What is Trademark Use?

I wonder if a registered trademark can be used for any product once it is registered.

I’ve registered a trademark before, and I’m thinking of using the same trademark for another product.

Will this cause any problems?

A registered trademark does not mean that it can be used on any product

Trademarks that have not been used for three consecutive years after registration may be canceled by filing a request for a trial for cancellation of non-use.

In order to avoid cancellation of a trademark that you still intend to use, you should check the “Use of Trademarks” section.

What is the ”use” of a registered trademark?

The term “use” of a trademark does not simply mean ”to use”.

The purpose of a trademark is to maintain the business reputation of the person using the trademark by protecting it.

In other words, a trademark is only valuable if it is used correctly.

This article explains the concept of “use” of a trademark, such as “trademark-like use” and “use of the same trademark in a socially accepted manner,” which you may see when dealing with trademarks.

What is the definition of “use” (trademark-like use) in the Trademark Law?

The “use” of a trademark is defined in Article 2 of the Trademark Law, which simply states

bearing of its trademark on goods or product packaging, or the sale of its products,

To affix a trademark to uniforms and other items used in the service industry and to provide services using such uniforms and other items,

Distributing advertisements for products with the trademark attached, or displaying the trademark on information or advertising pages of products on websites or homepages,

and others are defined as “use”.

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

And by “goods/products” and “services” here, we mean the “goods” and “services” designated in the trademark application (hereinafter referred to as “designated goods or services”).

Therefore, simply stating a registered trademark, regardless of designated goods or services, does not constitute “use”.

In addition, since trademarks are used in the course of business by businesses that produce and sell products or provide services, personal use of a trademark without regard to business does not constitute “use” of a trademark.

Moreover, since a trademark is required to have the function of an identification mark (a function that identifies the goods, etc.), use of a trademark in a state in which it does not function as an identification mark does not constitute “use” of the trademark.

Use of registered trademarks

A trademark right is a right that combines a trademark with a product or service.

Therefore, a trademark registration is not merely a registration of the trademark alone, but must also designate the goods or services for which the trademark is to be used.

As shown in the table below, trademark rights include the exclusive right to the registered trademark and the right to exclude others from using the trademark within the similar range of the registered trademark.

＜table＞

Note that the scope of the right to prohibit use of others (yellow cells in the box) is the right to exclude use by others, so use only within this scope does not constitute use of a registered trademark.

*If the rights of exclusive use and the rights to prohibit use of others are infringed, it consists an infringement of trademark rights. For more information on infringement, please see the following link.

What is the use of the same trademark in the “socially accepted sense”?

A registered trademark may be canceled by a non-use cancellation trial if it has not been used for the designated goods or services for a continuous period of three years. (Any person may file a request for a trial for cancellation of non-use with the Patent Office.)

If a trial for cancellation of non-use is requested, the trademark owner must prove that he/she is using his/her registered trademark for the designated goods or services.

At this time, it should be noted that if the trademark is used only within the scope of the prohibited right in the above table, and the same trademark as the registered trademark is not used for the designated goods or services, it does not constitute use of the registered trademark.

In a situation where a trademark is used only within the scope of a right to prohibit use of others, it can happen that the registered trademark is cancelled when an attempt is made to enforce the right against the trademark infringer.

However, even if a trademark is not identical to a registered trademark, it can be exempted from cancellation if it is socially accepted as being identical to the registered trademark. A trademark that is identical in the “socially accepted sense” of the word means a trademark consisting of identical characters with changes only in typeface, such as hiragana, katakana, romaji, and kanji characters.

*It should be noted that a different judgment from the above will be made in the case of a change in the type of characters, where the concepts arising from the trademark are not identical, or in the case of a combined trademark.

In order to avoid having your registered trademark cancelled, you should regularly review the manner in which you use your registered trademark and secure evidence of use.

I see.

So, just because you registered a trademark, it can be revoked if you use it only for different products.

I’ll be sure to check to see if it’s a “trademark use!”

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We hope you have learned about the “use” of trademarks.

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