Unauthorized Use of Trademarks

Unauthorized use of trademark is really scary!

I’m going to release new products soon, but I can’t expect the sales volume and don’t want to spend too much money. So we are going to file an application for registration of a mark for the product name later. Is it OK?

No. If you postpone registering the mark, you cannot sue to stop other companies’ use if they start using similar marks. On the other hand, if other companies register the marks earlier, you will not be able to use the product name since it constitutes a trademark infringement, even if you actually started using the name.

Oh my God! Infringement? Scary!

Company names and service names are protected by “trademark right” and unauthorized use of a trademark owned by another company will constitute an infringement.

However, there may be a lot of people who do not know things to look out for to prevent trademark infringement when they give names. If you unknowingly give a name that may infringe another company’s trademark, you will not be able to use the name, no matter how good the products are. You will also be at risk of being penalized for infringement.

To avoid unnecessary troubles, we recommend that businesses who are considering giving names for their companies or services proceed based on proper understanding of trademark right.

This article will explain when trademark infringement, such unauthorized use of trademarks, is established, and what damages and penalties are imposed in cases of trademark infringement.

What is trademark right?

Trademark right is the right to have a trademark protected as a kind of property so that it cannot be used or imitated by other companies (other persons) without permission.

A trademark is a mark that is attached to a product or service. Company names, logos, etc. are also included. There are various types of trademarks, such as, text, graphics, sings, colors, sounds, and holograms. Examples include the product names such as Coca-Cola and Calpis, the logo of Kuro-neko (black cat) of Yamato Transport, and the melody (registered as a sound trademark) of Seirogan famous for the trumpet mark.

Trademark right is not automatically granted. A company or person who wants to obtain trademark rights must file an application with the Japan Patent Office for trademark registration. The trademark and the goods or services are registered as a set.

Once a trademark is registered, the trademark owner is granted the exclusive right to use the trademark for the goods and services for which the trademark is registered (“designated goods/services”).

In addition, use of the registered trademark or a trademark similar thereto by a third party other than the owner of the trademark is prohibited for the following adjacent areas:

– Use of a trademark similar to a registered trademark in connection with the designated goods or services for which the trademark is registered

– Use of a registered trademark in connection with the goods or services similar to the designated goods or services for which the trademark is registered – Use of a trademark similar to a registered trademark in connection with the goods or services similar to the designated goods or services for which the trademark is registered

Use of a trademark without permission from the trademark owner (unauthorized use) in violation of these prohibitions constitutes trademark infringement.

Two requirements for trademark infringement

There are two requirements for trademark infringement: “use of a registered trademark or use within a similar scope” and “trademark-like use”.

Use of a registered trademark or use within a similar scope

The first requirement for trademark infringement is the use of a registered trademark or a trademark similar thereto in connection with the designated goods or services or the goods or services similar thereto. As mentioned above, the use of a trademark similar to a registered trademark by an infringer and the use of a trademark in connection with the goods or services similar to the designated goods or services for which the trademark is registered are also prohibited.

Trademark-like use

The second requirement is that the use should be trademark-like use.

Trademarks are used to distinguish your goods and services from those of others that are similar to your goods and services, and to clearly indicate to consumers that the goods and services are yours.

This is the trademark’s function of distinguishing one’s own products from those of others.

In light of this trademark’s function, use of another company’s registered trademark or the similar trademark in a manner that indicates to consumers that the products are yours constitutes trademark infringement, but use that does not indicate to consumers that the products are yours does not constitute trademark infringement. Use of a trademark in a manner that indicates to consumers that the products are yours is called trademark-like use. As a requirement for trademark infringement, the use should be trademark-like use.

Injunction and damages

In case of trademark infringement, the trademark owner may demand that the infringer stop the trademark infringement. This is called demand for injunction.

In addition, the trademark owner may also demand damages from the infringer.

In some cases, an infringer uses a registered trademark without permission without knowing that the trademark is a trademark registration owned by the trademark owner, thereby infringing the trademark right. Even in such cases, the infringer is in principle presumed to be negligent and the infringer is liable for damages. In addition, when claiming damages, the trademark owner must in principle prove the amount of damages. However, the Japanese Trademark Law contains special provisions regarding the calculation of the amount of damages to make it easier to prove the amount of damages.

Penalties

Intentional trademark infringement is subject to criminal penalties.

Trademark infringement is punishable by imprisonment for up to 10 years or a fine of up to 10 million yen, or both. Not only when an infringer commits an act of infringement knowing it is a trademark infringement, but also when an infringer unknowingly infringes another company’s trademark right, dishonest responses without stopping the infringing act will constitute intentional trademark infringement and runs the risk of developing into a criminal case.

What you can do to prevent trademark infringement

Two important points to prevent trademark infringement are to “conduct a preliminary search for other companies’ trademark rights” and “register your own trademark. Thorough implementation of these two points will help prevent the risk of unknowingly infringing another company’s trademark rights or having your company’s product names or logos imitated.

Conduct a preliminary search for other companies’ trademark rights

To prevent your company from infringing trademark rights, it is important to check the status of trademarks filed earlier and take care not to use similar trademarks.

The JPO’s J-PlatPat (Patent Information Platform) allows you to check information on pending applications and registered trademarks free of charge. You can search for both character and device marks, so make sure to conduct a thorough search before coming up with a name or logo and using it. Even if there is(are) similar trademark(s), determining whether or not an act actually constitutes an infringement requires a high level of knowledge. Even if you think your mark is not similar to the mark in question or there is no problem because it’s my original, it may be an infringement in case a third party judges that both are similar with each other. If you have concerns, it is safe to consult with a patent attorney or lawyer who is familiar with intellectual property rights.

Registering your trademarks

If you have done a preliminary search for similar trademarks and found that there are no similar marks, you should register your mark as soon as possible.

You might think, “Well, maybe we can wait until it starts selling and becomes popular,” “It will cost a lot to file an application and we don’t want to do it now,” or “We’d rather start selling now!” However, since trademarks are registered in order of application, it is risky to put off filing of an application.

If you do not register your trademark, you will not be able to sue other companies to stop using it, even if they are using a similar trademark. On the other hand, if another company registers a trademark first, you will not be able to use the name as a trademark infringement, even if you were actually the first to use the name. The damage you will suffer in such a case will be quite large.

In order to feel safe to start providing your services, it is advisable to protect your logos or names by registering the trademarks in advance. In the long run, this will protect not only you but also your customers who believe in you.

If you unknowingly infringe trademark right, you will be heavily penalized. Conversely, if you are not conscious of protecting your product names or service names, your trademark right may be infringed without your knowledge, which could have a negative impact on your business.

To prevent these risks, it is important to conduct a trademark search before naming products or creating logos. In addition, to protect your names, you should file applications for registration of the marks as soon as possible once you find out there are no similar trademarks.

I understand that we need to increase our awareness of trademark right, both to avoid unauthorized use of others’ marks and to prevent our marks from being used by others without permission.

Amazing DX allows you to easily choose your designated goods and services online. To use the system, you can easily conduct a search by first choosing more goods/services from the list, and then conduct a further search with only those marked with “X” removed.

If you are not sure which goods or services to choose, our trademark attorneys will be happy to answer your questions. Please feel free to contact us via chat.