Use as a trademark (trademark-function use) refers to using a sign on goods, packaging, transaction documents, or in advertising and other commercial activities in a manner that identifies and distinguishes the source of goods or services. It is the substantive core of the "use" definition in Article 48 of the Trademark Law and a threshold concept shared by infringement determination and non-use cancellation examination.
The Test: Does It Serve the Source-Identification Function?
The same sign used in different scenarios receives completely different legal evaluations:
- Use as a trademark: placing the sign in a prominent position on goods and promoting it as a brand, so consumers rely on it to identify origin;
- Descriptive use: using words from another's trademark to describe the features, ingredients, or purpose of one's own goods, such as a phone case labeled "compatible with Apple iPhone";
- Nominative (indicative) use: referring to another's trademark in good faith to explain the purpose of one's goods or services, such as a repair shop sign saying "specializing in Mercedes-Benz repairs";
- Decorative use: using a design as a purely aesthetic element that does not indicate source.
Even if the latter three categories use a sign identical to another's trademark without permission, they generally do not constitute infringement — this is precisely the practical value of the "use as a trademark" concept.
Its Role in Infringement Determination
The infringing acts under Article 57 of the Trademark Law presuppose "using a sign as a trademark." In judicial practice, courts first examine whether the accused conduct constitutes use as a trademark:
- Setting another's trademark as a search trigger keyword in keyword advertising is, in the majority of cases, regarded as use as a trademark and may constitute infringement;
- A genuine-goods reseller prominently using a brand trademark on its signboard may, if exceeding the limit necessary for indication, be found to be use as a trademark and thus infringing;
- A merely explanatory reference in a product title for model-matching purposes is usually not found to be use as a trademark.
Its Role in Non-Use Cancellation and Maintaining Registration
A registrant's own use must also be use as a trademark to maintain the registration: a trademark used merely as decoration, appearing only within a company name, or used only in internal documents does not count as use within the meaning of Article 48, and a non-use cancellation defense will fail as a result.
Factors in the Analysis
- Whether the sign is placed conspicuously and prominently;
- Whether the manner of use conforms to industry practice for identifying source;
- Whether the user's own genuine trademark is also indicated;
- Whether the relevant public, upon seeing the sign, would associate it with a specific source.
Practical Recommendations
When using your own trademark, always use it prominently and in a compliant manner as a "source identifier"; when using elements of others' trademarks, keep within the boundaries of good faith, necessity, and reasonableness, avoiding prominent amplification that causes source confusion.
How the above concept applies in specific cases still involves detailed differences; you can consult a registered agency at MyTMBee for an analysis opinion tailored to your case.