2017-08-23
Cease and desist letters are commonplace in the world of intellectual property. Trademark infringement stories are quite common in the business world. With the large numbers of trademarks used in the marketplace, it can be difficult to navigate the market without running into innumerable trademarks. Any unauthorized use of these trademarks could land you in legal trouble. Whether it is the use of a trademarked name on the internet or a similar name for your business, it could invite a cease and desist notice or a legal battle. But, is every single use of a trademark, infringement? What if you cannot convey a message without using the mark or the use has done no harm to the owner?
Trademark registration offers exclusive rights to its owner that is enforceable across Canada. Any unauthorized use, i.e., use of the trademark without the owner’s permission, counts as infringement. But, there are conditions to this. If the unauthorized use of the trademark is likely to cause confusion among the public that could lead to a loss of business and repute to the mark’s owner, it is infringement. But not every unauthorized use of a trademark is infringement. The law provides exceptions where unauthorized use of a mark is not infringement.
The Doctrine of Nominative Fair Use
Today, people review popular brands, blog about them, report product launches, and even criticize brands. With the advent of the digital era, blogs, review pages, online surveys, videos, fan and hate clubs have become common. All these forms of content use popular trademarks in some way or the other. So, does this constitute infringement? No.
Under the Nominative Fair Use principle, the law allows the public to use trademarks without the owner’s permission. The term ‘use’ is of prime importance here. If one uses the trademark non-commercially or without the intention of profiting from it, only then does it count under the Nominative Fair Use principle. If you are using another’s trademark to make a point, to comment on the company’s offering, or to state something about their business that cannot be said without using the mark, then it may qualify under the Nominative Fair Use.
The mere mention of a trademark in reporting, opinionating, surveys, etc. does not count as infringement. For example, an online page which reports on Apple’s new product is not infringement. The mere mention of the brand name does not harm the firm or create any confusion in the mind of the public, hence not infringement. The doctrine even applies when reselling products online. For instance, if you wish to resell an old Mickey Mouse keychain or a Google product, you may not able to do so without describing it. Using the marks Mickey Mouse or Google in such cases does not count as infringement. On the other hand, if any of these uses are done with the intention to profit or harm the brands goodwill then it counts as infringement.
Without the Nominative Fair Use doctrine, discourses, opinions, and beneficial information would never be available in general. While this is true, the subject of trademarks retain its sensitive nature and court judgments can be unpredictable. It is always beneficial to work along with a trademark agent or you may end up in a costly legal battle.
