Section 28 of The Trade Marks Act, 1999 confers an exclusive right to the use of a trademark to the registered proprietor, and Section 29 of The Trade Marks Act, 1999 describes when infringement of a registered trademark occurs due to use by a person who is not the registered proprietor nor is using such trademark by way of permitted use. Thus, generally, the right to use a registered trademark is only available to its registered proprietor or any person permitted by the registered proprietor to use the trademark. However, Section 30 stipulates certain conditions when any third party's use of a registered trademark is not construed as infringement.
SECTION 30 (2) OF THE TRADE MARKS ACT, 1999
Section 30 (2) of The Trade Marks Act, 1999 states that a registered trademark is not infringed when:
(a) the use of the trademark in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics of the goods or services
(b) a trademark is registered subject to certain conditions or limitations, and having regard to such restrictions, the registration of the trademark does not extend to its use in any manner in relation to goods to be sold or traded in at any place or to be exported to any market or in relation to services for use or available for acceptance in any place or country outside India
(c) the use of a trademark by any person is:
(i) in relation to goods connected in the course of trade with the registered proprietor or a registered user of the trademark if, as to those goods or bulk or which they form part of, the registered proprietor or the registered user conforming to the permitted use has applied the trademark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark
(ii) in relation to services to which the registered proprietor or registered user of such mark, conforming to the permitted use, has applied the mark to indicate those services that have been performed by the registered proprietor or the registered user of the mark
(d) the use of a trademark by a person is in relation to goods adapted to form part of, or to be an accessory to other goods or services in relation to which the trademark has been used without infringement of the right given by registration under The Trade Marks Act, 1999 or the use of the trade mark is reasonably necessary in order to indicate that the goods or services are adapted, and neither the purpose nor the effect of the use of the registered trademark is to indicate any connection whatsoever between any person and the goods or services in the course of trade
(e) the registered trademark is identical or nearly resembles another trademark registered under The Trade Marks Act, 1999, and is used to exercise the right to use that trademark given by registration under The Trade Marks Act, 1999.
DOCTRINE OF NOMINATIVE FAIR USE
The US Supreme Court propounded the Doctrine of Nominative Fair Use in the case of Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924), although the term "Nominative fair use" per se was not used anywhere in the judgment. It was held that the ownership of a registered trademark consisting of a name designating the owner's goods does not carry with it the right to prohibit a purchaser, who repacks and sells them with or without added ingredients, from using the name on his own labels to show the true relation of the trademarked product to the article he offers, provided the name be not so printed or otherwise used as to deceive the public. Later, in the year 1992, the Ninth Circuit, in the case of New Kids on the Block v. News America Publishing, Inc., developed a three-prong test for nominative fair use. Under this test, a defendant may be entitled to a nominative fair use defense where the defendant uses a trademark to describe the plaintiff's product rather than its own. The Ninth Circuit Court of Appeals stated that nominative fair use applies when the defendant uses a trademark to describe the plaintiff's product rather than its own. The Ninth Circuit expanded this definition by indicating that the nominative fair use analysis is appropriate where a defendant has used the plaintiff's mark to describe the plaintiff's product, even if the defendant's ultimate goal is to describe his own product.
INDIAN COURTS ON NOMINATIVE FAIR USE
In Hawkins Cookers Ltd. v. Murugan Enterprises (2012), the Hon'ble Delhi High Court held that indicating on the packaging that the goods are adaptable only to the goods of only one manufacturer is a violation of such manufacturer's trademark and Section 30(2)(d). However, in certain situations, reference to the registered trademark of another person would not be actionable. In a situation where the manufacturer of goods is entitled to indicate that the goods manufactured by them form part of or are an accessory to other goods for which a trademark exists and it is reasonably necessary for the manufacturer of the adaptable goods to refer to the trademark of the relatable goods, such reference would not amount to an infringement of the trademark under which the relatable goods are sold.
In Elofic Industries Limited v. Mobis India Limited (2018), the Hon'ble Delhi High Court allowed the plaintiffs to use the registered trademark of the defendants only after substituting the words "Suitable for" with the words "Adapted to form part of" on their products and immediately below that endorsing in the same font "WE HAVE NO TRADE CONNECTION WITH HYUNDAI". This is because, in the view of the Hon'ble High Court of Delhi, Section 30(2)(d) of The Trade Marks Act, 1999 only places limitations on the effect of registration and has no applicability to the inherent common law rights of the defendants which cannot be trifled with.
In Govt. E-Marketplace v. Unilex Consultants (2022), the Hon'ble Delhi High Court opined that it is the settled position of law that nominative fair use of a registered trademark is allowed as long as such use does not depict sponsorship by the registered proprietor and the use is "reasonably necessary."
MEANING OF "REASONABLY NECESSARY"
In Hawkins Cookers Ltd. v. Murugan Enterprises (2012) the expression "reasonably necessary" was defined to mean that inherent in the situation it would be just and in the situation where the goods are claimed to be adaptable to other goods, the manufacturers of the goods would be entitled to indicate by reference to the trademark of the other goods provided it is just to do so and this would mean that the goods claimed to be adaptable are specifically manufactured to be used as a part of the other goods alone. This does not apply if the goods are adaptable to all goods created by different manufacturers to which they are adaptable.
Therefore, it is abundantly clear that use of the registered trademark does not amount to infringement if it is merely being used only for the purposes of giving information without causing any misrepresentation.
- Elofic Industries Limited v. Mobis India Limited, 2018 SCC OnLine Del 12566
- Govt. E Marketplace v. Unilex Consultants, 2022 SCC OnLine Del 1143
- Hawkins Cookers Ltd. v. Murugan Enterprises, 2012 SCC OnLine Del 2118
- https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2021-22/march-april/nominative-trademark-use-affirmative-negative-defense-infringement/ (last visited on 3 August, 2023)
- https://epgp.inflibnet.ac.in/epgpdata/uploads/epgp_content/S000020LA/P000846/M025739/ET/151376097930_Q1e-textfinal.pdf (last visited on 3 August, 2023)
- https://core.ac.uk/download/pdf/232975284.pdf (last visited on 3 August, 2023)