Be careful with compatibility references to other brands

You may refer to another party's trademark to describe your own product or service — for example, “compatible with” or “suitable for” — provided that this is necessary and honest and your product is indeed compatible. In doing so, you must remain loyal to the interests of the trademark holder and take into account how your audience perceives the message.

Trademark law grants a trademark holder the right to prohibit others from using their trademark. For example, a manufacturer may prohibit competitors from using the name of its operating system. However, that protection does not extend so far as to prevent an app developer from stating that their app works with that system. If a reference is necessary to describe a product or service—certainly in the case of an accessory or spare part—it is permitted in principle. Nevertheless, caution is advised, as a dispute between two chip manufacturers demonstrates.

Are you allowed to say that your product is “compatible” with a brand?

In that case, chip manufacturer Infineon stated that its card chips were “MIFARE-compatible,” while MIFARE is a word mark of NXP. NXP considered this unacceptable and was vindicated by the Court of Appeal in The Hague. Infineon appealed to the Supreme Court, after which the case ended up before the Supreme Court.

The Supreme Court emphasized that market participants must observe a certain loyalty towards the interests of the trademark holder. Anyone referring to a trademark must act honestly and provide accurate information. If these requirements are met and the product is genuinely compatible, the reference is permitted; otherwise, it is not

Take into account the expertise of your audience

Infineon had not lied, but had failed to mention that a separate add-on was required to achieve compatibility. For the Court of Appeal, that was sufficient to assume trademark infringement. The Supreme Court thought otherwise: to assess whether genuine compatibility exists, the audience of the communication and how that audience interprets the message also matter. A purely technical or linguistic interpretation of the word “compatible” is insufficient.

In this case, it was taken into account that the public had purchased tens to hundreds of millions of these chips without complaints about compatibility, and that such an add-on is very common in the industry — even NXP's own chips require one. The Court of Appeal should have taken that into account. The Supreme Court overturned the ruling and remanded the case.

What does this mean for your business?

Be cautious when referring to someone else's brand. If you claim that your product complements a well-known brand product perfectly, that must be true—and you must take into account the level of expertise (or lack thereof) of your audience. You cannot simply assume that customers will understand on their own that something extra is required. This way, you avoid both trademark infringement and misleading the consumer.

Frequently Asked Questions

Am I allowed to use someone else's brand name in my product description?

Yes, provided it is necessary to describe your product or service (such as for an accessory or spare part), you communicate honestly and accurately, and your product is actually suitable or compatible.

When does such a reference actually constitute trademark infringement?

If the information is incorrect or misleading, if you derive an unfair advantage from the brand, or if your public will interpret the compatibility differently than reality justifies.

Does it matter which audience I communicate to?

Yes. How your target audience interprets the message matters. With an unskilled audience, you need to be clearer about what is required to use your product.

Are you unsure about a reference to another brand?

The difference between permitted referential use of a trademark and trademark infringement is subtle. The trademark law specialists at MKB Juristen assess whether your communication is lawful. Contact us and submit your question.