How to determine whether a trademark is being used fairly

In the event of a trademark case, the defendant may invoke Article 49 of the New Implementation Regulations to raise the defense of 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. The following information compiled by Legal Savior Network hopes to be helpful to you.

How to determine whether a trademark has been used fairly

1. The criterion shall be whether, in addition to using words and graphics that are identical or similar to others' trademarks, other explanatory words are also added to indicate its "descriptive nature".

In order to describe the model, quality, main raw materials, functions, uses, weight, quantity and other characteristics of this product, merchants may have to use other people’s trademarks, but If the merchant adds explanatory words such as “main ingredients”, “function” and “how to use” before this trademark, the possibility of confusion can be greatly reduced.

2. Whether the text and graphics used by the defendant Use as a trademark, or whether the words or graphics are sufficient to identify and distinguish the source of the goods as a criterion

Since the defendant has no subjective intention to use the words and graphics as a trademark In addition, it is not objectively sufficient to identify the source of the goods. Consumers will basically not confuse the goods based on the words and graphics. Therefore, such use will not infringe the trademark rights and fall within the scope of fair use.

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

The way in which this explanatory 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, which should not be considered fair use.category.

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

If the user If you use words and graphics that are the same or similar to others’ registered trademarks as descriptions of your own products and also label your own products, it can be inferred that the user is using them more as product descriptions, and there is little or no unfair competition. or an attempt to free ride, and generally such use will not lead to misidentification of the source of the goods, then this should be regarded as fair use.

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

If the user The name used is your own name, trade name or product name, shape, origin, etc. It is relatively simple and easy to identify. However, the explanatory text on the quality, function, etc. of the product has a relatively 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 opinion of the industry association before making a judgment. It's easier.

6. The judgment standard shall be 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 trademarks. 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, which should be regarded as unfair competition and excluded from the fair use of the trademark.

The above six standards are not mutually exclusive. In many cases, we must clearly examine the facts and make comprehensive use of various standards in order to make a more pertinent decision. judgment, relevant experience needs to be enriched in practice, and relevant systems need to be improved.

If you have other legal questions, you are welcome to consult the relevant lawyers on the Legal Savior Network.