NORMATIVE FAIR USE IN TRADEMARK

In Government E Marketplace vs Unilex Consultants & Ors. (Delhi High Court -18 April, 2022), Court held that unless trademark qualifies the normative fair use no one is permitted to use ‘GeM’ or the ‘GeM’ logo, either as part of a domain name or extension on their URL or as a mark or name in a manner so as to create confusion/deception in the mind of the public that they are affiliated with, sponsored by or connected to the Plaintiff. Nominative fair use is permissible in so far as the use is such that it does not depict sponsorship by the trademark owner and the use is “reasonably necessary”.  This case has been filed by Government E Marketplace ( “GeM”), a National Public Procurement portal and end to end online marketplace from where both Central and State Government Ministries /Departments, CPSUs and SPSUs effect the procurement of goods and services who uses the mark ‘GeM’ along with the logo. Court ordered for suspension /locking of domain names, which contain  the term ‘GeM’, ‘e-GeM’ or if the term ‘GeM’ is in the domain name itself.