As early as 2007, fair use of trademarks has always been a hot topic in the field of intellectual property rights, and it has also become the first choice for trademark infringement defense. There are also many cases in trademark administrative law enforcement and judicial practice that the proper use of trademarks does not constitute infringement. The new Trademark Law, promulgated on May 20 14 1, also improved the defense of fair use of trademarks, adding? Use first? The defense.
But are they all reasonable use? Just? That is, it does not constitute an infringement of the exclusive right to use a trademark, which requires case analysis.
I. Descriptive use
The relevant legal basis is Article 59 of the Trademark Law: the exclusive right holder of a registered trademark has no right to prohibit others from properly using the common name, figure and model of the goods contained in the registered trademark, or directly indicate the quality, main raw materials, functions, uses, weight and quantity of the goods, or the place names contained therein.
The exclusive right holder of a registered trademark of a three-dimensional mark has no right to prohibit others from properly using the shape of the commodity itself, the shape of the commodity needed to obtain technical effects or the shape that makes the commodity have substantial value.
What are the constitutive requirements for the proper use of trademark marks in Article 26 of the Answer of Beijing Higher People's Court on Several Issues Concerning the Trial of Trademark Civil Disputes? Acts that constitute the proper use of trademark marks shall meet the following requirements:
1, used in good faith;
2. Do not use it as a trademark of your own goods;
3. Only used to illustrate or describe your own goods.
Second, the descriptive fair use of trademarks.
Descriptive use of a trademark means that the content or meaning of the trademark expresses the content of the goods designated for use by the trademark, or the composition, nature, use, function, characteristics, quality, weight, quantity or other characteristics of the goods.
Descriptive fair use of trademarks is mainly to protect the freedom of operators to describe their own goods. Usually, they are related to? The second meaning? , a trademark with weak distinctiveness composed of common names or graphics and place names. Generally speaking, the common name, figure, model and other signs of a commodity are not significant, or the signs that only directly indicate the characteristics of the quality, main raw materials, functions, uses, weight and quantity of the commodity shall not be registered as trademarks. Then, after long-term use, this logo is remarkable and can distinguish the source and origin of goods and services, and can be registered as a trademark. This is the so-called cause should be used? The second meaning? The logo can be registered as a trademark. When were these common words learned? The second meaning? When registering as a trademark, if the non-trademark owner only uses a meaning of words in a descriptive way, and this use will not cause consumers to misunderstand or confuse the source of goods or services, then this use is a descriptive legal use of the trademark.
So, what if someone else gets the above reasons? The second meaning? However, a successfully registered trademark is only used in good faith on its own goods to indicate the name, type and location of the goods, and such use will not be judged as infringement of the exclusive right to use a registered trademark. But not all descriptive usages can be regarded as? Use it correctly? For example, in the "Answers of Beijing Higher People's Court on Several Issues Concerning the Trial of Trademark Civil Disputes" listed above, descriptive use must meet the above three requirements before it can be recognized as? Use it correctly? . Accordingly, the court did not decide in the following cases? Use it correctly? Defense:
Seven-grain tank
The plaintiff Yibin Wuliangye Co., Ltd. is a well-known liquor brand? Wuliangye? All of them. The defendant in this case is Beijing Yinwubao Liquor Co., Ltd. The plaintiff claims that the defendant produces and sells in large quantities. Seven grains of liquid? 53-degree liquor in the name of liquor; And use it in the products it produces? Zhongyuan seven grain liquid? Where's will? Seven grains of liquid? Prominent use as a commodity name, thus infringing the plaintiff's rights? Wuliangye? Trademark ownership.
The defendant pleads? Seven grains of liquid? And then what? Zhongyuan seven grain liquid? It is a descriptive use in the sense of commodity name, not a trademark use, so it belongs to fair use; Is the defendant right? Seven grains of liquid? The use of is kind and does not exist? Next to the famous brand? Intention, etc.
After hearing the case, Beijing No.2 Intermediate People's Court held that the defendant claimed that descriptive fair use should meet the following conditions: 1) only used to describe his own products; 2) This kind of use is kind and reasonable; 3) It should be used in a descriptive way, not in a trademark sense. In this case, the defendant claimed that its products were brewed from seven kinds of grain, but did not provide sufficient evidence to prove it. Moreover, even in order to introduce, sell and explain to consumers that the liquor it produces contains seven kinds of grains, it is entirely possible to describe its ingredients by marking it on the ingredient list or explaining it in advertising. But is the defendant's use behavior prominent? Seven grains of liquid? Words and deeds have gone beyond will? Seven grains of liquid? As a trade name to describe the reasonable category of raw materials, so the defendant used it? Seven grains of liquid? Words should be limited and descriptive use should be within a reasonable and fair range, otherwise the plaintiff's claim cannot be defended on the grounds of fair use.
Finally, the court ruled that the defendant was right? Seven grains of liquid? The use of Wuliangye infringed the exclusive right to use a trademark and ordered the defendant to stop production and sales? Seven grains of liquid? Wine products; Compensation for the plaintiff's economic loss of 50,000 yuan.
Three. Symbolic fair use of trademarks
Indicative use of trademarks means that in order to clearly describe their products, product owners must mention other people's registered trademarks, otherwise the description of their products will be vague. Therefore, the use of a registered trademark can be regarded as legal use and does not constitute an infringement of the exclusive right to use a registered trademark.
The Trademark Law does not clearly stipulate the indicative fair use of trademarks, but in the judgment of actual cases, the above three elements of the Beijing Higher People's Court's Answers on Several Issues Concerning the Trial of Trademark Civil Disputes are still the main basis for review and judgment.
Volvo case
Plaintiff Volvo Trademark Holdings Limited is a registered trademark? Volvo? All of them. Defendant Zhejiang Ruian Changsheng Filter Co., Ltd. declared the export of Syrian filters to the customs, with product labeling? For Volvo? Words with small fonts at the bottom? Replace? ; The name of the defendant, the name of the manufacturer and the name of the defendant's customer are not clearly defined on the goods or the outer packaging box.
Shanghai Pudong New Area People's Court held that the defendant's behavior did not belong to the fair use of registered trademarks. Because the defendant used a filter with a larger font without the plaintiff's permission? For Volvo? Words, and their uses? For Volvo? Those ambiguous words that can identify the source of goods, such as the name of the product manufacturer, are not expressed on the product, which objectively allows consumers to compare the source of goods with? Volvo? There is some connection between trademark registrants, so the defendant's behavior does not belong to the fair use of registered trademarks, which has constituted an infringement on the plaintiff's exclusive right to use registered trademarks.
abstract
The distinction between legitimate and infringing use of trademarks is still whether such use will lead to the possibility of confusion and misunderstanding of the source of goods by the relevant public. This judgment can be considered from the subjective aspect of the user, the objective performance of the user's behavior, the objective result of the user's behavior and the salience and popularity of the trademark itself. So what? Use it correctly? Defense is a relief measure for bona fide users and cannot be abused by malicious users at will.