Informative use: Necessity or trademark infringement?

When seeking to describe a particular characteristic, intended purpose or function of a product, it is possible to reference another brand’s trademark. For example, supermarket own-brand coffee capsules that ‘are compatible with Nespresso machines’. However, there can be a fine line between informative use and trademark infringement, as Noa Rubingh explains. 

The main function of a trademark is to identify the origin of a product (or service), so why would a brand owner affix the trademark of another brand owner onto their products? Companies may choose to reference third-party trademarks when seeking to describe particular characteristics of their products or to show their purpose or function. For example, the compatibility of their products with those of other companies, as is the case for a producer of coffee capsules that are compatible with Nespresso coffee machines. Such references are known as ‘informative use’ and laid down in Article 14(1)(c) jo. 14(2) of the EU Trademark Regulations (EUTMR). 

Informative use: necessity and fairness

The starting point for  informative use of a trademark under EU law is Gillette/LA Laboratories, a 2005 ruling by the Court of Justice of the EU (CJEU). In brief, the CJEU ruled in this case that the use of the trademark by a third party (who is not the holder of the trademark) is permitted if it is ‘necessary’. Necessary means, in this context, that it is the only means of properly informing the public about the purpose of a product. In other words, if the packaging of coffee cups does not state that it can be used in a Nespresso coffee machine, the consumer will not know how the product can be used.

However, informative use of an existing trademark must also be done fairly and EU case law also provides guidance as to what can be considered ‘fair’; namely that it should not be used in such a way that:

• The impression is created that there is a commercial link between the company’s products and the other company’s trademark;
• The company takes unfair advantage of the distinctive character or reputation of the other company’s trademark;
• The good name of the other company is damaged;
• The company presents its product as an imitation or counterfeit of the other  company’s trademark.

Practical solutions: guidelines by trademark owners

In practice, it can be difficult to determine what does or does not constitute fair use. As a practical solution, some trademark owners have drawn up their own guidelines to clearly define what third parties, who are not official resellers ('authorised resellers') or licensees of the trademark owner, may and may not do with the trademarks in question. 

For example, a trademark owner may decide that it is permissible for a third party to use their word marks in a purely referential context to indicate that its products (e.g. headphones, phone chargers, coffee cups or pads, etc) are compatible with the trademark owner's product. Often, their guidelines will also include clear instructions on what is not allowed; for instance, the (prominent) placement of figurative marks in marketing materials. Such guidelines seem to be in line with case law on fair use. 

Therefore, if you want to reference another company’s trademark on the basis of informative use, it is advisable to check whether the trademark owner in question has drawn up its own guidelines concerning fair use. Likewise, it may also be prudent to draw up such guidelines for the use of your own trademarks. 

Informative use: Keep it subtle!

Informative use of a trademark should be undertaken in a subtle way. This means:

• The trademark should not be too prominent on the packaging or the product itself;
• The logo of the brand should not be used (as a general rule) on the packaging;
• The packaging should have a different layout/'look and feel'.

To ensure you do not overstep the line, the use of a more general statement may be a good solution. For example, a rival coffee maker could consider stating that its products are 'also compatible with the coffee machines of other brands'. 

To find out more or for specific advice, speak to your Novagraaf attorney or contact us below.

Noa Rubingh works in Novagraaf’s Knowledge Management department and is based in our Amsterdam office.