When there is NO trademark infringement

The issue of trademark infringement is complex and often misunderstood. While many people know that unauthorized use of a trademark can have legal consequences, less is known about when trademark infringement does not actually occur. Knowing about these exceptions can be particularly helpful in avoiding legal disputes and ensuring you stay within the law.

In this article, we shed light on the situations in which there is no trademark infringement. We look at the legal framework, explain common misconceptions and provide practical examples. Our aim is to provide clarity and help you better navigate the world of trademark law.

Overview: Permitted use of protected trademarks

• *own names*The use of your own name does not generally constitute a trademark infringement.
• *Descriptive use*Trademarks may be used to describe products or services without constituting an infringement.
• *permission*Use of a trademark with the express permission of the trademark owner is legal.
• *Principle of exhaustion*: After the first sale of a product, the brand can continue to be used.
• *Parody and artistic freedom*: Parodies and works of art are permitted under certain conditions.

More on this in detail:

Proper names and private use

Proper names

A common misconception is that using a name that is registered as a trademark automatically constitutes infringement. In fact, trademark law allows the use of proper names as long as this is done in good faith. This means that people can use their own name in business dealings, even if this name is protected by trademark law. The reverse is also possible, Registering first names as a trademark.

Private use

Even the private use of a trademark that does not pursue any commercial purposes does not generally constitute trademark infringement. For example, a person can use a trademarked logo on their personal website as long as this does not serve to promote sales or create a likelihood of confusion with the actual trademark owner.

Descriptive use and comparative advertising

Descriptive use (spare parts business)

Descriptive use occurs when a trademark is used to describe the characteristics or features of a product or service. In particular, spare parts can be described as being "suitable for" a particular brand or product.

Comparative advertising

Comparative advertising is another example where the use of a trademark is permitted. As long as the advertising is objective and not misleading, trademarks can be used to compare one's own products with those of the competition. This is particularly important in the area of consumer information rights and is often decided by the courts in favor of freedom of expression.

Permission and license agreements

The use of a trademark with the express permission of the trademark owner is one of the clearest situations in which there is no trademark infringement. Such agreements can take the form of licenses or partnerships. License agreements are legal contracts that specify how a trademark may be used and what restrictions apply. As long as these conditions are adhered to, there is no trademark infringement.

Exhaustion principle and resale

The principle of exhaustion states that after the first sale of a product, the trademark owner no longer has control over the further use of the trademark in relation to this product. This means that products that have been legally purchased can be resold without this constituting trademark infringement. This principle plays an important role in the resale of branded products and makes it possible for second-hand goods and outlet products, for example, to be traded legally.

Parody and artistic freedom

Parody

Parody is a special form of use that is often caught between trademark law and freedom of expression. Under certain conditions, the use of a trademark in a parodic manner may be permitted. However, parodies must be clearly recognizable as such and must not give the impression of being authorized by the trademark owner. The main aim of a parody should be to take a humorous or satirical look at the trademark.

Artistic freedom

Artistic freedom also offers scope for the use of trademarks. Works of art that use a trademark as part of the creative expression can fall under the protection of freedom of expression and artistic freedom. However, caution is required here, as the commercial aspect of the artwork must be taken into account. If a work of art was created primarily for commercial purposes and uses the trademark prominently, this could still be considered trademark infringement.

Conclusion

In summary, there are several situations in which there is no trademark infringement. The use of proper names, descriptive use, permitted use through license agreements, the principle of exhaustion as well as parodies and artistic freedom provide legal certainty. However, it is always advisable to seek legal advice in case of doubt to ensure that there is no unwitting infringement.

By knowing and understanding these exceptions, you can move more confidently in the business environment and minimize the risk of legal conflicts. Use this knowledge to make informed decisions and conduct your business activities in compliance with trademark law. Do you have any questions? Then please contact us here.

FAQs

• *When does the use of a proper name constitute trademark infringement? The use of a proper name does not generally constitute trademark infringement as long as it is done in good faith and in a way that avoids confusion as far as possible.
• *Is the use of a trademark for private purposes permitted? Yes, the use of a trademark for purely private and non-commercial purposes is permitted and does not constitute trademark infringement.
• *What is meant by descriptive use? Descriptive use occurs when a trademark is used to describe the characteristics or features of a product or service without this constituting an infringement.
• *When is comparative advertising permissible? Comparative advertising is permitted as long as it is objective, not misleading and fair. It must not damage the reputation of the competing brand.
• *What is the principle of exhaustion in trademark law? The principle of exhaustion states that after the first sale of a product, the trademark owner no longer has control over the further use of the trademark in relation to this product. However, there are exceptions to this principle.
• *Are parodies of brands allowed? Under certain conditions, parodies are permitted as long as they are clearly recognizable as such and there is no risk of confusion with the trademark owner.