Can I use trademarked words in Japan? How to avoid trouble

Is it all wrong to say/write trademarked words without permission?

I’m afraid of social networking flame wars these days, so I have to do my research before I submit something on SNS.
Huh? Is “SNS” trademarked in Japan?
Am I not allowed to use it? I can’t write anything with that…

It is good to check the registered trademark in advance. But there is no need to be overly concerned.
It is a good idea to know when you can use a registered trademark and when you cannot.

This article explains whether you can use a word if you try to use it and it is someone else’s registered trademark.

Do not “use” another person’s registered trademark without permission

When you “use” a registered or applied trademark, it would cause a problem.

Article 25 The holder of trademark right has an exclusive right to use the registered trademark in connection with the designated goods or designated services; provided, however, that when an exclusive right to use the trademark is established in connection with the trademark right, these provisions do not apply to the extent that the holder of exclusive right to use has an exclusive right to use the registered trademark.

Trademark Act (Engish Translation provided by Japanese Law Translation)

The above clause means that (in principle) only the holder of the trademark right may use the registered trademark in connection with the designated goods or designated services.
*To put a finer point on it, the trademark owner can prevent others from using similar marks, even similar goods or services.

What about trademarks under examination?

In addition, if you use another person’s trademark without permission, you may be required to pay “an amount equivalent to the business loss caused by the use of the trademark (Article 13-2 of the Trademark Act)”, even if the trademark has not yet been registered in an application for trademark registration.

After all, I can’t use a registered trademark without permission, can I?

In what cases is it acceptable to talk about a trademarked word?

However, “use” does not simply mean to say/to write. Article 2 of the Trademark Act provides the definition.

(3) “Use” with respect to a mark as used in this Act refers to any of the following acts:
(i) affixing a mark to goods or packaging of goods;
(ii) assigning, delivering, displaying for the purpose of assignment or delivery, exporting, importing, or providing through a telecommunications line, goods with affixed marks or goods with marks affixed on their packaging;
(iii) in the course of the provision of services, to affix a mark to articles to be used by a person who receives those services (including articles to be assigned or loaned; the same applies hereinafter);
(iv) in the course of the provision of services, to provide those services by using articles to which a mark is affixed and which are to be used by a person who receives those services;
(v) for the purpose of providing services, to display articles to be used in the provision of those services (including articles to be used by a person who receives those services; the same applies hereinafter) to which a mark is affixed;
(vi) in the course of providing services, to affix a mark to articles pertaining to services received by a person;
(vii) in the course of the provision of services through use of a screen, by electronic or magnetic means (meaning by electronic means, magnetic means, or other means that is impossible to perceive through the human senses alone; the same applies in the following item), to provide those services by displaying a mark on the image viewer;
(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 this content, to which a mark is affixed by electronic or magnetic means;
(ix) in the case of sound marks, beyond what is listed in the preceding items, the act of producing sounds when transferring or delivering goods, or providing services; and
(x) Beyond those listed in the preceding items, acts specified by Cabinet Order.

Trademark Act (Engish Translation provided by Japanese Law Translation)

What do you mean ……?

To summarize roughly, “use” means “use in such a way as to indicate that the goods or services are provided by you “. (e.g., selling the goods or services with that trademark).
Any other use is unlikely to constitute trademark infringement.

Trademarked words and examples of paraphrases

But I’ve heard that words like “band-aid” and “post-it” should be rephrased.

Reasons and examples of words that should be rephrased

In fields such as publishing and news reporting, registered trademarks are paraphrased into generic names (except when referring to the product itself) to avoid being slanted toward a specific company or to avoid being mistaken for a generic name.

If the brand/name itself is being referred to, it is better to use it as is.
In other situations, when the trademark and the designated goods or services seem to be related, it is better to rephrase it in general terms.
The following are examples.

Examples of specific areas that need attention

For example, registered trademark “Zipper” (registration number 3022715) has almost nothing to do with a “zipper(fastener)” in standard characters, because the designated goods is “magazines”. If you talk/write about “zipper” in magazines, there is little concern that it will be mistaken for a generic name.
(When used for related products, it is better to rephrase.)

The following is an example

Usage not covered by trademark rights is OK.

The Trademark Act also contains a provision stating that trademark rights shall not be effective with respect to any usage in which the origin of the goods is not known (Article 26).
For example, even if your name is registered as a trademark by someone else, you can use it to indicate your name as the author of an article.

I see!

1. I can talk/write about it as long as I don’t use it in a way that misleads people about the origin of the goods or services.
2. When talking/writing about a word in a context related to the designated goods or services of a registered trademark, the phrase should be rephrased to refer to goods other than those of the registered trademark.

I can use social networking sites with peace of mind.

Search for “Amazing DX” to see if it’s trademarked!

If you are thinking of using a word but are concerned about whether it has been registered as a trademark, please check the JPO database or the Amazing DX trademark search to see if it is a designated product.
All you have to do is enter a word and its yomigana, and you can easily find out for free!

Also, if you have difficulty deciding whether you can use a trademarked word or not, please consult a professional trademark attorney.