Unauthorized use of trademark, infringement or not?

Trademark violation?

If you happen to be stranded on a deserted island, Maimei suggests that you can draw a Mickey Mouse on the beach. Someone from Disney will come from far away to rescue you. “Copyright fanatic” Disney sued a couple for wearing Disney character costumes to a party, infringing on Disney’s copyright.

Some people believe that this behavior does not constitute infringement. There are indeed exceptional cases as to whether unauthorized use constitutes trademark infringement. So, when does unauthorized use not constitute trademark infringement?

1. Reasonable use

Reasonable use of a trademark means that people other than the trademark registrant can use marks that are identical or similar to the registered trademark without authorization for reasonable purposes and reasons without infringing.

Descriptive reasonable

For trademarks that are registered due to post-use, trademark owners cannot prevent others from using these symbols in their descriptive sense.

For example, “Shuangwaiwai” has successfully registered a trademark for beverages. When others describe their beverage products, they use this description: drinking our beverage will make you feel happy and refreshed. This is considered a descriptive use of the “Shuangwaiwai” trademark.

Indicative reasonable

In order to objectively illustrate the characteristics, uses, etc. of goods or services, it is necessary to mention the registered trademarks of others.

For example, when selling printers, it can be stated that the printer can be adapted to ink cartridges of the following models: Canon, HP, Ricoh. This is considered indicative reasonable use.

Reasonable use requires:

First, subjectively, the user must act in good faith and not use it for the purpose of exploiting the existing reputation of others or causing confusion among the relevant public.

In practice, determining whether the user is acting in good faith can be judged by examining factors such as the distinctiveness of the registered trademark, whether the use is necessary and inevitable due to the limited expression methods, whether the use is reasonable, whether measures to avoid confusion have been taken, and whether the use has caused confusion to the relevant public.

Secondly: Reasonable use to describe the characteristics of goods or to explain the intended use of goods. This includes normal use of one’s own name and address, reasonable description of the quality, use, source, weight, etc. of goods.

Thirdly: It will not cause confusion or misidentification to the relevant public. Reasonable use should not harm the rights of trademark owners and third parties, including consumers.

II. Prior use

1) “Prior use of a trademark” refers to the act of using a trademark that has some influence on the same or similar goods or services as the registered trademark prior to the registered trademark owner. The trademark in prior use does not bear infringement liability within the original scope of use.

2) The user makes legitimate use of the mark that it enjoys.

For example, legitimate use of one’s own name, trade name or other marks. Because the user’s prior rights are legitimate, their legitimate use does not constitute trademark infringement.

III. Functional use

If the use of the trademark is functional, it may save the “perpetrator” in the Disney lawsuit mentioned above.

Example: The plaintiff, Fleischer Studios, claimed to own the copyright and trademark of the character Betty Boop. The defendant, AVELA, liked Betty Boop and used her image on dolls, T-shirts and handbags.

The court ruled that these displays did not constitute trademark infringement because they did not deceive consumers in terms of product origin, but only used the trademark functionally in the character.

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