It is common practice for electronic map manufacturers to use businesses' trademarks to indicate their location on Global Positioning System maps. However, the question of whether such use – where the consent of the trademark owner has not been obtained – is deemed to infringe the relevant trademark remains controversial.
As explained in an Intellectual Property Office letter, if an electronic map manufacturer's uses of registered trademark to indicate or describe the position of the trademark owner's place of business, such use describes the goods or service provided by the trademark owner, thus informing potential consumers of the whereabouts of the trademark owner's place of business. Such use is considered 'fair use' under Article 30-1(1) of the Trademark Act, rather than 'trademark use' specified under Article 6 of the act.
According to Article 6, 'trademark use' is the use of a trademark for marketing purposes – either on or in conjunction with goods, services or other relevant articles, or in two-dimensional graphic form, digital audio or visual form, or by way of electronic media or other media – which is sufficient to enable relevant consumers to recognise it as a trademark. As such, a trademark serves to identify the source of goods or services, and the use of a trademark should lead relevant consumers to recognise it as a sign that identifies the source of certain goods or services. If the purpose or method of using a trademark is in connection with describing goods or services, but cannot lead relevant consumers to recognise it as a sign that identifies the source of the goods or services, even though the wording included in the trademark is marked on the relevant goods or services, such marking is not deemed to be trademark use and is not subject to the trademark owner's rights. As stipulated in Article 30-1(1) of the act, where any party marks, with bona fide intent and as fair use, his or her own name or title, or the name, shape, quality, function, place of origin or other descriptions of the goods or services, such use is not considered trademark use and is not subject to another party's trademark rights.
For further information on this topic please contact Ruey-Sen Tsai at Lee and Li Attorneys at Law by telephone (+886 2 715 3300), fax (+886 2 2718 7099) or email ([email protected]).
January 31 2011