Introduction

Article 2, Paragraph 3 of the Japanese Trademark Act defines what constitutes the "use" of a trademark. Properly understanding this concept of "use" is essential to protecting the value of your brand and maintaining a fair competitive environment.

This article explains "advertising use" of trademarks—a topic of growing importance in day-to-day business—covering everything from its legal definition to key practical precautions.

1. What is "Advertising Use" of a Trademark?

Article 2, Paragraph 3, Item 8 of the Trademark Act defines displaying a mark in advertisements or transaction documents as a form of trademark "use".

"The act of displaying or distributing marks on advertisements, price lists, or transaction documents relating to goods or services, or providing information containing such marks by electromagnetic means."

This provision addresses the fact that trademark exposure through advertising builds business goodwill for the brand. To prevent unauthorized third parties from free-riding on or damaging this goodwill, displaying a mark in advertisements is explicitly included within the scope of trademark protection.

Note: Advertising agency services performed on behalf of other companies are classified under Class 35 services, which should be distinguished from the advertising use of a trademark for one's own products or services.

2. What Counts as "Advertising"?

The scope of "advertising" under the Trademark Act is extremely broad, encompassing all visual and auditory media:

• Physical Media: Signs, flyers, brochures, street neon signs, calendars, etc.
• Digital Media: Websites, social media ads, banner ads, search engine marketing (listing ads), video ads, etc.

3. Connection to Goods or Services: The Key Criteria

Simply mentioning or displaying a trademark in an advertisement does not automatically constitute "use" under the Trademark Act.

The critical criterion for legal protection—and for determining whether an act infringes on another party's rights—is whether the trademark clearly indicates specific goods or services (relevance to goods/services).

It is essential that consumers, upon seeing the advertisement, can properly recognize the context of which product or service the trademark identifies. Merely decorative elements or logos placed in locations unrelated to the actual goods or services may not be considered trademark "use" under the law.

4. Evolving Trademarks: Brand Protection Through Sound

In recent years, the importance of "sound trademarks" in addition to visual information has increased significantly.

• Protection of Sound Trademarks: Sound elements, such as sound logos, can be registered as trademarks. Using a third party's registered sound trademark in advertisements without authorization may result in trademark infringement.
• Precautions for Audio Ads: Announcing or reading out a brand name in audio advertising is aimed at allowing consumers to identify products or services through hearing. Therefore, it is evaluated as trademark "use" in a broad sense. Caution is required to avoid conflicts with existing registered trademarks when running audio advertising campaigns.

5. Summary: Protecting and Effectively Utilizing Your Brand

Advertising use is the front line of conveying brand trust and goodwill to consumers. To protect your trademarks effectively and avoid infringing on the rights of others, it is crucial to always ensure that "the trademark clearly communicates your goods or services to consumers."

If you have concerns about your trademark strategy or the legal compliance of your advertising materials, we recommend consulting a qualified patent attorney at an early stage.