Risk of using another person’s registered trademark

What are the risks of using a new product name without registering a trademark?

I’ve decided to sell a new product and I’ve come up with some product names, but what should I do about trademarks? I know I should register them, but can I start using them first?

You should be aware that if you use a trademark without registering it, you may be infringing on someone else’s trademark rights.

Infringement? What happens if we infringe? What can I do to prevent infringement in the first place?

Cases of infringement, cases of non-infringement, and how to avoid them will be explained!

If I use a registered trademark, am I infringing it immediately?

You may somehow understand that you should register your trademark once you have decided on a name for your new product, but you may be about to sell a new product and start selling the product first (using the new product name) without waiting for registration.

However, if you use a new product name without registering the trademark, you may unknowingly infringe on the trademark rights of others, so you should proceed with caution there.

If I use a registered trademark, is it an instant infringement?

First, let’s review when a trademark infringement occurs.

Trademark rights are a set of rights that includes a trademark and the goods or services for which the trademark is used (Trademark Law, Article 25). When applying for trademark registration, one does not apply for the trademark alone, but specifies the goods or services in which one intends to use the trademark.Therefore, the scope of trademark rights is limited to the range of goods and services designated in the application and approved for registration upon examination by the Patent Office. The goods or services in which the trademark is used are called designated goods/services.

Therefore, use of the same trademark as a registered trademark for goods or services different from its designated goods/services does not constitute trademark infringement.
If the goods or services are completely different, there is no risk of confusion as to the source identified by the trademark. Therefore, in this case, using the same trademark that is registered by another person is not a problem.

On the other hand, the use of a trademark identical to a registered trademark on goods/services identical or similar to its designated goods/services, or the use of a trademark similar to a registered trademark on goods/services identical or similar to its designated goods/services constitutes trademark right infringement.

What is trademark use (trademark-like use)?

The owner of trademark right has the exclusive right to “use” the trademark in connection with the designated goods/services (Trademark Law, Article 25). As mentioned above, it is also possible to exclude others from “using” similar trademarks. Here, the act of “use” should also be noted.

The act of “use” of a trademark is stipulated in each item of Article 2(3) of the Trademark Law; there are up to 10 items, but to put it plainly, the act of displaying the trademark on goods or on the packaging of goods, or of selling such goods.The use of the trademark on uniforms and other items used in the service industry, and the provision of services using such uniforms and items. The term “use” includes distributing advertisements for products with the trademark attached, and displaying the trademark on websites or on the information and advertising pages of products on websites.

If the name of the new product appears on the product’s packaging or in advertising materials, it is “use” of the trademark.

In addition, a trademark has the function of identifying the source of the goods as a sign that distinguishes one’s own goods from those of others, but if the trademark is used in such a way that it does not perform that function, it may not constitute trademark-like use and may not be infringed.

For example, if someone else’s trademark “PIKAPIKA” (「ぴかぴか(PI-KA-PI-KA) means “shining” in Japanese」)is registered for the product “toothpaste”, even if you put an advertisement on the package of your own “toothpaste”, such as “This toothpaste makes your tooth PIKAPIKA(=shine)” (displaying a similar trademark), it is impossible to recognize whose product it is from the “PIKAPIKA” part, and therefore the trademark The use does not constitute an infringement.

The scope of trademark right ineffectiveness is defined in Article 26 of the Trademark Law.
If such use falls under these categories, there is no trademark infringement. Therefore, for example, even if your name, etc. is registered as a trademark, you can safely use it as long as you use it in an ordinary way to indicate your name, etc. For more information, please refer to the article linked below.

What are the risks of infringement?

So what are the risks of trademark infringement?
In the event of trademark infringement, the trademark owner will seek an injunction against the use of the trademark and compensation for any damages incurred by the trademark owner, licensee, or other legitimate right holder as a result of the infringing act. In addition, if the infringer has gained unjust profits from the infringement, the infringer may be required to return the unjustly gained profits to the trademark owner.

In the event of trademark infringement, it is no longer possible to continue to use the product name (trademark) for a new product that has been developed, and the product name must be changed to a different name. In addition, sales of the product will have to be suspended until the product name is changed, and there is a risk of significant lost profits.In some cases, trademark infringement is discovered after a product becomes a hit and becomes widely talked about. In this case, the trademark owner becomes aware of the infringement after the hit product becomes a topic of conversation. It is very important to avoid the risk of trademark infringement, as a trademark infringement lawsuit could further draw public attention and unexpectedly damage the company’s image.

For more information on the infringement, please see the article linked below.

How to check if someone else’s trademark is registered

So how can we find out if someone else has already registered the same product name as a trademark?
You can check registered trademarks and pending trademark applications at the JPO’s “J-platpat” database. It is a public database of the JPO, so you can search it for free.

You can specify your trademark and designated goods/services on the “J-platpat” website, and check the current status (under examination or registered) and right holders of the detected trademarks.

For a detailed explanation of how to search in J-platpat, please see the article in the link below.

Please note that “Amazing DX” also offers a free and easy way to conduct research.

You should look up the registered trademarks on these websites and fully consider what kind of product name you would like to use!

May be available even if registered?

So, if the name of the product I want to use is already registered, is there any way I can use it?

There are cases where it can be used.
The following is an explanation of the three methods: (1) assign or license a prior trademark, (2) change the trademark, and (3) cancel the prior trademark due to non-use.

Good. So we can consider which of the three methods applies to us, and then make a final policy on what to do.

If I find that the name of the product I want to use has been registered as a trademark before me, do I have to give up?
What should I do if I really want to use it?
There are three ways to do so.

(1) Registration of assignment or license
Receive an assignment of trademark rights from the trademark owner or obtain a license to use the trademark (license).
However, obtaining an assignment or license is not easy if you are competing in the same industry. If the trademark owner is not actually using the trademark, it may be easier to negotiate an assignment or license.

(2) Change the trademark
Add other words or letters to the trademark so that it is not considered a similar trademark.
In this case, the entire trademark must be used in such a way that it is recognized as a unitary unit in appearance. A trademark registration may be required.

(3) Cancellation of non-use
Even if a trademark is registered, if the trademark owner has not used the registered trademark for the designated goods/services for a continuous period of three years, a request for a trial may be filed with the Japan Patent Office to cancel the trademark (trial for cancellation of non-use).
Upon filing a request for a trial for cancellation of non-use with the JPO, the trademark registration will be cancelled unless the trademark owner can prove that the trademark has been used.

Once the registration is cancelled, anyone is free to use the trademark, so you must now apply and obtain the rights yourself before someone else takes it again first.
Because of Japan’s first-to-file system, it would be safer to file an application before filing a request for a trial for cancellation of non-use.

Search in Amazing DX!

There are some measures that can be taken if one really wants to use the same trademark as the previously registered one, but in the end, it takes a considerable amount of time before the trademark can be safely used in either way.
Therefore, at the stage of deciding on a product name for a new product, it is necessary to list several candidates in advance and thoroughly consider whether or not the trademark can be used by checking for previously registered trademarks in advance.

With Amazing DX, you can easily check for previously registered trademarks.
As soon as you find that a product name is available, you can easily file a trademark application yourself using Amazing DX’s trademark search. Of course, you can also proceed while consulting with a patent attorney via chat.

If the trademark you wish to use has already been registered by someone else, you can consult with a patent attorney about possible measures, such as whether cancellation is possible. Please contact us using the inquiry form.