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Nominative use, also "nominative fair use", is a legal doctrine that provides an affirmative defense to trademark infringement as enunciated by the United States Ninth Circuit,[1] by which a person may use the trademark of another as a reference to describe the other product, or to compare it to their own. Nominative use may be considered to be either related to, or a type of "trademark fair use" (sometimes called "classic fair use" or "statutory fair use"). All "trademark fair use" doctrines, however classified, are distinct from the fair use doctrine in copyright law. However, the fair use of a trademark may be protected under copyright laws depending on the complexity or creativity of the mark as a design logo.[2]

The nominative use test essentially states that one party may use or refer to the trademark of another if:

  1. The product or service cannot be readily identified without using the trademark (e.g. trademark is descriptive of a person, place, or product attribute).
  2. The user only uses as much of the mark as is necessary for the identification (e.g. the words but not the font or symbol).
  3. The user does nothing to suggest sponsorship or endorsement by the trademark holder. This applies even if the nominative use is commercial, and the same test applies to metatags.

Furthermore, if a use is found to be nominative, then by the definition of non-trademark uses, it can not dilute the trademark.[3]

Nominative use does not require that ownership of the trademark be acknowledged, for example by use of a sentence such as "UNIX is a registered trademark of The Open Group". Such statements may, however, be required by the terms of a license agreement between the parties, and they may be prudent (and courteous) as a way of preventing misunderstandings or allegations of passing off.

History of the doctrine

[edit]

The nominative use doctrine was first enunciated in 1992 by the U.S. Court of Appeals for the Ninth Circuit in New Kids on the Block v. News America Publishing, Inc.[4] In New Kids on the Block, 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. For instance, one could refer to the Minnesota Twins as "that professional baseball team from Minnesota," but it is much more acceptable to just refer to them by their trade name.[2]

In Playboy Enterprises, Inc. v. Welles,[5] where Playboy Playmate Terri Welles was sued for using the trademarked term "Playmate of the Year" in a meta keyword within the HTML code of her website. The court found that Welles had to use the term to completely describe herself, as she had been given that title by the trademark holder. In other words, individuals are not compelled by trademark law to use "absurd turns of phrase" simply to avoid trademark liability.[2]

In New Kids and in Playboy v. Welles, the courts examined older cases, identifying a unifying principle that they then named "nominative use". Among the older cases cited by the Court in Playboy v. Welles was Volkswagenwerk Aktiengesellschaft v. Church,[6] in which the Ninth Circuit had ruled that an independent auto repair shop that specialized in repairing Volkswagen cars and mentioned that fact in their advertising was not liable for trademark infringement so long as they did not claim or imply that they had any business relationship with the Volkswagen company. In the case of Yue v. MSC Software Corporation,[7] the Northern District of California held that the nominative fair use defense is a burden-shifting defense properly decided at the summary judgment stage and would be premature to raise in a motion to dismiss.

References

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Nominative use

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Nominative use, also referred to as nominative fair use, is a doctrine in that allows a party to use another entity's registered to identify or refer to the trademark owner's actual goods or services without implying affiliation, sponsorship, or endorsement by the owner. This defense serves as a limitation on claims under the , balancing the owner's exclusive rights with the public's interest in free expression and accurate identification of products. Originating in the Ninth Circuit's 1992 decision in New Kids on the Block v. News America Publishing, Inc., the doctrine was articulated to address situations where no alternative term exists to describe the trademarked item, such as in comparative advertising, news reporting, or resale contexts. The core test for nominative fair use, as established by the Ninth Circuit, requires three elements: first, the product or service cannot be readily identified without using the ; second, only the minimum amount of the mark necessary for identification is used; and third, the usage does not suggest any sponsorship or endorsement by the owner. This framework displaces traditional likelihood-of-confusion analyses in many cases within the Ninth Circuit, treating nominative use as an that evaluates the defendant's and directly. Courts have applied the broadly to protect activities like , , and academic commentary, as long as consumer confusion is avoided. While the Ninth Circuit's test remains influential, other federal circuits have adopted varying approaches, creating a split in U.S. . For instance, the Third Circuit integrates nominative use factors into the broader likelihood-of-confusion inquiry rather than as a standalone defense, as seen in Century 21 Real Estate Corp. v. , Inc. (2005). The Second Circuit, in cases like International Information Systems Security Certification Consortium, Inc. v. Security University, LLC (2016), has declined to fully endorse the Ninth Circuit's rigid three-part test, instead weighing nominative elements alongside traditional confusion factors. Despite these differences, the doctrine consistently emphasizes referential use over source-identifying or promotional exploitation, promoting competition and truthful communication in commerce.

Overview

Definition

Nominative use, also referred to as nominative , is a in trademark law that functions as a defense against claims of . It allows a party to use another entity's registered or solely for the purpose of identifying or referring to the trademark owner's goods or services, without implying any connection, sponsorship, or endorsement by the trademark owner. At its core, nominative use permits referential applications of a when the goods or services cannot be readily or accurately identified by alternative descriptors, ensuring that such references remain limited to what is reasonably necessary for identification. This principle supports truthful communication in contexts where the itself is the most precise or practical way to denote the referenced product or service. By enabling this limited referential use, nominative use prevents trademark owners from monopolizing the accurate identification of their own branded goods or services, thereby promoting fair competition and protecting consumers' access to informative discourse about branded items in the marketplace. This doctrine aligns with broader principles in law, which seek to balance exclusive rights with public interests in expression and commerce.

Purpose and Rationale

The doctrine of nominative use serves a critical policy goal in by allowing necessary, truthful references to another party's marks in non-deceptive contexts, thereby preserving the integrity of source identification while enabling essential communication. This approach ensures that trademark holders cannot prevent necessary referential uses of their marks to identify their own branded goods or services, avoiding an overbroad extension of rights that could stifle public discourse. Rooted in First Amendment protections for commercial speech, the rationale for nominative use emphasizes the need to safeguard expressive freedoms against unwarranted imposed by enforcement, particularly when such uses involve neutral or referential identification without implying endorsement. By recognizing these protections, the doctrine balances the prevention of consumer confusion with the constitutional imperative to permit truthful statements in and commentary, ensuring that speakers are not deterred from engaging in valuable social and commercial exchanges. Economically, nominative use justifies its existence by facilitating informed and promoting , as it allows for accurate product comparisons and identifications by various parties without the need for cumbersome alternatives that could increase search costs or hinder market efficiency. This framework supports broader economic welfare by enabling parties to reference another party's marks in ways that enhance transparency and utility for buyers, ultimately spurring and quality improvements without granting owners undue control over competitive speech.

Necessity of the Trademark

The first prong of the nominative use test requires that the product or service in question cannot be readily or easily identified without reference to the , establishing the necessity of its use for accurate identification. This element ensures that nominative use is limited to situations where the mark serves an essential referential function, rather than as a source identifier for the defendant's own goods or services. Within the broader three-part framework for nominative , this prong acts as a threshold to confirm that no viable alternative means of exists. Examples of such necessity commonly arise in resale markets, where sellers must use the trademark to denote the genuine branded item, as generic terms like "luxury handbag" fail to convey the specific source and authenticity that consumers seek. Similarly, in repair services, technicians reference the to indicate compatibility with the original product, such as specifying "" repairs rather than merely "" services, since broader descriptors do not adequately identify the exact item requiring service. In these contexts, the mark uniquely signals the product's origin, enabling clear communication without which consumers could not effectively evaluate or access the relevant goods or services. Courts assess the "readily identifiable" threshold by determining whether alternative generic descriptions would suffice to avoid consumer confusion while still allowing identification, often concluding that trademarks are indispensable when omitting them would hinder precise or . This evaluation focuses on practicality: if no other effective way exists to name or describe the plaintiff's product—such as using cumbersome circumlocutions that obscure meaning—the necessity prong is satisfied. For instance, vague terms may not capture the mark's role in denoting quality or compatibility, underscoring why judicial scrutiny emphasizes functional alternatives over mere possibilities.

Scope of Use

The second element of the nominative doctrine limits the defendant's use of the trademark to only as much of the mark as is reasonably necessary to identify the plaintiff's product or service. This prong, part of the three-part test established in v. News America Publishing, Inc., ensures that the referential use does not overshadow or mimic the trademark holder's branding. For instance, a watch repair service may permissibly use the term "" once in an advertisement to specify that it services genuine watches, but repeated or prominent displays of the mark could exceed this boundary. Guidelines for determining reasonable necessity emphasize restraint in application. The mark must not be altered in any way, such as through stylized fonts or modifications that mimic the original , as this could transform the use into something suggestive of affiliation rather than mere identification. Additionally, the use should avoid incorporating extra words or phrases that imply the quality or endorsement of the defendant's own services, keeping the focus strictly on product identification. Usage is thus confined to the nominal role of naming the referenced goods, without expansion into promotional or decorative elements. Courts evaluate compliance with this element through several key factors, including the prominence of the mark in the defendant's materials, the of its appearance, and the overall context of the use. Prominence is assessed by whether the mark is displayed in a way that draws undue attention, such as in bold or oversized lettering on a , which failed the test in Toho Co., Ltd. v. William Morrow & Co. because it replicated the stylized "" mark excessively. considers how often the mark appears; limited instances for identification purposes are favored, while repetitive use across multiple pages or elements may indicate overreach, as seen in Ty, Inc. v. Publications International, Ltd. where frequent Beanie Baby references in a price guide suggested beyond necessity. Context examines the surrounding presentation to confirm the use remains referential, ensuring it does not blend into the defendant's branding or imply anything more than factual identification. These considerations collectively prevent the doctrine from shielding uses that could confuse consumers about source or affiliation.

Absence of Endorsement

The third element of the nominative fair use defense requires that the defendant's use of the does not suggest sponsorship, endorsement, or affiliation by the trademark owner. This prong ensures that the reference to the mark remains purely nominative, without implying any commercial connection that could mislead consumers. Courts evaluate this element by examining whether the overall context of the use avoids creating a false impression of approval or partnership. To determine if a use suggests endorsement, courts consider several key factors, including the , the of marks, and the overall impression conveyed to consumers. The is assessed based on the prominence and of the mark; for instance, if the mark is displayed in a way that dominates the layout or mimics the owner's branding style, it may imply sponsorship. refers to the proximity and arrangement of the defendant's mark relative to the plaintiff's, where close association without clear separation can foster perceptions of affiliation. The overall impression evaluates the holistic effect on the audience, taking into account contextual elements like disclaimers stating "not affiliated with" or "no endorsement by" the owner, which can mitigate risks of . If the third prong is not satisfied—meaning the use implies endorsement and generates consumer confusion—the nominative fair use defense fails, potentially exposing the defendant to liability for under the . In such cases, courts may grant remedies including injunctions against further use or damages based on the likelihood of confusion.

Historical Development

Foundational Cases

The doctrine of nominative use in traces its roots to earlier Ninth Circuit decisions addressing the permissible identification of individuals or products without implying endorsement or confusion. In Smith v. Montoro, the court recognized a claim under the where an actor's name was removed from film credits and replaced with another, constituting reverse by misattributing the performance, but implicitly affirmed the necessity of accurate name use in credits to identify the true performer without misleading consumers. This case highlighted the importance of nominative references to avoid liability when such identification is essential and non-deceptive. The foundational articulation of nominative fair use as a distinct defense emerged in v. News America Publishing, Inc., where the Ninth Circuit addressed a suit brought by the against two newspapers for using the group's name in paid polls soliciting public opinions on band members. The newspapers had established a "900" number service allowing callers to vote on questions like "which kid is the sexiest," generating modest revenue from call fees, which the band claimed implied unauthorized endorsement. The court reversed for the defendants on other grounds but introduced nominative to protect references to a trademarked product where no alternative descriptor exists, distinguishing it from classic descriptive , which applies when a mark describes the defendant's own goods rather than the plaintiff's. In establishing the doctrine, the Ninth Circuit outlined a three-part test for nominative use: first, the product or service cannot be readily identified without using the ; second, the uses only as much of the mark as reasonably necessary to identify the 's product; and third, the does nothing to suggest sponsorship or endorsement by the . Applying this test, the court found the newspapers' use satisfied all elements, as the band's name was the only practical way to reference the group in the polls, the usage was minimal and factual, and no implication of affiliation arose, thereby defeating the infringement claim without requiring proof of no likelihood of confusion. This framework filled a doctrinal gap by permitting referential uses that advance free speech and market information while safeguarding against consumer deception.

Evolution and Adoption

Following the Ninth Circuit's establishment of the nominative fair use doctrine in v. News America Publishing, Inc. (1992), which introduced a three-part test to evaluate such uses, the doctrine saw significant post-1992 developments within that circuit, particularly in adapting to . In Motor Sales, U.S.A., Inc. v. Tabari (2010), the Ninth Circuit extended nominative fair use to domain names, holding that auto brokers' websites using "" in URLs like "buy-a-lexus.com" and "buyorleaselexus.com" could qualify if they met the three-part test—namely, the product could not be readily identified without the mark, only so much of the mark was used as reasonably necessary, and no sponsorship or endorsement was suggested—thus vacating a broad against such use. This application underscored the doctrine's flexibility in contexts, emphasizing that domain names alone do not inherently imply affiliation. The doctrine's adoption spread beyond the Ninth Circuit in the early 2000s, leading to variations in how courts integrate it into infringement analysis. The Fifth Circuit was among the first to recognize nominative fair use outside the Ninth, applying it in Pebble Beach Co. v. Tour 18 I Ltd. (1998) as a factor showing no likelihood of confusion when a used trademarks to refer to famous holes, provided the use was descriptive and non-deceptive. Similarly, the Third Circuit adopted it in Century 21 Real Estate Corp. v. LendingTree Inc. (2005), treating nominative fair use as an that modifies the likelihood of confusion factors rather than replacing them. In contrast, the Second Circuit in International Information Systems Security Certification Consortium, Inc. v. Security University, LLC (2016) weighed the traditional Polaroid likelihood of confusion factors with nominative fair use considerations, including whether (1) the mark identifies the plaintiff's or services, (2) the used only as much of the mark as reasonably necessary with no descriptive substitute available, and (3) the use suggests no sponsorship or endorsement by the plaintiff—without classifying it as a separate . These differences highlight ongoing circuit splits, with some courts (like the Ninth and Fifth) viewing it as inherent to the confusion analysis and others (like the Third) as a distinct defense. As of 2025, the has not adopted a uniform nominative fair use standard, having denied in 2017 on the Second Circuit's International Information decision, thereby preserving the circuit splits. Circuits continue to rely on the doctrine, particularly in digital contexts such as search engines and , where courts assess keyword uses for nominative to avoid implying endorsement; for instance, the Fourth Circuit in Ltd. v. , Inc. (2012) discussed its potential applicability to sponsored search ads but remanded for further analysis under likelihood of confusion. Recent cases reflect this trend, including a 2024 Southern District of ruling in an trademark dispute where the defense failed due to inadequate disclaimers in digital promotions, and a 2025 District of Delaware decision allowing nominative fair use to survive in an ad data platform case involving referential online use.

Applications

Comparative Advertising

Comparative advertising represents a primary application of nominative use, where a trademark holder or third party references a competitor's mark to draw factual or opinion-based comparisons between products or services, thereby promoting competition and enabling consumers to make informed decisions. This practice is protected under the nominative fair use doctrine as long as the reference is necessary for identification, does not imply endorsement or affiliation, and remains truthful without misleading claims. In such contexts, the legal elements of nominative use—necessity, minimal scope, and absence of endorsement—are strictly applied to ensure the advertisement identifies the rival product without creating confusion or deception. For instance, a telecommunications company like Verizon may compare its network coverage to 's by stating "better signal than AT&T in rural areas," using the competitor's mark solely for referential purposes and substantiating the claim with data. A prominent example is the campaign launched in the 1970s, in which conducted blind taste tests and displayed Coca-Cola's trademarked bottle to identify the competing product, allowing viewers to compare flavors directly; this approach exemplifies nominative because it truthfully identified the rival without suggesting partnership or making unsubstantiated superiority claims. Similarly, pain reliever ads like Advil's comparison to , claiming "twice as fast relief" with a footnote disclosing the rival mark's ownership, illustrate permissible use when claims are verified and limited to necessary identification. Boundaries are critical to avoid : advertisements must refrain from false assertions, such as exaggerating a competitor's flaws, and should not prominently feature the rival mark in a way that suggests endorsement or causes consumer confusion. For example, Burger King's 2022 ad falsely claiming its was larger than violated these limits by misrepresenting measurements, leading to legal challenges under laws.

Product Reviews and Resale

Nominative use permits reviewers to reference when identifying and evaluating specific products, ensuring consumers understand the subject of the critique without implying endorsement by the trademark owner. For instance, in technology reviews, phrases like " camera" are commonly employed to denote the exact model under examination, as the product cannot be readily identified otherwise. This application aligns with the nominative doctrine, which requires only as much of the mark as necessary to refer to the goods. In resale contexts, such as online platforms like or thrift stores, sellers use trademarks to describe authentic secondhand items, facilitating informed purchasing decisions in secondary markets. A prominent example involves luxury goods resellers like , which lists items as "Chanel handbag" to confirm authenticity while employing disclaimers to clarify no affiliation with the brand. This practice is protected under nominative provided the goods are genuine and the use does not suggest the reseller is the original source. Challenges arise in resale scenarios where consumer confusion must be avoided, particularly in verifying product genuineness and limiting mark prominence. In the auto parts industry, aftermarket suppliers reference (OEM) trademarks, such as "compatible with parts," to specify fit and function without misleading buyers about origin. Courts emphasize processes and clear labeling to mitigate infringement risks, as seen in disputes over luxury resale authentication.

Versus Descriptive Fair Use

Descriptive fair use, also known as classic fair use, is a statutory defense under the (15 U.S.C. § 1115(b)(4)) that permits the use of a trademarked term in its primary, descriptive sense to describe the defendant's own goods or services, rather than as a source identifier. This doctrine applies when the term has acquired secondary meaning as a but is nonetheless used descriptively without creating consumer confusion about origin. For instance, a seller of could use the word "apple" to describe the itself, even though "Apple" is a registered for computers and software, as the usage conveys the ordinary descriptive meaning unrelated to the mark's branded source. In contrast, nominative fair use allows a defendant to reference a competitor's to identify the trademark owner's actual or services, typically when the defendant's own product cannot be readily identified without it. The core distinction lies in the purpose and target: descriptive fair use involves employing the term in a non-trademark capacity to characterize the user's own offerings, whereas nominative fair use entails referential naming of the mark owner's products for comparative or identificatory purposes, often satisfying a three-part test that requires the mark's necessity, minimal usage, and no implication of endorsement. Courts prioritize descriptive fair use when a defendant's application of the term fits its ordinary descriptive role for their own goods, reserving nominative fair use for scenarios demanding direct reference to the trademarked product to avoid overlap and ensure doctrinal precision. This sequential consideration prevents misapplication, as descriptive use negates trademark functionality altogether, while nominative use balances referential needs against potential confusion.

Versus Parody and Expressive Use

Nominative fair use permits the referential use of a to identify the trademark owner's actual goods or services without implying sponsorship or endorsement, distinguishing it from , which involves a transformative imitation of the mark for humorous or critical commentary. In parody cases, the defendant alters the mark or creates a similar one to evoke the original while conveying a different message, often protected under the First Amendment when no consumer confusion arises regarding source or affiliation. A seminal example is Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, where the Fourth Circuit upheld the use of "Chewy Vuiton" for dog chew toys as a non-infringing , as it humorously critiqued luxury branding without suggesting endorsement by . The core distinction lies in purpose and alteration: nominative use remains neutral and unaltered, employing only the necessary elements of the mark to refer to the genuine product—such as a repair shop mentioning "" watches to describe its services—provided it does not suggest affiliation. Parody, by contrast, transforms the mark into something new for expressive critique, shifting its commercial connotation to commentary, as seen when no referential necessity exists beyond the satirical intent. Expressive use extends this protection more broadly to artistic, journalistic, or non-commercial contexts, such as referencing trademarks in films or news reports, where the First Amendment safeguards the communication unless it explicitly misleads about sponsorship. Nominative fair use applies when the use is purely identificatory and meets criteria like the absence of endorsement, but if a purported parody lacks this referential need and instead relies on transformation for its effect, courts analyze it under parody or expressive doctrines rather than nominative fair use. Hybrid cases, where elements of both overlap, are evaluated separately, often weighing likelihood of confusion against First Amendment interests; for instance, in Rogers v. Grimaldi, the Second Circuit established that expressive uses in artistic works are immune from trademark claims unless they have no artistic relevance or explicitly mislead. However, the U.S. Supreme Court in Jack Daniel's Properties, Inc. v. VIP Products LLC (2023) clarified that the Rogers test applies only when the mark is not used to designate source; otherwise, traditional infringement analysis governs. This separation ensures nominative use protects straightforward references while parody and expressive uses safeguard transformative speech.

Jurisdictional Variations

United States Circuits

In the Ninth Circuit, nominative fair use is governed by a strict three-part test established in v. News America Publishing, Inc., which requires that the trademarked product or service cannot be readily identified without using the mark, only so much of the mark is used as reasonably necessary, and the use does not suggest sponsorship or endorsement by the owner. This framework, refined in cases like Playboy Enterprises, Inc. v. Welles, treats nominative fair use as an integral part of the likelihood of confusion analysis rather than a standalone defense, effectively replacing or supplementing the traditional Sleekcraft factors when applicable. The test emphasizes referential use to avoid consumer confusion while permitting necessary identification of the mark holder's goods or services. Other circuits apply nominative fair use more variably, often integrating it directly into the likelihood of confusion inquiry without adopting the Ninth Circuit's discrete test. In the Second Circuit, as articulated in International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, nominative use is not recognized as a separate affirmative defense but is evaluated through the Polaroid multifactor test for confusion, with considerations of referential necessity folded into the overall assessment of similarity, proximity, and bridging the gap between marks. Similarly, the Fifth Circuit, in Pebble Beach Co. v. Tour 18 I Ltd., acknowledges nominative fair use by examining whether the mark is used solely to identify the trademark owner's goods without implying affiliation, but treats it as a component of the confusion analysis under the "digits of confusion" factors rather than an independent affirmative defense. As of 2025, no uniform federal standard exists for nominative across the circuits, leading to ongoing splits in application. In the Eleventh Circuit, while no binding has formalized the , district courts have increasingly applied nominative fair use principles in emerging digital contexts, such as online promotions and references to trademarks, often drawing from the Ninth Circuit's test absent circuit-specific guidance; for instance, in Earth, Wind & Fire IP, LLC v. Substantial Music Group LLC, the was central to resolving infringement claims involving band alumni promotions that extended to digital platforms.

International Equivalents

In , the doctrine of honest referential use serves as an equivalent to nominative fair use, permitting the use of a competitor's in comparative advertising or product identification provided it is truthful, non-deceptive, and unlikely to cause confusion or depreciate the mark's goodwill under section 22(1) of the Trademarks Act. This defense is implied through rather than explicit statutory language, emphasizing that such use must be "honest" and limited to necessary identification without implying endorsement or affiliation. For instance, in the Supreme Court of 's decision in Ponsardin v. Boutiques Cliquot Ltée, the court examined whether a clothing retailer's use of a similar name to the famous champagne mark depreciated its goodwill, ultimately finding infringement but articulating factors like lack of confusion and referential intent that inform permissible boundaries for honest comparative contexts. Within the , referential use under Article 14(1)(c) of the Trade Marks Directive (EU) 2015/2436 provides a close parallel, allowing third parties to use a registered to identify the proprietor's goods or services as mere references, such as in comparative advertising or resale, as long as the use is non-deceptive, indicates clear distinction from the mark owner, and does not imply endorsement or create a likelihood of confusion. This limitation on trademark exclusivity balances proprietor rights with market freedoms, requiring that the use be "in accordance with honest practices in industrial or commercial matters" and necessary for the third party's legitimate interests. Recent Court of Justice of the rulings, such as in , SA v. Buongiorno Myalert SA (C-361/22) and Audi AG v. GQ sp. z o.o. (C-334/22), have clarified the conditions for the referential use exception under Article 14(1)(c), stressing that it applies only where the use is necessary to identify the proprietor's goods or services, complies with honest practices in industrial or commercial matters, and does not take unfair advantage of or harm the trade mark's functions, as seen in non-confusing referential scenarios like certain product comparisons. Australia and the United Kingdom adopt frameworks akin to the EU's referential use doctrine. In Australia, section 122(1)(d) of the Trade Marks Act 1995 provides a defense for the use of a trade mark in good faith to indicate the intended purpose of goods or services or other characteristics, such as in comparative advertising, provided the use takes no unfair advantage of and is not detrimental to the distinctive character or repute of the trade mark, integrated with consumer protection standards under the Australian Consumer Law. Similarly, in the UK, section 11(2) of the Trade Marks Act 1994 limits the effects of a registered trade mark to permit referential use, such as indications of the kind, quality, or intended purpose of goods or services (including in comparative advertising), provided the use is in accordance with honest practices in industrial or commercial matters and does not impair the trade mark's indication-of-origin function, as retained and aligned with the EU directive post-Brexit. In , equivalents to nominative use are more limited, with jurisdictions like prioritizing anti-confusion principles over broad defenses. Under Article 59 of China's Trademark Law, nominative or descriptive use is permitted only for legitimate explanations of goods without implying affiliation or causing misidentification, but courts apply a strict likelihood-of-confusion test, often rejecting referential claims in comparative contexts unless minimal and non-commercial in nature. This narrower approach reflects a focus on robust protection amid rapid market growth, contrasting with more permissive Western doctrines.

References

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  38. https://law.justia.com/cases/federal/appellate-courts/F3/155/526/523642/
  39. https://content.next.westlaw.com/Document/I420ad310dfbe11eebefdf0985e3feb07/View/FullText.html
  40. https://intellectual-property-helpdesk.ec.europa.eu/news-events/news/cjeu-rules-trade-mark-referential-use-exception-zara-and-audi-cases-2024-02-09_en
  41. https://www.legislation.gov.uk/ukpga/1994/26/section/11
  42. http://classic.austlii.edu.au/au/legis/cth/consol_act/tma1995121/s122.html
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