Fair use of trademark rights means that people other than the trademark owner use the trademark of the trademark owner in good faith in the form of narrative use, indicative use, illustrative use or parallel use in production and business activities without violating the rights of the trademark owner. Acts that constitute infringement of trademark exclusive rights. What is fair use of trademark rights?

Fair use of trademark rights refers to the good faith use of trademarks by persons other than the trademark owner in the form of narrative use, indicative use, illustrative use or parallel use in production and business activities. The trademark of the right holder does not constitute an infringement of the exclusive right to use the trademark. Fair use of trademarks is increasingly recognized by various countries and regions and is reflected in relevant legislation. For example, when Japan revised the Trademark Law in 1991, it stipulated the following restrictions: (1) Others use one’s likeness, name, name, nickname, stage name, and pen name in a normal way; (2) Others use one’s own portrait, name, nickname, stage name, and pen name in a normal way; (2) Others use one’s own image, name, pseudonym, or pseudonym to represent the goods or services in a normal way. Or the common name, origin, place of sale, quality, raw materials, performance, use, shape, price, etc. of similar goods or services; (3) Descriptions of goods or services made by others in a normal way, as long as the use in the above circumstances is in good faith of and legitimate. Article 23 of the Trademark Law of Taiwan stipulates that any person who uses a good faith and reasonable method to express his or her name or the name, shape, quality, function, origin or other description of the goods themselves, Appendix 1 On goods that do not function as trademarks, they are not bound by the validity of other people’s exclusive rights to trademarks.

In fact, since the 1990s, some regional or global international conventions involving trademarks have affirmed the fair use of trademark rights. For example, Article 6 of the European Union Trademark Regulations stipulates that the trademark owner has no right to prevent third parties from using their own names or addresses in commerce, signs related to variety, quality, quantity, price, origin and other characteristics. Provided that such use is consistent with honest practice in industry and commerce. Section 33b(2) of the Lanham Act of the United States stipulates that the use shall not be as a trademark, but the use of the personal name of the party concerned, or a noun that is descriptive of the party's products or services, or geographical origin. or graphic use, as fair use. The "Opinions on Several Issues in Trademark Enforcement" issued by the State Administration for Industry and Commerce pointed out that using one's own name or address in good faith, or explaining the nature or attributes of goods or services in good faith, especially the quality and purpose of goods or services , geographical origin, type, price and date do not constitute trademark infringement. The above-mentioned provisions of my country's Trademark Law Implementation Regulations are actually an affirmation of this administrative law enforcement opinion. Criteria for Judgment of Fair Use of Trademarks

When a trademark infringement case occurs, the defendant can invoke Article 49 of the Implementation Regulations of the New Trademark Law to defend fair use. However, in different cases, the text and graphics used by the defendant are diverse and complex. Whether fair use is established requires detailed analysis of specific issues. More importantly, the provisions of Article 49 of the Implementing Regulations are very principled and there is a large area of ??ambiguity. The relevant explanations have not yet appeared, so many problems will be encountered in practice.

1. In addition to using words and graphics that are the same as or similar to others’ trademarks, the judgment criterion is whether other explanatory words are added to indicate its “explanatory nature”.

In order to describe the model, quality, main raw materials, functions, uses, weight, quantity and other characteristics of this product, the merchant may have to use other people's trademarks, but if the merchant adds "main" before the trademark "Ingredient", "function", "how to use" and other descriptive words can greatly reduce the possibility of confusion. For example, a manufacturer that produces mobile phone batteries for Nokia mobile phones marks the characters "FOR NOKIA" in a prominent position on the battery. The presence of the characters "FOR" increases the distinction and should not cause confusion about the source of the battery. , is a fair use.

2. The judgment standard is whether the words and graphics used by the defendant are used as trademarks, or whether the words or graphics are sufficient to identify and distinguish the source of the goods.

Since the defendant did not use the The words and graphics serve as the subjective intention of the trademark, and are not objectively sufficient to identify the source of the goods. Consumers will basically not confuse the goods based on the words and graphics, so such use will not infringe the trademark rights, but is a fair use. category. For example, the well-known American brand Pepsi-Cola once prominently used the word "No. 1" in its TV commercials, print ads and its delivery trucks. "No. 1" is the trademark of another well-known beverage of the same type. Pepsi-Cola was sued for this . However, during the trial, the court held that the main purpose of using this word in various Pepsi-Cola advertisements was to show that Pepsi-Cola's beverage quality was No. 1 based on the above standards. Pepsi-Cola itself is a well-known brand. This statement of quality first is not enough to confuse consumers about the source of the product. It should be within the scope of fair use and does not constitute an infringement of the "No. 1" trademark right.

3. The judgment criterion is whether the significance of the descriptive text is deliberately emphasized when using the descriptive text.

The way in which the descriptive text is used is an important criterion for inferring the subjective intention of the user. . If the user places someone else's registered trademark in a prominent position on the product, or even enlarges the font, adds bright colors, performs artistic processing, etc. in order to attract attention, but places other descriptive words and his own registered trademark in an inconspicuous position, , then it is easy to infer that the user has the subjective intention of free riding, and objectively it is easy to cause consumers to confuse the source of the product, so it should not fall within the scope of fair use. For example, if the manufacturer that produces mobile phone batteries for Nokia mobile phones mentioned earlier marks the characters "FOR NOKIA" in a prominent position on the battery, it deliberately highlights the characters "NOKIA", and places its trademark in an inconspicuous place and replaces the characters with "FOR NOKIA". If "FOR" is reduced as much as possible or even not marked, then we can see that the user has the intention of free riding, and objectively it is easy to cause misunderstanding. This kind of use is obviously not fair use.

4. The judgment criterion is whether it is also marked with its own trademark.

If the user uses words and graphics that are the same or similar to others’ registered trademarks as descriptions of his own products. If the product is also marked with its own product, it can be inferred that the user is using it more as a product description, with little or no intention of unfair competition or free riding, and generally this use will not lead to misunderstanding of the source of the product. , then this should count as fair use. For example, Lenovo Computer marked the trademark "Intel Inside" to emphasize the quality of its CPU and also marked its own trademark "Lenovo", which should be considered fair use. On the contrary, the user's intention of unfair competition is more obvious.

5. Use business practices and opinions of industry associations as judgment criteria

If the name used by the user is his or her own name, trade name, or the name, shape, origin, etc. of the product, Relatively simple and easy to identify. However, the explanatory text on the quality, function, etc. of the product has a wide range and it is difficult to distinguish. At this time, it is very important to understand the business practices. If a lawsuit occurs, consult the industry association for opinions before making a judgment. It's easier. For example, on many tapes and CDs, the theme or main song is often placed in a prominent position on the front, while the production, introduction, and distribution company and trademark are placed on the back or side and marked in smaller fonts. This seems to be contrary to the intention of fair use, but in fact it is the business practice of the recording industry. Their use is nothing more than consistent with common commercial methods, so it should be fair use.

6. The criterion for judging is whether the plaintiff may suffer a decrease in profits and damage to reputation due to the defendant’s use

Objective consequences are also an important criterion for fair use of a trademark.

If the plaintiff's reputation is damaged and its business performance drops significantly after its trademark is used by the defendant, as long as there is definite evidence to prove that there is a direct connection between such consequences and the defendant's use, it can be concluded that the defendant's use infringed the plaintiff's trademark. rights, thereby damaging the plaintiff's normal business activities, it should be an act of unfair competition, and is excluded from the fair use of the trademark.

The above six criteria are not mutually exclusive. In many cases, we must clearly examine the facts and comprehensively use various criteria to make a more pertinent judgment. Relevant experience still needs to be practiced. China is rich and relevant systems need to be improved.

For example, in real life, some businesses try their best to circumvent the law in order to free ride. They register other people's trademarks, especially well-known trademarks, as their own trade names, and then deliberately place the trade names on their own products. Prominent positioning of the logo, and placing one's own trademark in the corners, thereby achieving the purpose of confusing consumers. When they use it, they generally do not add other explanatory words to show its "explanatory nature" and deliberately emphasize the distinctiveness of the words. They generally do not mark their own trademarks at the same time, or even if they mark their own trademarks, they In a non-prominent position, in short, its purpose is to confuse the source of the goods and seek improper benefits. So according to the above standards, this behavior obviously exceeds the scope of fair use and should be an infringement of trademark rights. However, this behavior has not been effectively curbed for a long time. With the emergence of Article 53 of the new Trademark Law Implementation Regulations, this situation will change.

This article stipulates: “If a trademark owner believes that others have registered its well-known trademark as a business name, which may deceive the public or cause misunderstanding to the public, he may apply to the competent authority for business name registration to cancel the business name. Enterprise The name registration authority shall handle the matter in accordance with the "Enterprise Name Registration Management Regulations". Articles 5 and 21 of the "Anti-Unfair Competition Law" also have similar provisions. The "Opinions on Solving Certain Issues in Trademarks and Business Names" promulgated by the State Administration for Industry and Commerce specifically stipulates this issue. Its main purpose is that if the two do not cause confusion, they will not constitute infringement or unfair competition. It can be seen that the fair use of a trademark should be limited to the descriptive use or mention of the goods or services, and must not cause confusion, otherwise it will be an infringement of trademark rights. Through a correct understanding of the fair use of trademark rights, we can more comfortably deal with various free-riding behaviors in reality. Types of fair use of trademark rights

Fair use of trademark rights is of great significance to achieving a balance of competitive interests in trademark law. Some scholars pointed out that in judicial practice, courts should achieve a delicate balance between reducing the possibility of confusion and allowing fair utilization. However, this does not mean a balance based on competition itself. Direct competitors sometimes need to mention the competitor's trademark. Uses such as comparative advertising and illustrative purposes are necessary for fair competition, promotion of consumer interests and freedom of expression. The reasonable use of trademark rights is embodied in the following aspects:

1. Narrative fair use

Fair use broadly applies to narrative uses of trademarks, especially the use of narrative trademarks. Narrative fair use protects the freedom of producers and operators to describe the goods they produce and operate. In essence, it gives competitors the right to describe their own products. As U.S. Judge James Holmes said: "Trademark rights only serve to prevent others from selling their goods as the rights holder's goods. If the use of a trademark is only to inform the truth and not to deceive the public, we do not see why it should be prohibited." "This is specifically reflected in the good faith use of the common name of a product or one's own name, address, place of origin, etc. to provide basic information about goods or services, which does not constitute infringement of the trademark rights of others.

From the perspective of judicial practice, narrative fair use of trademark rights has received attention. For example, in the US case of Playboy Enterprises Inc. v. Wells, the judge expressed the concept of fair use of trademarks: "The trademark owner cannot prevent others from correctly describing the characteristics of its products, and therefore cannot treat the right to use the trademark for general description as a exclusive to it.

” ?In the case of CD Solutions, Inc. v. Tooke, the plaintiff, a CD manufacturer and registered trademark "CDS", requested the court to declare that its domain name "cds.com" did not infringe the trademark rights of the defendant who provided desktop publishing and printing services. The court supported the plaintiff's request on the grounds that "CDS" was the abbreviation of "Compact discd" and the defendant had no right to extend its trademark rights to the plaintiff's general descriptive use of its own products in its domain name. In 1996, New York, USA. In a trademark infringement case heard by the Southern District Court, the court held that whether the defendant's behavior constituted an infringement on the plaintiff's trademark dilution did not need to consider whether there was a competitive relationship between the goods or services, nor whether consumers were confused. The key is whether the defendant can enjoy the exclusive right to the phrase "the best in the world", considering that the plaintiff's trademark is only a very common descriptive word, not an independent identifying word. , the court rejected the plaintiff’s claim.

2. Indicative fair use

Indicative fair use is for the purpose of objectively describing the characteristics and uses of goods or services in production and operation. The act of using someone else’s registered trademark in activities. Indicative fair use can also be seen from time to time in foreign trademark judicial practice. For example, the case of BMW suing Deenik for trademark infringement before the European Court of Justice is a representative case. In the case, the defendant was a car repairman who mainly dealt in BMW second-hand cars and engaged in the repair and maintenance of such cars. The defendant used the advertisement of "BMW Repair and Maintenance" without being an authorized dealer of BMW. The European Court of Justice held that the defendant had. The defendant has the right to use the plaintiff’s trademark for advertising when distributing second-hand cars, because this is necessary to ensure that the defendant can provide the public with information on the sales and maintenance of cars of that brand. At the same time, the defendant also has the right to use the plaintiff’s trademark to indicate the purpose of its services. In this way, the defendant can convey to the public the information that it has the ability to maintain this model. However, under no circumstances can the defendant mislead people into thinking that its business has a commercial connection with the trademark owner, and in particular, it cannot make people think that it is the owner of the trademark. Authorized dealers and repairers. Another example is the case of New Kids on the Block v. News America Publishing, Inc., which is even considered to be the first case to establish that indicative use is reasonable. The conditions for use are usually: first, if a trademark is not used, the specific goods or services cannot be described; second, the use of the trademark is reasonable and necessary for the production of specific products or services; third, The use of the trademark must not mislead consumers into thinking that the use is initiated and supported by the trademark owner

3. Descriptive fair use

(1) Basics of descriptive fair use Connotation

Descriptive fair use is also more common in the fair use of trademarks. Sometimes manufacturers and operators are involved in introducing the quality, functions, main raw materials, uses, product models, etc. of the products they produce and operate to the public. Basic product information may involve the use of other people's registered trademarks. Illustrative fair use is reflected in relevant intellectual property legislation. As Article 17 of the Intellectual Property Agreement stipulates, “Members may provide for limited exceptions to trademark rights, such as fair use of descriptive words, as long as such exceptions take into account the legitimate rights of the trademark owner and third parties.” Article 34 of the Trademark Ordinance of Hong Kong stipulates that trademark registration shall not interfere with any person's good-faith use of his or her own name or the name of a place of business, nor shall it interfere with any person's use of any good-faith description of the characteristics of his or her goods and services.

In practice, some trademarks are composed of common words that directly represent the raw materials, functions, uses, quality, etc. of the goods, and some are trademarks that directly contain place names. According to the provisions of Article 11 of my country's Trademark Law, if there is only the common name, graphics, and model of the product, it only directly represents the quality, main raw materials, functions, uses, weight, quantity, and other characteristics of the product, and it lacks any obvious Characteristic trademarks shall not be registered as trademarks.

However, if these marks have acquired distinctive features through use and are easy to identify, they can be registered as trademarks. This means that some trademarks can be registered because they have acquired “secondary meaning” through use. That is, after long-term use, they have the effect of indicating the source of goods and are recognized by consumers. However, there is still a gap in distinctiveness between these trademarks and those with made-up words. When others use the "first meaning" of these trademarks to describe their own products, they shall not be restricted by trademark rights. The reasons are: first, others' use of the original meaning is the use of resources in the public domain. This resource in the public domain should not be reduced because the registered trademark has acquired a "secondary meaning". Except for use in the sense of identifying goods, public domain resources themselves should always remain in the public domain. This is also necessary to ensure that the public can freely use written language and freely express ideas and exchange ideas. Second, the use of the mark by others will not cause confusion among consumers as to the source of the goods.

(2) Typical manifestations of fair descriptive use: fair use of geographical name trademarks

In terms of fair descriptive use, geographical name trademarks are subject to more restrictions. This is mainly because the place name itself is a very important public resource and information, and its degree of distinctiveness when used as a trademark is lower than that of ordinary trademarks. This means that when exercising trademark rights, the owner of a place name trademark should not restrict others from using the place name in a non-trademark sense. Otherwise, it will damage the public interest in using place names and cause an imbalance between the interests of the trademark owner and the public. The two judicial cases in my country introduced below are representative.

In the case of Chongqing Baishiyi Salted Duck Factory v. a food factory in Yuzhong District, Chongqing, the plaintiff's trademark "Baishiyi" was composed of three deformed characters of "Baishiyi" to resemble salted duck. The duck-shaped graphic was approved and registered and has been renewed to this day. In 1998, it was recognized as a famous trademark in Chongqing by the Chongqing Administration for Industry and Commerce. Since its establishment in March 1997, the defendant has marked "Authentic Baishiyi Flavor" in a prominent position on the packaging of its salted duck products, highlighting the three words "Baishiyi", but also noted the Changjiang trademark and factory name. and factory address. The plaintiff sued the defendant for trademark infringement. In this case, the court held that Baishiyi salted duck is a local specialty with a certain history. The plaintiff enjoyed the exclusive right to the Baishiyi trademark, but could not enjoy the exclusive right to the Baishiyi flavor. The defendant’s labeling of “Baishiyi Flavor” on the outer packaging of its products is only to indicate the flavor characteristics of the food. Moreover, the defendant marked its trademark, factory name and factory address, so that consumers would not be misunderstood. Therefore, the defendant did not infringe the plaintiff’s trademark rights.

Of course, in this case, the defendant’s use is not unlimited, that is, the defendant cannot use Baishiyi in the sense of a trademark, so it is not advisable to highlight the word “Baishiyi”.

In the above case, the plaintiff’s trademark was a place name trademark. Because the plaintiff improperly prohibited others from using the trademark reasonably and harmed the interests of the public, the Trademark Office revoked the registered trademark in accordance with the law during the trial of the case. The inspiration provided by this case is that how to protect the trademark rights of the trademark owner and prevent the trademark rights from being abused requires certain restrictions on the exercise of trademark rights, especially for those trademarks that are not distinctive enough. That said, the restrictions should be stronger - that is, a wider range of fair uses should be allowed. At the same time, the use of the geographical name trademark by the trademark owner's competitive manufacturers or the public cannot exceed the scope of fair use. Only in this way can the relationship between the interests of the trademark owner and the interests of the public be balanced.

4． Parallel use

As far as parallel use is concerned, it refers to the fair and inconspicuous use of goods bearing a previous trademark on one's own goods. American scholar Arthur Miller believes that this is also a form of fair use of trademarks. In real life, it is very common to assemble products bearing other people’s trademarks. According to the theory of parallel use, when a product bearing another's trademark is used as part of one's own products, as long as the trademark is not used prominently, causing people to mistakenly think that it is the trademark of one's own product, it is a fair use of the trademark.

This is also needed to promote the development of commodity trade, especially processing and accessories trade, and has therefore been affirmed by the trademark legislation of some countries. For example, Australia's Trademark Law stipulates that good faith use of a trademark to indicate the source of goods (especially accessories or parts) does not constitute trademark infringement. Article 23 of the German Trademark Act also has similar provisions. Restrictions on fair use of trademark rights

When measuring whether it constitutes any of the above forms of fair use, it should be subject to the following conditions:

1. The purpose of use is legitimate

This use is to describe the nature, quality, use, main raw materials, model, quantity and other characteristics of the product itself, rather than as a product trademark or service mark. , nor is it used in the sense of a trademark identifying goods that is closely related to it. In practice, the specific criteria for measurement are whether there is subjective intention to use the trademark as a trademark, and whether there are objective consequences that are sufficient to cause consumer misunderstanding.

2. The use is in good faith and legitimate

The standard of good faith is usually to see whether there is unfair competition, that is, whether the user has unfair commercial competition purposes with the trademark owner. The standard of legitimacy requires users to limit the use of words in a trademark to the unavoidable use of words to describe products or services, and not to highlight other people’s registered trademarks in use, or imply a certain relationship with the trademark owner’s products, thereby misleading consumers. adverse consequences. As the above-mentioned Section 33b(2) of the Lanham Act of the United States also stipulates, "Such use must be a legitimate and honest use solely for describing the goods or services of that party." In practice, some producers and operators, when performing "illustrative use", place other people's registered trademarks in a very prominent position, while placing their own registered trademarks in an inconspicuous place, or intentionally use other people's registered trademarks. Performing "artistic processing" to attract the attention of others is akin to "free riding" and is not a fair use of a trademark. In other words, good faith and fair use cannot cause confusion about related goods or services.

In general, the fair use of a trademark is based on good faith and good faith. It is a fair use of a trademark that is not based on the nature of the trademark. It is also a way of describing and reminding the goods or services. Or the use is descriptive, which can neither cause confusion among consumers nor dilute the trademark.