Using trademarks in promotional materials: Legal challenges across the globe

Trademark infringement occurs when a party uses a trademark in a way that is likely to cause confusion among consumers about the source or origin of the goods or services. This confusion can harm the reputation of the trademark owner and dilute the distinctiveness of the mark. While trademark laws aim to protect the rights of trademark owners, the issue becomes more nuanced when it comes to the use of trademarks on free promotional materials.

In the United States, trademark law is primarily governed by the Lanham Act. The use of a trademark on free promotional materials without the owner's permission may constitute trademark infringement under Section 32 or Section 43(a) of the Lanham Act. Courts consider factors such as the likelihood of confusion, the strength of the mark, and the good faith of the alleged infringer when determining infringement.

Case law in the U.S. has established that the unauthorized use of trademarks on promotional items can be considered infringement. For instance, the case of Playboy Enterprises, Inc. v. Welles highlighted the importance of protecting trademarks even in the context of free promotional materials. Terri Welles is a former Playboy model who had been named Playboy's Playmate of the Year ("PMOY") in 1981. In the mid-1990s, Welles created a personal and promotional website where she identified herself as a former Playboy model and Playmate of the Year. Notably, Welles frequently incorporated the magazine's name and the acronym "PMOY" in describing her association with Playboy. Playboy successfully argued that the unauthorized use of their trademark on promotional items could dilute the distinctiveness of their brand.

In the European Union, trademark protection is governed by the European Union Intellectual Property Office (EUIPO) and national laws of member states. The use of a trademark on promotional materials without permission may constitute infringement under Article 9 of the EU Trademark Regulation. Similar to the U.S., the likelihood of confusion and the potential harm to the distinctive character of the trademark are key considerations.

Case law in the EU has shown that unauthorized use of trademarks on free promotional materials can lead to legal consequences. The Arsenal Football Club plc v. Reed case involved legal action against Matthew Reed for selling souvenirs featuring registered trademarks owned by Arsenal FC without permission. Arsenal Football Club Plc alleged trademark infringement and passing off, asserting that Reed's use of their trademarks could cause confusion and harm the distinctive character of the brand. The European Court of Justice considered whether Reed's third-party use affected the essential function of the trademarks, ultimately finding that it was liable to do so. The court highlighted that the use of a trademark on promotional items, even if given away for free, can still be considered infringement if it takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trademark.

China has its own set of regulations regarding trademark infringement. The Trademark Law of the People's Republic of China prohibits the unauthorized use of trademarks on goods, including free promotional materials. Chinese courts consider factors such as similarity of marks, the degree of recognition, and the likelihood of confusion when determining infringement.

In a notable case, the Beijing High People's Court ruled in favor of Burberry in a trademark infringement lawsuit. The court’s decision restrained the defendants from using, producing, or selling products bearing any trademarks similar or identical to Burberry’s trademarks and from making any false promotional statements that might cause any confusion relating to Burberry. The court held that the unauthorized use of Burberry's trademark on free promotional items constituted infringement, emphasizing the importance of protecting well-known trademarks.

While there is a general consensus on the protection of trademarks, challenges arise when determining the scope of infringement in the context of free promotional materials. One key consideration is the intent of the party using the trademark. If the use is in good faith and does not lead to confusion, courts may be more lenient.

Additionally, the distinctiveness and strength of the trademark play a crucial role. Well-known and distinctive trademarks are afforded broader protection, making it easier for owners to establish infringement. However, for less distinctive marks, the threshold for proving infringement may be higher.

The use of trademarks on free promotional materials without the owner's permission raises complex legal issues that vary across jurisdictions. While there is a general consensus on the protection of trademarks, the interpretation and application of trademark laws differ among countries. Businesses engaging in promotional activities must be aware of the legal landscape in each jurisdiction to avoid potential infringement claims.

Yes, using a trademark on free promotional materials without permission can still constitute infringement. Courts in jurisdictions like the U.S., EU, and China have ruled that even non-commercial use may harm the reputation or distinctiveness of the trademark. The key issue is whether the use creates a likelihood of consumer confusion or unfairly capitalizes on the trademark's reputation.

Courts look at multiple factors, including the similarity of the marks, the nature of the goods or services, the intent of the party using the trademark, and how well-known the mark is. Good faith alone does not guarantee immunity if the use causes confusion or dilutes the brand. In cases like Playboy v. Welles and Arsenal FC v. Reed, even seemingly descriptive or fan-based uses were found to infringe on trademark rights.

Well-known trademarks enjoy a broader scope of protection because they carry more recognition and commercial value. Unauthorized use—whether on commercial goods or free items—can more easily be seen as exploiting the brand’s goodwill. Courts tend to protect these marks more vigorously to prevent reputational harm and to preserve the unique identity of the brand.