| Nominative use has an important significance in defining the scope of thetrademark rights; however, when it comes to the nature and judging criteria ofnominative use, there are different viewpoints in both practical and academic fields.The nominative use of the trademark is initially created by the U.S. Federal NinthCircuit Court of Appeals in the judicial practice, and then the other court in the UnitedStates also recognized that the nominative use does not infringe trademark rights,nominative use of judicial practice in the United States has been gradually improved.In the2006Federal Trademark Dilution Amendment, nominative use is recognized asjustifiable use for the first time, and the system of nominative use is graduallyconstructed to be perfect. Starting from the origin, development and improvement ofthe nominative use, this article analyzes the deficiency existed in current legislationand judicial practice and points out that it is necessary to incorporate the system oftrademark nominative use. It’s hoped that it can provide beneficial suggestions for theconstruction of nominative use system in China’s trademark law. This paper mainlyadopts value analysis, comparison analysis and case study for writing, this papermainly as follows:The first part is to define the nature of nominative use. it analyzes the constituentelements of trademark by way of semiology theory, and points out that the nominativeuse can’t be regarded as the use of trademark because nominative use doesn’t play arole of identifying and it is only the use of referring, reproducing the words andpicture of trademark.The second part is to introduce nominative use of historical development. Thetrademark nominative use originated from the New Kids cases and the Beach Boyscase made certain amendments, which examines the judgment standard of nominativeuse from its origin. But the judgment standard of “Three Elements†held by NinthCircuit Court of Appeals did not completely solve the problem whether there can be acoexistence between the nominative use and the likelihood of confusion. After the United States Supreme Court shows that fair use can coexist with a certain degree oflikelihood of confusion, Century21case decided by the Third Circuit Court ofAppeals became a landmark case, marking trademark nominative use is accepted byother appeal courts and solving the problem whether there can be a coexistencebetween the nominative use and the likelihood of confusion as well.The third part is to analyze the construction of the nominative use of trademark.This section is to focuses on the theoretical basis of the nominative use, clarify thejudgment criteria of nominative use, and explain the relationship between trademarksnominative use and the likelihood of confusion. Although trademark belongs to thedistinctive symbols in business activities, the strengthening of the trademarkprotection can also invaded the freedom of speech and freedom of fair competition,and it occurs a trend of tension between trademark specificity and freedom of speechand freedom of fair competition. In the maintenance of free transmission and faircompetition order of the real information, trademark is not the poverty of commonsense, so the trademark can’t restrict the unauthorized use of trademark for thepurpose of conveying the true information. Trademark confusion principle can’texclude the situation without infringement and it can’t contain all the infringingpossibilities as well, so it ought to define the infringement-judging criteria from theessential function of trademark, which is distinctiveness. As long as there is noinfringement on the distinctiveness, there is no infringement, so nominative use cancoexist with the likelihood of confusion.The fourth part is the comparative study of nominative use. The nominative useoriginated in the United States, but such problem is not limited to exist in the UnitedStates, it also appeared in the international treaties and the legislation and judicialpractice of related countries or regions. Through a comparative study of the relevantinternational and regional legislation and judicial practice, it can provide a goodreference to the establishment of nominative use system.The fifth part is to discuss the necessity and ways to establish the nominative usesystem in China. At present, there is no clear legislation on nominative use in China,provided there are relevant administrative regulations mentioned about it, the effect of those provisions is small and it can’t solve the problem existing in reality. The judicialopinions issued by Beijing High Court have a better understanding of the use of thenominative, and preliminary clarify the constitutive requirements of nominative use,however, its judicial opinions can be merely applied within its jurisdiction and theycan’t be the unified rule applied in the whole country, which is not conducive to thefinal settlement of the cases. In addition, in dealing with the existing cases involvingthe nominative use, it lacks legal support convincing reason, resulting in the caseruled but the problem left. As China is a statute law country, the judge is bound by thewritten rules and he has few power of discretion in judicial practice, resulting in adecision made by the judge within the power permitted by law inconvincible. Hence,it is necessary to define the nominative use of trademark. |
