I’m creating a pdf report/ eBook which I intend to give free but I may sell it.
The thing I’m concerned about is whether I can mention sites like Facebook and Google in it and whether I would need to mention their respective trademarks or if I should omit them please?
I know Facebook has a registered trademark (R) and Google is unregistered ie TM.
I’m thinking that it would probably be best if I omit those symbols and include a disclaimer at the beginning like this:
‘All IPRs, trademarks and trade names belong to their respective companies and ‘xxxx Limited’ does not claim to be sponsored, endorsed, administered, associated nor affiliated with the following companies in any way: (‘List of companies in the report that that applies to)’
Alasdair Taylor's Answer
Trade mark law is different in different countries, and whilst it is partially harmonised across the EU, this answer is concerned exclusively with how English law deals with our situation.
The starting point for analysis of the situation is this: you are free to do anything with others’ trade marks – unless what you want to do is prohibited.
The main prohibitions on the use of others’ trade marks fall under the law of registered trade marks, the law of passing off and copyright law.
Section 10 of the Trade Marks Act 1994 contains various prohibitions on the use of others’ registered trade marks. For example, 10(1) provides that:
A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
Section 10(2)(a) provide that:
A person infringes a registered trade mark if he uses in the course of trade a sign where because … the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered … there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.
Section 10(3) provides that:
A person infringes a registered trade mark if he uses in the course of trade a sign which ? (a) is identical with … the trade mark, and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
Whether your proposed uses of the trade marks would even fall within these provisions is highly questionable. Simply mentioning a trade mark in a text does not amount to use “in relation to goods or services” even if the text is sold. It is unlikely to constitute “trade mark use” (a subject about which it is possible to write an entire book).
In any case, Section 10(6) of the Act says:
Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee. But any such use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.
Your usage, as I understand it, would be for the purpose of identifying the various services as those of the various proprietors – and providing such use is honest and does not take unfair advantage etc you should be protected from any claims of registered trade mark infringement under English law.
Passing off is unlikely to be relevant in the circumstances you describe.
Copyright will only apply to trade marks in stylised form that amount to “artistic works” within the meaning of the copyright legislation – if you just use the basic word marks then you will avoid any risk of copyright infringement.
Including a trade mark disclaimer along the lines suggested doesn’t do any harm – and could in some circumstances aid an “honest use” defence.
ps I haven’t checked, but I would be astonished if Google’s various trade marks were not protected by batteries of registrations across many jurisdictions.