What is trademark infringement? How do you determine if it is infringement?

Is this trademark infringement?

I used shampoo produced by Company A last night! Then, you see, my hair became so shiny.

Nice. I don’t have hair so I can’t try that nice shampoo.

Well, yes…?
By the way, I want to send out a message on social media about how good this shampoo is. But it seems that both the name of company A and the brand name of the shampoo are registered as trademarks, so would it be a trademark infringement if I post it on SNS?

This section explains what trademark infringement is, when it does and does not constitute trademark infringement, and what actions trademark owners can take in response to infringement in Japan.

What is trademark infringement in Japan?

Overview

A simple explanation of trademark infringement is the act of “using” a trademark that is “identical or similar” to a registered trademark on “identical or similar goods or services” by another person without permission.

The Japanese Trademark Law describes the validity of trademark rights and infringement of trademark rights as follows.

Article 25 The holder of trademark right shall have an exclusive right to use the registered trademark in connection with the designated goods or designated services; provided, however, that where an exclusive right to use the trademark is established in connection with the trademark right, this provision shall not apply to the extent that the holder of exclusive right to use has an exclusive right to use the registered trademark.
Article 37 The following acts shall be deemed to constitute infringement of a trademark right or an exclusive right to use:
(i) the use of a trademark similar to the registered trademark in connection with the designated goods or designated services, or the use of the registered trademark or a trademark similar thereto in connection with goods or services similar to the designated goods or designated services;
(ii) the possession for the purpose of assignment, delivery or export of the designated goods, or goods similar to the designated goods or designated services, affixed with the registered trademark or a trademark similar thereto on the goods or their packages;
(iii) the possession or importation of articles affixed with the registered trademark or a trademark similar thereto, that are used in the course of the provision of designated services or services similar to the designated services or the designated goods by a person who receives the said services, for the purpose of the provision of the said services through use of the said articles;
(iv) the assignment, delivery, or possession or importation for the purpose of assignment or delivery of articles affixed with a registered trademark or a trademark similar thereto, that are used in the course of the provision of designated services or services similar to the designated services or the designated goods by a person who receives the said services, for the purpose of causing the provision of the said services through use of the said products;
(v) the possession of products indicating the registered trademark or a trademark similar thereto, for the purpose of using the registered trademark or a trademark similar thereto in connection with the designated goods or designated services, or goods or services similar thereto;
(vi) the assignment, delivery, or possession for the purpose of assignment or delivery, of articles indicating the registered trademark or a trademark similar thereto, for the purpose of causing the registered trademark or a trademark similar thereto to be used in connection with the designated goods or designated services, or goods or services similar thereto;
(vii) the manufacture or importation of products indicating the registered trademark or a trademark similar thereto, for the purpose of using or causing to be used the registered trademark or a trademark similar thereto in connection with the designated goods or designated services or goods or services similar thereto; and
(viii) the manufacture, assignment, delivery or importation, as a business, of products to be used exclusively for the manufacturing of products indicating the registered trademark or a trademark similar thereto.

What is Identical/Similar?

In the diagram below, if a trademark is used without permission within the same (◎) or similar (○) range, you can basically claim trademark infringement.
Use within a dissimilar range (x) is not trademark infringement.

It is easy to understand that trademark infringement occurs when the trademark used is identical and the goods or services used are identical. In the diagram below, this is where the ◎ is located.

A common misunderstanding occurs when a trademark identical to a registered trademark is used for goods or services that are different from its designated goods or services. In this case, there is no trademark infringement.
If the goods or services are completely different, there is no risk of confusion as to the source identified by the trademark. In the figure below, this is the x in the upper right-hand corner.

◎: Same range
○: Similar range
×: dissimilar range

So how is it determined that trademarks are similar, or that goods and services are similar?

As it turns out, it is decided by a judge when a lawsuit is filed, and the method of decision is as follows.

Trademark Similarity

The similarity between a trademark and a trademark is determined by whether or not confusion of origin arises when the contrasting trademarks are used for the same or similar goods or services.
In making this determination, the three aspects of the trademark, appearance , pronunciation and concept are taken into consideration in addition to the actual circumstances of the transaction.

Whether or not trademarks are similar is difficult to determine without specialized knowledge and experience in trademark matters.
If you are in doubt as to whether or not your trademarks are similar, it is advisable to first contact a trademark attorney who specializes in trademarks and have him or her conduct a search.

Similarity of goods and services

Similarity of goods and services is determined by whether or not confusion of origin arises when the trademark is used for the same or similar goods or services being compared.
In order to predict whether goods and services are similar or not, the JPO has established the “Examination Guideline for Similar Goods and Services” and assigns a similarity group code to goods and services. If the similarity group codes are the same, the goods and services are, in principle, judged to be similar.

For more information on similarity group codes, please refer to this article.
[Can I register a trademark if the classifications are different? Examples and decision-making methods!](https://amazing.dx.harakenzo.com/guide/different-class/)

What is use?

Definition

The owner of trademark right has the exclusive right to “use” the trademark in connection with the designated goods and services (Trademark Law, Article 25).
Use” of a trademark is defined in each item of Article 2(3) of the Japanese Trademark Law.

Article 2 (3) “Use” with respect to a mark as used in this Act means any of the following acts:
(i) to affix a mark to goods or packages of goods;
(ii) to assign, deliver, display for the purpose of assignment or delivery, export, importor provide through an electric telecommunication line, goods or packages of goods to which a mark is affixed;
(iii) in the course of the provision of services, to affix a mark to articles to be used by a person who receives the said services (including articles to be assigned or loaned; the same shall apply hereinafter);
(iv) in the course of the provision of services, to provide the said services by using articles to which a mark is affixed and which are to be used by a person who receives the said services;
(v) for the purpose of providing services, to display articles to be used for the provision of the services (including articles to be used by a person who receives the services in the course of the provision of services; the same shall apply hereinafter) to which a mark is affixed;
(vi) in the course of the provision of services, to affix a mark to articles pertaining to the provision of the said services belonging to a person who receives the services;
(vii) in the course of the provision of services through an image viewer, by using an electromagnetic device (an electromagnetic device shall refer to any electronic, magnetic or other method that is not recognizable by human perception; the same shall apply in the following item), to provide the said services by displaying a mark on the image viewer; or
(viii) to display or distribute advertisement materials, price lists or transaction documents relating to goods or services to which a mark is affixed, or to provide information on such content, to which a mark is affixed by an electromagnetic device.
(4) To affix a mark to goods or other articles provided for in the preceding paragraph shall include to form in the shape of the mark goods, packages of goods, articles to be used for the provision of services, or advertisement materials relating to goods or services.

In other words, the following, for example, are considered use of a trademark

• Displaying its trademark on goods or product packaging, or selling its goods.
• Affixing a trademark to an item used in the service industry, or providing services using such an item.
• To display a trademark in an advertisement of goods, etc.

as a business

Acts of use that constitute trademark infringement are limited to those done in the course of business.

Therefore, use of a trademark in the home, which is not related to business, is not subject to trademark infringement.

Identifying Function of the Trademark

Trademarks also have the function of identifying the source of the goods as a means of distinguishing them from other products.
The function of identifying one’s own and other goods is the ability to identify whose business the goods bearing the trademark are related to.

Simply put, if there are goods of the same kind but with different trademarks, it is possible to distinguish which company’s goods belong to which company.

If the use of the trademark is such that it does not perform that function, it does not constitute trademark-like use and may not be infringed.

Is this a case of trademark infringement?

Cases where “similarity” is at issue

If the registered trademark “大森林”(big-forest-grobe) is used for a scalp hair-growth product when there is a registered trademark “木林森”(tree-grobe-forest) used for a scalp hair-growth product, would it be trademark infringement?
The actual situation is a bit more complicated, but here is an example of a case that has been argued before the Supreme Court to determine whether the trademarks are similar.
The Supreme Court judges ruled as follows

(Japanese Translation) The characters used are identical for “森” and “林”, and the characters for “大” and “木”, which are not identical, can be confusing depending on the brush strokes; the appellant’s mark is merely a coined word with no meaning; and both of the characters used in the mark are reminiscent of the effect of hair growth. It can be recognized that the product is reminiscent of a tree. From the above, when observed and contrasted as a whole, it is clear that the two are confusingly related, at least in appearance and conception. Depending on the circumstances of the transaction, there is no denying the possibility that consumers may mistake the two, and there is room to recognize that the two are similar.
The Supreme Court September 22, 1992 (Heisei 3 (o) No. 1805)

It is considered similar because the appearance and concept are so similar that they can be mistaken for each other depending on the actual circumstances of the transaction.
Therefore, if “木林森” were used for a hair growth product for the scalp, it would be considered a trademark infringement.

If the trademarks are similar, the target customers of the business would be covered, which would be confusing and cause confusion among customers.
Furthermore, when Company A’s registered trademark is used for a certain product, Company B starts selling the same product using a trademark similar to that trademark, which is a free ride on the trust that Company A has built up so far. Therefore, trademark infringement is not permitted by law.

Cases in which the issue is whether the use of the trademark is a function that distinguishes the product from other products, etc.

For example, suppose that someone else’s trademark “shine” is registered for the product “toothpaste”.
Even if the company’s product “toothpaste” is packaged with an advertising statement such as, “Using this toothpaste makes your toothpaste shine,” it does not constitute trademark “use” and therefore does not constitute infringement.

Other cases of non-infringement of trademark rights

Article 26 of the Japanese Trademark Law stipulates the scope of ineffectiveness of trademark rights.
If the use falls under any of these categories, the trademark right is not infringed.

For example, even if your name, etc. is registered as a trademark, you can use it safely as long as you use it in an ordinary way.
For more information, please refer to the article linked below.
Can I use trademarked words?　How to Avoid Trouble

Even if a shampoo brand name or company name is registered as a trademark, there seems to be basically no problem in personally communicating its advantages on social networking sites, since it is not used “in the course of business.
However, please be careful about the content and purpose of your message. If you make it like a comparative advertisement or write bad reviews, you may be regulated by a different law than the Japanese Trademark Law.
Also, if someone else’s trademark is an image trademark, sometimes you need to be careful about copyright when posting on social networking sites.

It’s deep and difficult.

What trademark owners can do against alleged infringers

There are a variety of actions that can be taken against infringement, ranging from civil to criminal actions.

• Injunctive relief
• Claim for damages
• Claim for restitution of unjust enrichment
• Claims for credit restoration measures
• Pursuit of criminal liability

For more information, please check this page.
What is trademark infringement? What should I do if there is infringement?”

There are many technical terms, but they are also explained on the JPO website here. Procedures for Remedies for Trademark Infringement

If you are in doubt about whether or not your trademark has been infringed

Trademark rights are powerful rights.
Even if you use a trademark without knowing that it is similar to Company A’s trademark, and before you know it, you have infringed, you have committed trademark infringement.
Trademark infringement is subject to claims for damages, etc. Therefore, before starting a business, it is recommended to check whether there are trademarks similar to yours. Also, once you have decided on a trademark, we recommend that you file an application as soon as possible so that someone with malicious intent will not intercept your trademark just as your business is getting off the ground.

In this regard, Amazing DX allows you to check for trademarks similar to yours for free and proceed directly to the online application process.
If infringement becomes an issue, our experienced patent attorneys are available to assist you upon request (fees may apply depending on the nature of the consultation). (Depending on the nature of the consultation, a fee may be incurred.

In addition, if you are told that someone else’s use constitutes infringement, or that your own use constitutes infringement, you should certainly seek the opinion of an expert.
If you are in doubt as to whether your actions or the actions of others constitute infringement, you should ask a reliable attorney to conduct an investigation (called an infringement investigation) to determine whether your actions or the actions of others constitute infringement.
We are always ready to consult with you. If you have any questions or concerns, please feel free to contact us using the inquiry form.