What is trademark infringement? What should I do if I am a victim?

Is this trademark infringement?

I recently filed a trademark application for my brand and got it registered in Japan.

Well, congratulations on that! But why do you look so sad?

I found a product affixed similarly trademark. Can I use my trademark right to fight off the company that is selling it?

This section describes what trademark infringement is and what actions trademark owners can take in response to infringement in Japan.

What is trademark infringement?

An act that constitutes trademark infringement in Japan is the unauthorized use of an identical or similar trademark by another person on identical or similar goods or services (Articles 25 and 37 of the JapaneseTrademark Law).

In the illustration below, trademark infringement can be claimed if another person uses the same (◎) or similar (○) trademark within the same or similar range without permission. The infringer may demand an injunction against the infringement, compensation for damages, etc.

Trademark and goods/services identical or similar

It may be easy to imagine that the trademark is identical or the goods/services in which the trademark is used are identical. So, to what extent are trademarks and goods/services similar and to what extent are they dissimilar?

Here are some basic ideas in Japan, but judging similarity is a very technical matter, so self-judgment is dangerous.
If you think that your trademark and another person’s trademark may be similar, please consult a trademark attorney first.

Similarity of Trademark

Whether or not a trademark is similar to another trademark is based on whether or not confusion of origin will arise when the trademarks being compared are used for the identical or similar goods or services.
In determining whether the trademarks are similar, the three points of appearance, pronunciation, and concept of the trademarks are observed, with particular emphasis placed on pronunciation.

Similarity of goods and services

Similarity of goods and services is judged based on whether or not confusion of origin arises when the identical or similar trademark is used for goods or services being compared.

In order to predict whether goods and services are similar, the JPO has established “Examination Guideline for Similar Goods and Services” and assigns a similarity group code to each goods or service. If the similarity group codes are the same, the goods and services are in principle judged to be similar, even if they are in different class.

For more information on similarity group codes, please refer to this article.

Use

To be considered trademark infringement, a trademark must be in “use”.

The definition of what constitutes use of a trademark is provided in each item of Article 2(3) of the Japanese Trademark Law.
It is important to note that the use that constitutes trademark infringement is limited to use in the course of business. Use of a trademark in the home, which is not related to business, does not constitute trademark infringement.

In addition, in order for a trademark to be used, it must be used in a manner that demonstrates its function of distinguishing the goods or services of the owner or others.

Specific Examples

If you would like to know more details and examples of what constitutes infringement and what does not, please check this article.

Please make sure that the another person’s trademark is similar to the registered trademark, that the goods are similar, and that the another person “uses” the trademark.

Hmmm. The another person use mark with one sound difference from my registered trademark and the mark affixed on the same goods that I sell.

The issue is whether the mark is similar to your registered trademark. The similarity of a single different sound is a tricky one that also involves phonetics. The decision depends on whether the different sound is at the beginning of a word, at the end of a word, or in the middle of a word. In any case, you should consult a trademark attorney.

I’m finding it hard to make a decision on my own. I’ll email some trademark attorney’s office and ask them.

What you can do when your trademark is infringed

If your trademark rights are infringed in Japan, you can exercise your trademark rights to control the damage or get compensation.

How to exercise your rights.

• Warning
  If you believe that there is a high possibility of trademark infringement, you should first issue a written warning to the other party. After the warning, the other party may cease to use the trademark, or it may argue that there is no infringement, or it may negotiate a license. If the counterargument is that there is no infringement, we will consider filing a lawsuit.

• Litigation
  By filing a lawsuit with the court, it is possible to fully contest the issue.
  The court where the lawsuit is filed is the district court that has jurisdiction over the defendant’s domicile, place of tortious behavior, etc.
  Furthermore, since trademark infringement lawsuits require a specialized viewpoint, it is possible to file a lawsuit in the Tokyo District Court or Osaka District Court, where the Intellectual Property Division is established.
  When it comes to litigation, it is necessary to hire a lawer.

• Arbitration
  Instead of filing a lawsuit, it is also possible to resolve disputes at an arbitration institution.
  If you are considering resolving a trademark infringement case by arbitration, please take a look at the website of the Japan Intellectual Property Arbitration Center.

• Request for Import Injunction
  If the trademark infringing goods are imported from a foreign country, it is possible to file an import injunction petition with customs to prevent the inflow of infringing goods.
  Please refer to the Customs website for an explanation of filing a petition for an import injunction for intellectual property if you are interested.

Types of Rights Exercised.

• Injunction request
  When you want to stop an infringement, you can file a request to the court.

Article 36 of the Japanese Trademark Law: The holder of trademark right or of exclusive right to use may demand a person who is infringing or is likely to infringe the trademark right or the exclusive right to use to stop or prevent such infringement.
2 In making such a demand under the preceding paragraph, the holder of trademark right or of exclusive right to use may demand the person to take measures necessary for the prevention of such infringement, including the destruction of articles which constitute the act of infringement and the removal of equipment used for or contributing to the act of infringement.

As said here, for example, the following is possible by demanding an injunction
・Cessation of manufacture or sale of the goods
・Disposal of goods in stock
・Disposal of advertisements, catalogs, and packages
・Removal of equipment

Furthermore, the infringer’s willful or negligent is not required when requesting an injunction. If you want to stop the infringing act as soon as possible, it is advisable to apply to the court for a preliminary injunction to stop the infringing act first.

• Claim for compensation for damages
  If you have suffered damages as a result of the infringing act, you can file a claim with the court.

It is very difficult to prove the existence of damages or to calculate the amount of damages.
For example, under the Civil Code in Japan, the prerequisite for a claim for damages is that the infringer must be willful and negligent.
In this regard, the Japanese Trademark Law presumes that the infringer was negligent (Article 103 of the Japanese Patent Law as applied mutatis mutandis under Article 39 of the Japanese Trademark Law), which makes it easier to claim damages from a trademark infringer, which is an inherently difficult hurdle.

The most difficult part is the calculation of the amount of damages, but here, too, Article 38 of the Japanese Trademark Law describes the method for calculating damages.
So, all you have to do is to calculate and prove the amount of damages in accordance with Article 38.
There are many technical terms, but please refer to the JPO website for an explanation. Procedures for remedies for trademark infringement

• Claim for credit recovery
  A claim is filed with the court when it is recognized that the trademark owner’s reputation has been damaged by the infringer’s inferior product.
  Specifically, this request is made when you want to have an apology advertisement published, etc.

• Criminal penalties
  Use of a trademark identical to a registered trademark for goods or services identical to the designated goods or services of the registered trademark is punishable by imprisonment with work for up to 10 years or a fine of up to 10 million yen (Japanese Trademark Law Article 78).
  In the illustration explained above, this is when someone else uses the trademark in the ◎ part without permission.

When the trademark is used in the 〇 portion, it is punishable by imprisonment for not more than five years or a fine of not more than 5,000,000 yen (Japanese Trademark Law, Article 78).

It is also possible to impose both imprisonment and a fine.

Furthermore, if the infringer is a company, in addition to the punishment of the infringer, the company may also be fined up to 300 million yen (Article 82 of the Japanese Trademark Law, the so-called “double punishment” provision).

Precautions when exercising rights

When exercising rights, it is necessary not only to investigate the facts of the infringement, but also to confirm the validity of one’s own trademark rights. There is a possibility that the other party to the exercise of rights may request a trial for invalidation or cancellation of non-use.