Using Trademarks in the Course of Trade – What Does It Mean?
The use of a trademark as a symbol of goods or services is commonly referred to as “trademark use of a mark”. Some researchers perceive the condition of commercial use as part of this wider whole of trademark use, while others distinguish these from each other. Nevertheless, using trademark “in the course of trade” (in commerce) is a requirement of a trademark infringement. In other words, if you are using someone’s mark in purely private way, it is not an infringement. The difficult question lies sometimes in the defining of the “use in the course of trade”.
The starting point in the EU case law is said to be the case Arsenal Football Club v Reed, where Mr Reed sold unauthorised fan products of Arsenal. The CJEU held that a trademark is used in the course of trade when [the use] “takes place in the context of commercial activity with a view to economic advantage and not as a private matter”. In the following years, we have received several cases addressing this element of trademark infringement. The CJEU has re-stated it’s opinion and definition of use in the course of trade, but also clarified the interpretation in the context of, for example, keyword marketing (“Adwords”), metatags and re- and de-branding.
A Swedish researcher writes that the requirement of (Swedish) trade mark law to be used in the course of trade (“näringsverksamhet”) means that the use of another mark is freely permitted outside the trade. The same conclusion applies to EU law, supported by EU case law. Some examples of typical permitted use include use in the news, science and art, but these are not always absolute rights.
USE BY CHARITIES AND NON-PROFITS
It is also challenging to define when the use of another mark by charities and non-profit organizations is use in the course of trade. In a EU-case called Silberquelle, it was held that the distribution of non-alcoholic beverages as promotional items in connection with the purchase of clothing did not constitute genuine use of the trade mark for non-alcoholic beverages. Instead, a nonprofit actually uses the mark when it uses it in its business papers and similar. It is therefore likely that such use of the trade mark would be considered commercial use.
According to some researchers, the assessment of use in the course of trade must take into account two factors: (1) “To what extent is the use of the trade mark [or trade name] linked to the commercial, economic activity, and (2) “The extent to which the purpose of the use is for informational or artistic purposes.” The latter could be considered more private use, and the more such use is involved, the less permittable is the use of the mark.
CAN I INFRINGE TRADEMARKS BY BEING PASSIVE?
It is clear that pure passivity cannot cause trademark infringement in the EU. However, in my opinion, the purpose of commercial exploitation could be viewed as sufficient justification for the other characters used in the course of trade. For example, the WIPO report takes the following position: “Use of a sign on the Internet shall constitute use in the Member State for the purpose of these provisions, only if the use has a commercial effect in that Member State …” (a “commercial effect” exists if “is doing or seriously intended to do business in the Member State”).
A Finnish Professor of Copyright Law Pihlajarinne states in her dissertation on domain names that “even when a domain name is registered for the purpose of selling or renting it, its use can be considered to take place in the course of trade.” Furthermore, Pihlajarinne states that the mere fact that an individual registers a domain name without creating a website does not yet satisfy the condition of commercial use unless he intends to derive economic benefits from the domain name, for example by selling or renting it.
These are examples that also an intention or a purpose can be significant when assessing the element of using in the course of trade.
COMMERCIAL USE ON SOCIAL MEDIA
Researches in the United States state that attention should be paid to the potential challenges of proving that certain uses on social media constitute use of a trademark in commercial use. A United States researcher Friedmann writes that there is no case law on use in commerce in the context of social media. However, he argues that the unauthorized use of a trademarked logo on a social media platform can be considered a commercial use of a social media service provider. He justifies this view on the grounds that allowing logos on social media platforms makes them more popular and therefore, as a result, social media providers could have secondary liability for trademark infringement. According to Friedmann, it can even be argued that trademarks are always used commercially on social media sites.
I believe that, on a case-by-case basis, the evaluation should pay attention to how much of the content production is commercial communication and how much is journalistic communication. Similarly, freedom of expression is broader when it comes to more journalistic communication than commercial communication.
One thing that is important to bear in mind: the use of a trademark in advertising always falls within the exclusive right of the trademark owner.
CJEU CASES MENTIONED: