Fair Use of Trademark

The allowed and legal uses of trademarks by people or entities other than the trademark owner are defined in India as trademark fair use and normative use, respectively. These ideas are crucial in achieving a balance between the interests of trademark owners and the general public when using trademarks for diverse things.

On the other hand, the primary benefit of a trademark enjoyed by a Registered Proprietor is the right it receives to prevent others from using an identical with and/or deceptively similar trademark. The primary function of a trademark is to operate as a source identifier of products and services. This advantage for trademark owners is not, however, unqualified.

What is Fair Use of Trademark?

The public can identify products or services as coming from a specific source. To avoid misunderstanding regarding the source of the goods or services, a trademark owner might forbid third parties from using their brand. However, in some instances, a person may utilize another party's trademark if the use is regarded as "fair use."

The Trademarks Act of 1999 and the Indian Trademark Regulations of 2017 pertinent clauses, as well as the individual circumstances of each case, determine whether a particular use of a trademark is considered fair use.

Although normative fair use might offer a defence against trademark infringement, it is crucial to remember that each case must be assessed on the basis of its unique facts and circumstances. Furthermore, since trademark law is primarily governed by national legislation, fair use in trademark law may differ from one jurisdiction to another.

Types of Fair use of Trademark

'Fair use' of a trademark by any party may be broadly categorized into –

• Descriptive fair use

• Normative fair use

What is Descriptive fair use?

Trademark descriptive usage relates to the use of a registered trademark in a descriptive manner i.e. used in relation to goods or services indicating the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or of rendering of services or other characteristics of goods or services. Descriptive trademark fair use permits the societal use of phrases or pictures contained inside other people's trademarks in their basic descriptive sense.

According to trademark law, descriptive fair use permits using a third party's trademark as a descriptive phrase rather than as a trademark to describe a good or service. This kind of fair use is generally made by people or businesses employing a phrase that has over time become generic and is no longer registered as a trademark.

In order to qualify as descriptive fair use, the following criteria must be met −

• The term rather than as a trademark should be used descriptively

• The term must be used in its common, descriptive sense

• The term must not cause consumer confusion

• The use of the term must not impair the distinctiveness of the trademark.

What is Normative Fair Use?

The term "trademark normative usage" describes the use of a trademark in conformity with accepted norms and practices, such as when advertising or selling a brand's goods or services. This kind of use is regarded as legal and does not violate the trademark owner's rights in any way. When a registered trademark is used by someone else to make reference to the goods or services of the mark owner, the legal doctrine known as "nominative fair use" may be utilized to defend against charges of trademark infringement. This use is regarded as nominative because it "names" the rightful owner of the mark.

The following requirements must be met in order for the use of the trademark to be considered nominative fair use −

• Without utilizing the trademark, the good or service cannot be easily recognized

• Just a minimal amount of the trademark is used to identify the good or service

• The use of the trademark does not imply sponsorship by the trademark owner.

Landmark cases on fair use of trademark

Hawkins cooker Ltd. V. Murugan Enterprises 2012

Delhi High Court held that if the defendant uses the mark in a legitimate manner, without misleading or confusing customers, and reasonably indicates that the item is suitable for use with the plaintiff's goods, then it is fair use.

Pfizer Products Inc. V. Rajesh Chopra 2007

In this case, the medicine supplied under the brand name GEODON's exclusive rights were contested. The defendant was the registered owner of the mark in India since 2003, while the plaintiff had been a well-known corporation providing the medicine since 1996. Even though the plaintiff was not selling in the Indian market, the balance of convenience was to the plaintiff's advantage because the plaintiff is a well-known mark owner who sells the drug in close to 40 different nations worldwide.

Somashekar P. Patil v. D.V.G. Patil 2018

Patil and Patil Parimala Works sued Patil Fragrances as the defendant for infringement and passing off. During the litigation, a request for an interim injunction was made against Patil Fragrances and was approved. The court ruled in favor of the respondent in accordance with section 35 of the Trademark Act 1999 and dismissed the appeal because the use of the family name PATIL was done so with good intent.

Anil Rathi V. Shri Sharma steel tech 2019

Both the plaintiff and the defendants worked as steel product manufacturers. The only people having the authority to use the registered trademark RATHI are the Rathi family members. Family member defendant number 8 transferred the trademark to a third party, which the court deemed to be a non-bona fide act. Due to its authority under Section 35 of the Trademarks Act 1999, the court decided in the plaintiff's favor.

Government E-Marketplace v Unilex Consultants & Ors 2022

In this landmark case, the Delhi High court has held that Nominative Fair Use is permissible if it does not depict sponsorship by trademark owner & use is "Reasonably Necessary":

Conclusion

The doctrine of fair use of trademarks permits the selective use of another party's trademark under specific conditions without violating the rights of the trademark owner. This legal principle, also known as nominative fair use, permits the precise identification of a good or service without suggesting sponsorship or support by the owner of the trademark. Although it is a complex area of law that needs to be carefully assessed on a case-by-case basis, the fair use of trademarks plays a crucial role in balancing the interests of trademark owners with the rights of others to accurately identify and describe goods and services.

FAQs

Q1. What are the benefits of the normative use of trademarks?

Ans. Consumer protection against confusion and deceit, the encouragement of fair competition, and protection of the trademark owner's investment in the trademark are all benefits of the normal use of trademarks.

Q2. What are the criteria for trademark fair use?

Ans. The nature of the trademarked product or service, the strength of the trademark, and the potential impact of the use on the trademark owner's ability to protect and maintain its trademark are among the criteria for what constitutes a fair use of a trademark. Examples of these purposes include criticism, news reporting, or non-competing commercial use.

Q3. What is the purpose of trademark fair use?

Ans. The right to free expression, competition and the ability to fairly describe and contrast goods and services are all supported by trademark fair use.