China: Can commercial use reconcile with fair use?


Ricky Xing, Nancy Zhang and Archie Jin

China: Can commercial use reconcile with fair use?

Lightspring /

A trademark dispute in China featured similar arguments to Jack Daniel’s v Bad Spaniels, so why were the outcomes different? Ricky Xing of Lexfield offers a comparison of two fair use situations.

Fair use is an affirmative defence in trademark infringement typically including nominative and descriptive fair use.

Assuming the accused trademark is used merely for its existing meaning, Chinese courts will support a descriptive fair use defence relying on Articles 48 and 59 of PRC Trademark Law.

Specifically, article 48 defines “trademark use” as the designation of source, while article 59 prevents a trademark registrant from banning other uses of a mark if it contains generic terms or directly refers to the quality, key materials, functionality or other features of the products concerned.