NOMINATIVE FAIR USE OF A TRADEMARK
A trademark is an exclusive property of the owner and any use without the permission of the owner by a third party is an infringement of the rights of the trademark owner. The nominative
fair use is an exception to the right of exclusive use of the trademark under the Trademark Act, 1999. The Courts around the world has acknowledged the nominative fair use defense in the infringement cases. The Indian Courts have also acknowledged the defense of Nominative fair use in cases of Infringement which is specifically allowed under the Trademark Act, 1999.
In today competitive business environment there are certain cases where a mechanical device, which is an accessory to a final product, is required to be introduced in the market in a way that the
user should know that the device is to be used for the final branded product. Further, there are certain services which are provided for the specific products and to introduce the services in the
market it is required to use the brand of a third party product for which the service is provided. In these types of cases the registered trademark of a proprietor is used by third party in order
identify the product of registered trademark’s proprietor in which the product of the third party is to be used. For example, a mechanic use the trademark of the Hero Company in order to identify
that he specialized in repair of Hero company’s vehicle.
Indian Legal Scenario
Under Section 30 (2)(d) of the Trademark Act, 1999 it is provided that a nominative fair use of a trademark by a third party is not an infringement of a registered trademark. Section 30 (2)(d)
provides that: “the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without
infringement of the right given by registration under this Act r might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods or
services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be;”
As per this section, a use will not be considered as infringement, if the use of the registered trademark is reasonably necessary in relation to genuine spare parts or accessories adapted to
form part of the defendant good and neither the purpose nor the effect of the use of the mark is to cause any confusion as to trade origin. If a particular piece of machinery or some other
manufacture or goods have become known with the consent of the proprietor under the name of the trademark of which the owner or maker of the goods is the proprietor, then it is not an
infringement of the trademark so to describe the goods or the particular piece of machinery, no it is an offence so to describe the goods which are adopted to form part of or to be accessory to the
other goods in respect of which the name has become recognized as the name of the particular proprietor’s goods.
In case of Consim Info Pvt. Ltd., represented by its Director and Chief Executive Officer Mr.Janakiraman Murugavel Vs. Google India Pvt. Ltd. and Ors5 while referring the cases of New
Kids on the Block v. News Am. Publ’g Inc., 971 F.2d 302, 308 (9th Cir. 1992); Caims v.Franklin Mint Co. 292 F.3d 1139, 1153-55 (9th Cir. 2002) the Hon’ble High Court of Chennaiheld that:
“A use is considered to be a permitted nominative fair use, if it meets three requirements, viz.,
(i) the product or service in question must be one not readily identifiable without use of
(ii) only so much of the mark or marks may be used as is reasonably necessary to identify
the product or service; and
(iii) the user must do nothing that would, in conjunction with the mark, suggest
sponsorship or endorsement by the trademark holder.
So in order to consider use of a registered trademark by a third party to be a nominative fair use, the user has to established the fact that his use of the registered trademark was necessary
in order to identify his product. The nominative fair use defense is considered to be a fair use in cases where a trademark is used in order to refer a trademark owner or its goods or services for
purposes of reporting in a news article, commentary on the Television or radio, in cases of a healthy criticism, and parody, as well as in cases of comparative advertising.