India: Nominative Fair Use Of A Trademark (June 2017)


A trademark is an exclusive property of the owner and any use without the permission of the owner by a third party is an infringement of the rights of the trademark owner. The nominative fair use is an exception to the right of exclusive use of the trademark under the Trademark Act, 1999. The Courts around the world has acknowledged the nominative fair use defense in the infringement cases. The Indian Courts have also acknowledged the defense of Nominative fair use in cases of Infringement which is specifically allowed under the Trademark Act, 1999.

In today competitive business environment there are certain cases where a mechanical device, which is an accessory to a final product, is required to be introduced in the market in way that the user should know that the device is to be used for the final branded product. Further there are certain services which are provided for the specific products and to introduce the services in the market it is required to use the brand of a third party product for which the service is provided. In these types of cases the registered trademark of a proprietor is used by third party in order identify the product of registered trademark's proprietor in which the product of the third party is to be used. For example a mechanic use the trademark of the Hero Company in order to identify that he specialized in repair of Hero Company's vehicle.


The nominative use doctrine was first introduced in case of New Kids on the Block v. News America Publishing, Inc1 by the U.S. Court of Appeals for the Ninth Circuit. In this case the defendant has used the name of famous singer for a survey. The singer has filed a suit of infringement against the newspaper. The court had examined a "New Kids on the Block survey" performed by the defendant, and found that there was no way to ask people their opinion of the band without using its name.

Similarly, in case of Playboy Enterprises, Inc. v. Welles2, where Playboy Playmate Terri Welles used the trademark "Playmate of the Year" as metatags on her website was sued by the owner of the trademark for infringement. The court held that the defendant in order to identify that she has been given the title "Playmate of the Year" by the trademark holder has to use the trademark on her website.

In a recent decision The Century 21 Real Estate v. Lendingtree, Inc.3 the third circuit court in USA held that

"many factors traditionally considered in a likelihood of confusion analysis were irrelevant in cases of nominative fair use and that only four factors needed to be considered:

  1. degree of consumer care;
  2. length of time defendant has used plaintiff's mark without evidence of actual confusion;
  3. intent of the defendant in adopting the mark; and
  4. evidence of actual confusion.

After weighing these factors it was then necessary to consider whether the defendant's use is nominative fair use, by examining:

  1. whether the "use of plaintiff's mark is necessary to describe both plaintiff's product or service and defendant's product or service," thus scrutinizing defendant's need to use plaintiff's mark to describe its own products;
  2. whether defendant uses "only so much of the plaintiff's mark ... as is necessary to describe plaintiff's products or services; " and
  3. whether "defendant's conduct or language reflects the true and accurate relationship between plaintiff and defendant's products or services," because the defendant may have a relationship with plaintiff that may be inaccurately portrayed by defendant's use of plaintiff's marks.

These are the important factors in order to consider a use of a registered trademark by a third party as a nominative fair use. The theory of the nominative fair use has to be used with the utmost precaution in order to differentiate the cases from the one where the registered trademark is used only to take unfair advantage of established reputation of the same.


Under Section 30 (2)(d) of the Trademark Act, 1999 it is provided that a nominative fair use of a trademark by a third party is not an infringement of a registered trademark. Section 30 (2)(d) provides that:

"the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under this Act r might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be;"

As per this section, a use will not be considered as infringement, if the use of the registered trademark is reasonably necessary in relation to genuine spare parts or accessories adapted to form part of the defendant good and neither the purpose nor the effect of the use of the mark is to cause any confusion as to trade origin. If a particular piece of machinery or some other manufacture or goods have become known with the consent of the proprietor under the name of the trademark of which the owner or maker of the goods is the proprietor, then it is not an infringement of the trademark so to describe the goods or the particular piece of machinery, no it is an offence so to describe the goods which are adopted to form part of or to be accessory to the other goods in respect of which the name has become recognized as the name of the particular proprietor's goods4.

In case of Consim Info Pvt. Ltd., represented by its Director and Chief Executive Officer Mr. Janakiraman Murugavel Vs. Google India Pvt. Ltd. and Ors5 while referring the cases of New Kids on the Block v. News Am. Publ'g Inc., 971 F.2d 302, 308 (9th Cir. 1992); Caims v. Franklin Mint Co. 292 F.3d 1139, 1153-55 (9th Cir. 2002) the Hon'ble High Court of Chennai held that:

"A use is considered to be a permitted nominative fair use, if it meets three requirements, viz.,

  1. the product or service in question must be one not readily identifiable without use of the trademark;
  2. only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and
  3. the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

So in order to consider a use of a registered trademark by a third party to be a nominative fair use, the user has to established the fact that the his use of the registered trademark was necessary in order to identify his product. The nominative fair use defense is considered to be a fair use in cases where a trademark is used in order to refer a trademark owner or its goods or services for purposes of reporting in a news article, commentary on the Television or radio, in cases of a healthy criticism, and parody, as well as in cases of comparative advertising.


Even though it is very difficult to establish all the ingredient mention above by a user but the courts have to be very strict in order to allow the relief of nominative fair use. The trademark which is an identity of a business should not be allowed to be used by anybody and everybody. The labour, time, money and effort put in by the owner of the trademark in making the same distinctive should be given consideration while considering the relief of nominative fair use.


1. 971 F.2d 302 (9th Cir. 1992).

2. 279 F.3d 796 (9th Cir. 2002).

3. 425 F.3d 211 (3rd Cir. 2005)

4. Bismag Ltd v Amblins Ltd (1940) 57 RPC 209

5. (2010(6) CTC813)

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.