Overview
This fact sheet explains the concept of fair use of trademarks, the types of fair use, typical scenarios, and key legal examples from various jurisdictions, aiming to clarify when and how trademarks may lawfully be used by others.
Definition and Purpose of Fair Use
- Trademarks identify the source of goods or services and are protected to prevent public confusion.
- Fair use is an exception allowing use of someone else's trademark in certain cases, generally recognized worldwide.
Types of Fair Use
- Descriptive fair use allows use of a trademarked term to describe the user's product or service, not its source.
- Nominative fair use permits using a trademark to refer to the owner’s goods/services, if it is reasonably necessary and does not imply endorsement.
Common Scenarios Constituting Fair Use
- Use of geographical names related to a business location is typically fair use.
- Use of descriptive terms concerning features or characteristics of goods or services is often allowed.
- Honest commercial practices must be followed, and use should not imply association or harm the trademark’s reputation.
Legal Recognition Across Jurisdictions
- Not all countries use the term "fair use," but similar legal theories exist globally, including in the EU and many other regions.
Examples of Fair Use
- Comparative advertising when presenting opinions or facts (e.g., "Brand X tastes better than Brand Z").
- Advertising services related to branded goods, such as repair shops using brand names to specify the goods they service.
- Artistic, critical, or parody works using trademarks without implying endorsement.
Notable Legal Cases: Fair Use
- Parody of the BARBIE trademark was found to be nominative fair use (USA).
- Use of geographic or descriptive terms like MAO SHAN (China) or “Happy Wedding” (Japan) considered fair use.
- Use of trademarks like BMW or GILLETTE in third-party repair or compatibility advertisements permitted if honest and not misleading (EU).
Notable Legal Cases: Not Fair Use
- Use of OWN YOUR POWER by Oprah Winfrey did not qualify as fair use (USA).
- Radio stations’ use of university marks without necessity was not fair use (USA).
- Use of well-known marks in imitation fragrance comparisons was ruled unfair (EU).
- Ridiculing trademarks in a way that affects reputation is not fair use (Argentina).
Recommendations / Advice
- Always ensure trademark use is descriptive or nominative, necessary for identification, and does not suggest affiliation.
- Follow honest commercial practices to avoid infringing on trademark rights.
- Consult local laws, as interpretations and terminology may differ by jurisdiction.