USING A TRADEMARK TO INDICATE A PLACE OF BUSINESS ON MAPS DOES NOT CONSTITUTE TRADEMARK INFRINGEMENT

11/01/2010

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It is a common practice to use a trademark to indicate a place of business on a GPS map. However, whether such use without the consent of the trademark owner is deemed trademark use or trademark infringement remains controversial.

As explained in a letter from the Intellectual Property Office, if an electronic map manufacturer's use of a registered trademark on maps is to indicate or describe the position of the trademark owner's place of business, such use describes the goods or service provided by the trademark owner, thus enabling relevant consumers to know the position of the trademark owner's place of business in an area and as such, it should comply with the "fair use" specified under Article 30-1(1) of the Trademark Act, rather than "trademark use" specified under Article 6 of the Trademark Act.

According to Article 6 of the Trademark Act, the use of a trademark is a use of such trademark, for marketing purpose, either on goods, services or other relevant articles or in a two-dimensional graphic form, digital audio and visual form, or by way of electronic media or other media that is enough to enable a relevant consumer to recognize it as a trademark. Therefore, a trademark serves to identify the source of goods or services, and the use of a trademark should cause relevant consumers to recognize it as a sign that identifies the source of certain goods or services. If the purpose or method of using a trademark has to do with describing goods or services and cannot cause relevant consumers to recognize it as a sign that identifies the source of the goods or services, even though the words of the trademark are marked on relevant goods or services, such marking is not deemed trademark use and is not subject to the trademark owner's rights. As stipulated in Article 30-1(1) of the Trademark Act, where any party marks, with bona fide intent and fair use, his/her own name or title, or the name, shape, quality, function, place of origin or other descriptions of the goods or services, not as a trademark use, it is not subject to another party's trademark rights.