Date: 2nd February, 2021
by Rutuja Raghushe
’Doctrine of Fair use’ is a defence against the claim of infringement by the owner. According to Section 30(1) of the Trademarks Act,1999, the use of a registered trademark is allowed to identify the character or repute of the trademark.
Many courts around the world have acknowledged the doctrine of nominative fair use, and even the Indian courts have acknowledged and the doctrine is covered under Trademarks Act,1999 as an exception in the cases of infringement of trademarks.
In Consim Info Pvt. Ltd., represented by its Director and Chief Executive Officer Mr. Janakiraman Murugavel Vs. Google India Pvt. Ltd. and Ors (2010(6) CTC813) acknowledged nominative fair use as defense in the infringement cases.
ORIGIN OF DOCTRINE
The doctrine of nominative use was first established in the case of New Kids on the Block v. News America Publishing, Inc 971 F.2d 302 (9th Cir. 1992) by the U.S. Court of Appeals for the Ninth Circuit.
In this case, the defendant has used the name of a famous singer for a survey. The singer has filed a suit of
infringement against the newspaper.
The court had observed a "New Kids on the Block survey" performed by the defendant and established that by no means a way to ask people their opinion of the band without using its name.
Indian Scenario- According to Section 30(2)(d) of the Trade Marks Act,1999,” the use of a trademark by a person concerning goods adapted to form part of, or to be accessory to, other goods or services concerning which the trademark has been used without infringement of the right given by registration under this Act might for the time being be so used if the use of the trademark is reasonably necessary to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the trademark is to indicate, otherwise than following the fact, a connection in the course of trade between any person and the goods or services, as the case may be;"
Fair use under trademark can be broadly divided into two categories-
Descriptive Fair Use- is related to the use of a registered trademark in a descriptive manner, like used for goods and services signifying the quality, quantity, value, or other characteristics of the goods or services. This is covered under S.30(2)(a) of the Act;
Nominative Fair Use- is used in relation goods adapted to form a part of or to accessories, provided that the use is ‘reasonably necessary’ to imply that the goods so adapted have a compatibility with the goods sold under the trademark. This is covered under S.30(2)(d) of the Act. for example parodies, news, etc.
The Madras High Court in the case of Consim Info Pvt. Ltd vs Google India Pvt. Ltd(2010) 6 CTC 813 significantly relied upon the two U.S. Ninth Circuit judgments, to illustrate the meaning of ‘reasonably necessary’ given in S.30(2)(d) and held that for unauthorized use of a registered trademark to be regarded as ‘Nominative Fair Use’ it must pass three steps:
(i) the product or service in question must be one not readily identifiable without use of the trademark;
(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 not do anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the proprietor of the trademark.