【Trademarks】Understanding Nominative Fair Use of Trademarks Through “Criminal Judgement (111) Xing-Z..
I. Summary of Criminal Judgement (111) Xing-Zhi-Shang-Yi-Zi No. 18” by Intellectual Property Court
The “Omron” trademark registered under No. 01703784 (hereinafter referred to the “Omron Trademark”) is applied for registration to the Intellectual Property Office (TIPO), Ministry of Economic Affairs (MOEA), by Omron Corporation of Japan (hereinafter referred to as the “Plaintiff”). It is designated for use on products including medical analyzers, medical devices, and medical instruments. The application for trademark registration has been approved by TIPO, and the exclusive right of the Omron Trademark is still valid. Between September and November in 2020, after importing Omron replacement pads (hereinafter referred to as the “Product in Dispute”) from an unknown seller on the Taobao online shopping platform of mainland China with the relevant computer equipment, the Defendant publicly displayed and sold the Product in Dispute on the Shopee online shopping platform. For this reason, the agent of the Plaintiff thus visited the notary public office at the Taiwan Taipei District Court to verify the Defendant. By linking to the Defendant’s online store at Shopee with the address provided by the agent with computer network equipment, the notary public confirmed that the Defendant with a Shopee seller number “000000000000” did sell the Product in Dispute in the product name of “Omron Replacement Pads”, as shown in the relevant evidence. Recognizing that Defendant was suspected to have violated the later part of Article 97 of the Trademark Act: Illegally sell or possess, display, and import for the purpose of selling counterfeit trademarked products via electronic media or the internet, the Appellant, the prosecutor of Taiwan New Taipei District Prosecutors Office, thus applied for a summary judgment.
After proceeding, the court first explained that trademark fair use includes descriptive fair use and normative fair use. The former refers to a third party describing the name, shape, quality, nature, features, and place of origin of its products or services using other’s trademarks, without suggesting the same sources of the products or services carrying the trademark of others to solely describe its own products and services. However, “normative fair use” refers to a third party using the of trademark of others (i.e., trademark proprietors) to nominate its products or services, i.e., using the products or services carrying the trademark of others as the source to express the quality, nature, features, intended use of its own products or services. As none of them involves using the trademark of others as the own trademark of the third party, the trademark right does not apply to either use. With reference to the relevant evidence of this case and the following reasons for determining the no intention to trademark infringement:
- Alleged use of the same or similar trademark of the Plaintiff:
Although the photos of the Product in Dispute that the Defendant sold on the Shopee online shopping platform contain neither the “歐姆龍” or “OMRON” brand name or trademark, as the description of “Omron Replacement Pads” is found in the photos of the Product in Dispute, it is for sure that the Defendant has used in the text the same or similar trademark registered by the Plaintiff. - Alleged use of the “歐姆龍” or “OMRON” text as a pure reference for product description:
Apart from using the term “replacement pad”, the Defendant also published “own-brand product” in the product specification column and detailed in the product description that “the regular version (17g) is a little thicker and stickier than the original pads; and the extra version (22g)”. Additionally, the shape of the pads sold by the Defendant is identical to that of the low-frequency therapeutic devices of OMRON, as shown in the crosscheck of the “歐姆龍Omron Replacement Pads” auction page published by the Defendant with the operation manual and product photos on the corporate website of the Plaintiff included in the dossier. These suggest that the Plaintiff simply used the brand name or trademark of “歐姆龍” or “Omron” to describe that the Product in Dispute is compatible with OMRON low-frequency therapeutic devices and can replace the Plaintiff’s original pads. - Alleged likelihood of confusion to consumers of the Product in Dispute:
The average price of the Product in Dispute is from NT$17.9 to NT$20 each pad, which is more than 12 times lower than that of the Plaintiff’s original pads sold at NT$250 each pad. From the product description and price difference of the Product in Dispute published by the Defendant, consumers can judge that the Product in Dispute is not the Plaintiff’s original pads for its low-frequency therapeutic devices but an own-brand replacement product. Hence, it is less likely for consumers to confuse that the Product in Dispute comes from the same source of the Plaintiff's original pads or suggests an affiliate, licensee, franchises, or similar relationship between the Defendant and the Plaintiff. - Conclusion
Instead of nominating the source of the Product in Dispute with the trademark of others, the Defendant only informed others that the Product in Dispute can replace the Plaintiff’s original pads by indicating the source of products with the Plaintiff’s trademark. This thus suggests the normative fair use of trademark beyond the binding effect of the right of the “歐姆龍” or “OMRON” trademark. Hence, it is difficult to determine the Defendant’s intention of patent infringement.
II. Introduction to “normative fair use”
In accordance with Article 36, paragraph 1, subparagraph 1, Trademark Act, “indicating his/her own name, or the term, shape, quality, nature, characteristic, intended purpose, place of origin, or any other description in relation to his/her own goods or services, in accordance with honest practices in industrial or commercial matters and not using it as a trademark” does not entitle a registered trademark proprietor to prohibit such use of his/her registered trademark. That is, this subparagraph has defined the fair use of trademarks. The same paragraph also indicates that trademark fair use includes “descriptive fair use” and “normative fair use”. In either case trademark users intending to use a registered trademark to inform consumers of the quality, nature, content, or intended use of the products or services they provide without emphasizing the source of such products or services (i.e., not using it as a trademark” is different from the use of trademarks for marketing purposes as stated in Article 5 of the same act, as well as emphasizing the source of products or services.
Hence, “normative fair use” can be considered that trademark users only use the proprietor’s trademark to describe the products or services of the proprietor to introduce the quality, nature, features, and intended use of the user’s products or services. Common examples of the “normative fair use” of trademarks in the daily life can be found in signboards containing the trademark of TOYOTA or Mercedes of automobile repair shops offering repair service for TOYOTA or Mercedes cars. This act does not suggest that the repair service is offered by TOYOTA or Mercedes. Another example is the performance comparison with other brands of mobile makers in leaflets containing the trademarks of other mobile brands. In this case, a mobile maker simply uses the trademarks of other brands for comparison with its own products. Suppliers of non-genuine parts are another example. It is like the case in the above example that the Defendant simply expressed the compatibility of its products or services with that of the trademark proprietor (i.e., the proprietor of the OMROM trademark in the above example) by indicating text “OMRON Replacement Pads” in the product description for consumers to acknowledge the specifications of such products are compatible with that of the trademark proprietor.
When it is necessary to use the trademark of others without knowing if it is a “normative fair use”, users can refer to the three judgment factors below to avoid the risk of trademark infringement[1].
In accordance with Article 36, paragraph 1, subparagraph 1, Trademark Act, “indicating his/her own name, or the term, shape, quality, nature, characteristic, intended purpose, place of origin, or any other description in relation to his/her own goods or services, in accordance with honest practices in industrial or commercial matters and not using it as a trademark” does not entitle a registered trademark proprietor to prohibit such use of his/her registered trademark. That is, this subparagraph has defined the fair use of trademarks. The same paragraph also indicates that trademark fair use includes “descriptive fair use” and “normative fair use”. In either case trademark users intending to use a registered trademark to inform consumers of the quality, nature, content, or intended use of the products or services they provide without emphasizing the source of such products or services (i.e., not using it as a trademark” is different from the use of trademarks for marketing purposes as stated in Article 5 of the same act, as well as emphasizing the source of products or services.
Hence, “normative fair use” can be considered that trademark users only use the proprietor’s trademark to describe the products or services of the proprietor to introduce the quality, nature, features, and intended use of the user’s products or services. Common examples of the “normative fair use” of trademarks in the daily life can be found in signboards containing the trademark of TOYOTA or Mercedes of automobile repair shops offering repair service for TOYOTA or Mercedes cars. This act does not suggest that the repair service is offered by TOYOTA or Mercedes. Another example is the performance comparison with other brands of mobile makers in leaflets containing the trademarks of other mobile brands. In this case, a mobile maker simply uses the trademarks of other brands for comparison with its own products. Suppliers of non-genuine parts are another example. It is like the case in the above example that the Defendant simply expressed the compatibility of its products or services with that of the trademark proprietor (i.e., the proprietor of the OMROM trademark in the above example) by indicating text “OMRON Replacement Pads” in the product description for consumers to acknowledge the specifications of such products are compatible with that of the trademark proprietor.
When it is necessary to use the trademark of others without knowing if it is a “normative fair use”, users can refer to the three judgment factors below to avoid the risk of trademark infringement[1].
- Compliance with the principles of good faith and trust in commercial practices: In the absence of the subjective intention of improper competition or seeking connections with the trademark of others, and the objective use complies with the principles of good faith and trust without incorrect or untrue expressions, or intentional allusion of or seeking connections with the reputation of the trademark of others to affect fair competition.
- Necessity of use: It refers to the necessity to use the trademark of others to indicate the purposes of the user’s own products or services. For example, it is necessary to indicate compatibility of the product of the trademark proprietor with one’s own product; the perk of the lucky draw during the anniversary of a department store is the product trademarked by others that the purposes or characteristics of the product or service cannot be described without using such a trademark. However, it still has to comply with the principles of good faith and trust in commercial practices.
- No threat of likelihood of confusion to consumers: When using the trademark of others, it is necessary to ensure that neither the sponsorship or guarantee of the trademark proprietor should be suggested and to indicate the true and accurate relations of the products or services between the proprietor and user of the trademark. Additionally, when using the trademark of competitors, apart from avoiding untrue contents or causing the likelihood of confusion to consumers about the source of products or services, adverts using product comparison shall not cause unfair competition with indecent behavior.
When using the trademark of others complies with the above requirements, the probability of trademark infringement will be reduced.
III. Conclusion
As trademark rights are emphasized by most companies or suppliers nowadays, when discovering the unauthorized use of own trademarks, proprietors will usually take legal action to maintain their rights and interests. However, the trademark use as stipulated in Article 5 of the Trademark Act may not apply to all situations. When being accused of trademark infringement for using the trademark of others to describe the quality, intended use, and features of their own products or services, users should first stay calm and then review if their use of the trademark of others complies with the principles of good faith and trust in commercial practices or such use is only for describing their products or services without emphasizing their sources. Users still having doubts about trademark infringement can also consult a legal counsel or trademark agent for opinions.
III. Conclusion
As trademark rights are emphasized by most companies or suppliers nowadays, when discovering the unauthorized use of own trademarks, proprietors will usually take legal action to maintain their rights and interests. However, the trademark use as stipulated in Article 5 of the Trademark Act may not apply to all situations. When being accused of trademark infringement for using the trademark of others to describe the quality, intended use, and features of their own products or services, users should first stay calm and then review if their use of the trademark of others complies with the principles of good faith and trust in commercial practices or such use is only for describing their products or services without emphasizing their sources. Users still having doubts about trademark infringement can also consult a legal counsel or trademark agent for opinions.
[1] Intellectual Property Office. (2021). Trademark Act Explained: 146.
