Is “suitable for” enough?
Let’s imagine that your customer is looking to buy fuel nozzles for their ship’s diesel engine. They look online for an affordable and reliable option and stumble upon the website of your company, which offers exactly what they are looking for. On the “Products” page they can see neatly organised images of the parts and on top the phrase “Spare parts for X engine:”. As a customer, would they think the parts are original? Would they think that your company is an official dealer of the original manufacturer? How about if the phrase was “Spare parts suitable for X engine:”?
A trademark is a recognisable sign, design, image, word or expression, which is used to identify products or services of a particular source. In some countries slogans, taglines and titles may also be part of the trademark. The aim is to differentiate the products or services from those of others. The trademark may appear on the package, label, advertisement, website, product, etc. Essentially, it serves as a badge of origin. A company can register its trademark so that they have the exclusive right to use it. However, in many countries, if a trademark is not used for a certain period, it can be lost. If used frequently, it can exist indefinitely.
Passing off and what to look out for
Companies are generally not allowed to misrepresent their goods or services as those of another company or to give the impression that they are somehow related to another company’s goods or services. Doing so is referred to as “passing off”. This misrepresentation does not have to be intentional. Honest mistakes can also result in a lawsuit. As long as the statement or image used creates or might reasonably create confusion in the mind of the customer that will be sufficient to be guilty of “passing off”.
That is why it’s recommended for a company to state clearly the origin of the parts they are selling. The best example from the spare parts market is the use of the phrase “suitable for”. If a company states that the parts are “for X engine” (X being the engine brand) on their marketing documentation, the customer might think that they are original. The reason is that the engine brand is a registered trade name and stating “parts for X engine” might be seen as an unjust use of the trademark. The same goes for domain names – if you register a domain name such as www.Xspares.com, it might also cause confusion in the mind of the customer.
Mentioning the trademark or brand of an engine does not necessarily infringe the intellectual property of the company as long as it is part of a normal sentence and it’s not used in a “trademark-like manner”. That is why many companies have adopted the “suitable for” phrase, making it clear that the parts are not original.
Is “suitable for” really enough?
There is an example from Germany whereby an independent supplier was taken to court by an engine builder. The supplier was selling non-original NOx-affecting components, described as being “suitable for” one of the engine models of the engine builder. The engine builder acquired some of the components and determined that they were not original and had no IMO number. As such, they did not comply with the NOx regulations for engines running under the Parameter Method. Consequently the parts being advertised were not suitable for engines running under the NOx Parameter Method.
Whether the components were intended to be used on such an engine or not, was irrelevant.
Luckily, this case only applies in Germany but it is a perfect example of how these things can change. For now, we recommend to our members to always make the origin of the parts well-known in their marketing materials, quotes, order confirmations and any other documents which contain that information and to always make sure to add a note stating that if the engine runs under the Parameter Method for measuring NOx emissions you will need to discuss the customer’s requirements.
We understand that it is necessary to market and advertise your products whether they are original or not. We also acknowledge that many non-original components have good quality and serve their purpose perfectly, despite some common misconceptions in the industry.
We always recommend being careful when using a trademark in your documentation, marketing materials or website. Check and double-check to minimise the risk of getting involved in potentially costly legal proceedings. One of our members got caught out at SMM because a member of their staff had included some old marketing material that did not comply with the above. This was done entirely innocently in order to save money, but it proved to be an expensive mistake.