherwise it will be difficult to identify the purpose of the goods and the content of the services, which may improperly affect the circulation of goods or the provision of services in the market.

2. Judicial determination standards for fair use of trademarks indicative terms

my country's trademark legislation only involves provisions on fair use of descriptive terms, such as Article 49 of the "Regulations on the Implementation of the Trademark Law" According to the regulations, there is still a lack of corresponding regulatory basis for indicative fair use. In contrast, my country's departmental regulations already involve some provisions on indicative use, such as the "Notice on Prohibiting Auto Parts Sales Stores and Auto Repair Points from Using Others' Registered Trademarks without Authorization" issued by the State Administration for Industry and Commerce in July 1995. ", and the "Notice on Prohibiting the Unauthorized Use of Others' Registered Trademarks as Company Names and Business Signs of Specialty Stores (Specialized Repair Shops)" issued in June 1996, etc. all require that without the permission of the trademark registrant, others are not allowed to use the registered trademark as Used as the corporate name or business sign of a specialty store, specialized store, or specialized repair shop. However, because the above-mentioned regulations are not high-level and their content is not comprehensive, in judicial trials, the determination of indicative fair use is still based on the analysis of traditional trademark infringement theories. The author believes that the judicial determination of indicative fair use should be mainly grasped from the following two aspects:

First, for the user, it does not belong to use in the sense of trademark law, even if the purpose of use is not to mark goods or service source, just to illustrate or describe your own products.

Combined with the enumerated provisions of Article 52 of the Trademark Law on trademark infringements, as well as the corresponding provisions of the Implementation Regulations of the Trademark Law and the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Civil Trademark Disputes, the Trademark Law "The interpretation of the blanket clause on trademark infringement in Article 52 (5) shows that direct trademark infringements all emphasize the use of the infringing logo in the sense of a commercial logo, that is, regardless of whether the alleged infringing logo is used as a trademark or as a commodity. Names, product decorations, and company names all establish a specific connection with goods or services, and therefore have the significance of trademarks to distinguish the source of goods or services. When they cause confusion among the relevant public, they will be included in the adjustment scope of trademark infringement. . This kind of use in the sense of a commercial mark to distinguish the source of goods or services, that is, use in the sense of trademark law, is the basis for the function of a trademark and an important basis for reasonably determining the scope of trademark right protection. Trademark rights do not give the trademark owner a monopoly on the trademark symbol, but rather protect the trademark owner’s use of the trademark and the benefits arising from it, while prohibiting others from improper use in the sense of a commercial logo.

The judgment of use in the sense of trademark law should be comprehensively considered in conjunction with the external representation of the use of the logo and the likelihood of confusion among the relevant public. This includes the size, location, meaning, prominence, background and other related objective usage of the allegedly infringing logo, and comprehensively determines the general impression conveyed to the relevant public by the use of the logo, and whether it is used as a logo to distinguish the source of goods or services. Or simply as a description of product or service content. Whether it causes confusion among the relevant public about the source of the goods or services is an important criterion for reversely judging whether the use of the mark is used within the meaning of trademark law. This confusion includes misrecognition of the source of the product and the relationship between the product producer and the trademark owner. misrecognition.

Second, no harm has been caused to the trademark owner’s trademark interests. This standard generally only applies to the second type of indicative use, that is, the use of other people's trademarks in the process of reselling goods. Regarding the types of damage to trademark interests, national legislation and judiciary have already covered it. For example, Article 13 Paragraph 2 of the European Homologous Trademark Regulations stipulates: The owner of a homologous trademark has legitimate reasons to object to the continued sale of the goods. , especially if the quality of the goods changes or is damaged after the goods are put on the market, the above paragraph (i.e., the owner of ***Tongti trademark has no right to prohibit goods marked with the trademark that have been put on the ***Tongti market by him or with his consent Products using the same trademark) are not applicable. The European Court of Justice also pointed out that if the resale of second-hand goods will cause damage to the reputation of the trademark owner, the principle of exhaustion of trademark rights will no longer apply, and the same is true for advertisements that damage the reputation of the trademark owner. The author believes that damage to trademark interests should be judged based on whether it hinders the function of the trademark. In addition to the basic function of identifying the source, trademarks also have derivative functions such as quality assurance, advertising, and recognition. The basic function of identifying the source, that is, the identification function, has been touched upon in the above discussion, and the establishment of indicative use does not involve hindrance to this function. The quality assurance function is essentially a guarantee function in the sense of commercial origin, ensuring that goods associated with a specific trademark have a certain quality level. When the quality of the goods changes or is damaged, resale will affect the quality assurance function of the trademark, which will in turn affect the reputation of the trademark owner and cause damage to the trademark rights of the trademark owner. The advertising and recognition functions focus more on the unique correspondence between the trademark and specific goods or services, and are positively related to the distinctiveness and popularity of the trademark. It is especially suitable for well-known trademarks, which are associated with a higher degree of taste and identity. When a trademark is used in a derogatory manner in advertising, affecting the inherent image and reputation of the trademark, it will also cause damage to the trademark owner's trademark interests.

3. Indicative use of trademarks and unfair competition

The judicial protection of intellectual property rights in my country has always required a deep understanding of the relationship between strengthening protection and differential treatment. Intellectual property rights themselves have diversity and differences. Various types of intellectual property rights have different characteristics and protection requirements. For example, trademark rights protect distinctive marks, and anti-unfair competition laws regulate intellectual achievements or distinctive marks adjusted by special intellectual property laws. Provide limited supplementary protection. Different intellectual property rights have their own special protection policies, protection standards and protection ideas. Intellectual achievements and commercial labels are protected from different angles. Each performs its own duties and responsibilities, and is individual and exclusive. , need to be treated differently. Related to this case, judicial regulation of indicative use of trademarks may also involve both trademark law and anti-unfair competition law.

Based on differences in law and technology, my country's definition of the scope of trademark infringement is somewhat different from that of Anglo-American or civil law countries. Therefore, when referring to and transplanting foreign trademark indicative fair use rules, we should also pay attention to the differences with our country's intellectual property legislative system. coordination. Reflected in judicial trials, special attention should be paid to distinguishing the different adjustment scopes of trademark law and anti-unfair competition law for indicative use of trademarks. Different claims bases may lead to differences in adjudication results.

The Trademark Law’s regulation of indicative uses of trademarks aims to regulate behaviors that hinder the function of trademarks. However, if an operator uses someone else’s registered trademark not only to promote the registered trademark owner’s goods, but also to use the registered trademark to The trademark publicity operator itself is sufficient to cause the relevant public to mistakenly believe that there is a special relationship such as sponsorship or support between the operator and the exclusive right holder of the registered trademark, such as mistakenly believing that the operator is a specialty store or special dealer of the exclusive right holder of the registered trademark. Such confusion or misunderstanding does not fall within the scope of confusion over the source of goods due to trademark use as regulated by the Trademark Law, but should be classified as unfair competition, which mainly involves false publicity. In the determination of unfair competition, a comprehensive judgment should be made based on the subjective intention of the alleged infringer, the unfairness of the behavior, the consequences of damage, etc., to determine whether the alleged infringement has reached an unfair level and whether a counter-infringement is required. Fair Competition Law provides relief. Correspondingly, one of the requirements for fair use of indicative trademarks in U.S. jurisprudence is that "the use does not imply the support or approval of the trademark owner", and in EU regulations regarding indicative use, "the use complies with the requirements of industrial and commercial business." "Honesty practices", to a large extent, correspond to the identification of unfair competition in our country.