16

Use as a Trademark- The Interpretation in an Infringement Lawsuit, and its Problems -（*）
Research Fellow: Kumiko Kim
A trademark holder may demand an injunction and damages if a third party uses a mark (Article 2,paragraph (3) of the Trademark Act) that is identical or similar to the registered trademark for any goods orservices that are identical or similar to the designated goods or services. However, Japanese courts haveadopted the interpretation that the use of a mark that technically falls under Article 2, paragraph (3) of said
Act would not constitute a trademark infringement as long as the use does not constitute “use as atrademark.” The concept “use as a trademark” has been interpreted as the “use of a mark in such a waythat it exercises the function to distinguish the goods of the trademark holder from those of other parties or
the function to indicate the source of the goods to which the mark is applied.” While this concept is not
explicitly specified in the Trademark Act, this is a requirement for a trademark infringement.
In view of the facts that new ways of using a mark are expected to evolve and that protection of
famous trademarks needs to be improved, it would be meaningful to discuss what “use as a trademark”
means and whether the current interpretation thereof is appropriate.
If “use as a trademark” is a requirement for an infringement, the burden of proving it must be
shouldered either by the plaintiff or the defendant. Although this issue is closely related to the utilization of
the concept “use as a trademark” in trials and also to the provisions concerning the limitations on the effectof trademarks (Article 26 of the Trademark Act, etc.), research from these perspectives has shown little
progress.
The purpose of this study is to identify and discuss the actual meaning of the concept “use as atrademark” by addressing such issues as the theories based on which this concept was established, thesituations in Europe, the burden of allegation and proof, and the utilization of this concept as a requirement
for an infringement.

Ｉ Introduction
This is a study on the utilization of theconcept “use as a trademark” in trademark
infringement lawsuits.(*1) A trademark holder may
demand an injunction and damages if a third party
uses a mark (Article 2, paragraph (3) of theTrademark Act) that is identical or similar to theregistered trademark for any goods or services
that are identical or similar to the designatedgoods or services (Articles 25, Article 36, Article
37, item (i) and other provisions of the Trademark
Act; hereinafter the name of the Trademark Act
will be omitted if the provision belongs to saidAct.). Article 2 paragraph (3) of said Act lists an
act of affixing a mark to goods, etc. (item (i)), an
act of assigning goods to which a mark is affixed(item (ii)), etc. Therefore, strict literalinterpretation of these provisions would lead us
to conclude that any person who affixes a mark to

goods commits a trademark infringement. In
order to limit such an wide scope of the effect of a
trademark right, courts have developed a theory
that the use of a mark that technically falls under
Article 2, paragraph (3) of said Act would notconstitute a trademark infringement as long as
the mark is not used in such a way that it
exercises the function to distinguish the goods ofthe trademark holder from those of other partiesor the function to indicate the source of the goods
to which the mark is applied. This type of use iscalled “use as a trademark” and is widely
recognized as a requirement for a trademark
infringement.
However, in recent years, there have beencases where this requirement, “use as atrademark,” is speculated to have hinderedappropriate resolution of disputes. For example,
in the case of a famous trademark, the trademark
holder would suffer damage if a third party uses(*)

This is an English translation of the summary of the report published under the Industrial Property Research
Promotion Project FY2009 entrusted by the Japan Patent Office. IIP is entirely responsible for any errors in
expression or description of the translation. When any ambiguity is found in the English translation, the original
Japanese text shall be prevailing.
(*1) Japan, the term “Shohyoteki shiyou” is also used in place of the term “Shohyo to shiteno shiyou.” Both aretranslated into English "use as a trademark". In Europe, such terms as “trademark use”, “use as a trademark,” and“use in the course of trade” are in use.
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the trademark even if the use would notconstitute “use as a trademark.”“Use as a trademark” is a concept that hasestablished a firm position in the trademark
system. Although the roles of the concept havebeen sufficiently discussed by now, it would bemeaningful to reevaluate the appropriateness ofthe current interpretation of the concept because
the social circumstances surrounding thetrademark system have changed since the birth ofthe concept.
The purpose of this study is to shed light on
the actual meaning of “use as a trademark” bydiscussing such issues as the theories based on
which this concept was established, the situations
in Europe, the burden of allegation and proof, andthe utilization of this concept as a requirement for
an infringement.

Ⅱ The Meaning of “Use As a
Trademark”
1

Interpretation of “Use as a treademark”(1) Change og Interpretation of “Use as atrademark”
In cases for approximately 20 years after thepresent Trademark Act revised in 1959, suchinterpretations had coexisted that without using
the expression “to distinguish the goods of the
trademark holder from those of others”, “it wasunderstood that it was used neither as anadvertisement of goods nor the other use as
trademark” (the Omocha no kuni case(*2)), andthat “it was not recognized that it was used with aform to function as a mark distinguishing the own
from the others.” (the TV Manga case(*3)). In the
POS case(*4), the term “source designating
function” was used instead of “use as atrademark”. To date, the interpretation of “use asa trademark” by the court has been made clear, bystating, e.g. “the defendant’s act using
defendant’s mark in the form recognized in theabove in the defendant’s goods cannot beinterpreted as an act using the defendant’s markin a form having the function to distinguish theown goods from those of the others or the source
designating function, i.e. a use as trademark.”(the Brother case(*5)).
(2) Cases referring to “use as a trademark”
It is possible to understand the cases withregards to “use as a trademark” as such an issue
that “to what a mark attached to goods orservices is directed (what does it indicate?).”Therefore, in this study, The cases are
categorized in the three kinds as follows.
(i) Cases where the mark indicates goods orservices different from these of theregistered trademark
There was the Kyoho case (*6). Such cases arealso categorized here that a mark indicated ingoods or services is used like a design (theJunishi case (*7)) or that an object attached with amark cannot be thought as merchandise (theBOSS case(*8)).
(ii) Cases where the mark is explanatory or
descriptive indication
In these cases, the defendant’s mark is
directed to goods or services to identical orsimilar to that of the registered trademark, but
indicating the attribute, contents, origin, or usage,
instead of goods or services themselves. Here are
the TV Manga case(*9), the Brother case(*10) are
categorized. The case where ingredient with theregistered trademark is used (the Takara Hon
Mirin case(*11)) or the case dealing with the title ofbook (the POS case(*12) and the Under The Suncase(*13)) are also categorized here.
(iii) Cases where the object which a mark is
directed may be different depending on
observerIt is the case where depending on who is(*2) Tokyo High Court Judgment, July 31, 1973, S48(ne)192, Mutai Shu Vol.5, No.2, p.250.
(*3) Tokyo District Court Judgment, July 11, 1980, S53(wa)255, Mutai Shu Vol.12, No.2, p.304.
(*4) Tokyo District Court Judgment, September 16, 1988, S62(wa)9572, Hanrei Times No.684, p.227.
(*5) Tokyo District Court Judgment, June 23, 2004, H15(wa )29488, Hanrei Times No.1164, p.264.
(*6) Iizuka Branch of Fukuoka District Court Judgment, September 17, 1971, S44(yo)41, Mutai ShuVol.3, No.2, p.317.
(*7) Tokyo District Court Judgment, July 16, 1998, H8( wa )17221, Hanrei Times No.983,p.264.
(*8) Osaka District Court Judgment, Aug. 26, 1987, S61(wa )7518, Mutai Shu Vol.19, No.2, p.268.
(*9) supra note 3.
(*10) supra note 5.
(*11) Tokyo District Court Judgment, January 22, 2001, H10(wa )10438.
(*12) supra note 4.
(*13) Tokyo District Court Judgment, February 22, 1995, H6(wa )6280, Hanrei Times No.881,p.265.

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consumer distinguishing the source or the like, it
may vary whether it is evaluated that the markindicates the goods attached therewith or not (theInk Bottle case(*14)).
(3) Summary: Interpretation of “use as atrademark”(i) Form
where
the
mark
functionsdistinguishing the own goods from theothers’ goods
The situation that a trademark of goods
functions to distinguish the own from the others
is considered to fulfill the followings: a)distinctiveness of the mark; b) it is used inrelation to the goods or services; and c) it
indicates the goods itself instead of the attributeor the contents of the goods. It may be consideredthat “in connection with the goods (or services)”in Art.2 (1) shall be one of the elements for themark to function distinguishing the own goods
from the others’ goods. The category (i) of Cases
mentioned in the above (2) does not indicates the
goods or services in connection with theregistered trademark (is not used in relation to
the goods or services). That is, it may be said thatthe mark is not used as a trademark in Art 2(1).
(ii) Cases with different natures are all dealt
with “function distinguishing the own goods
from the others goods
As seen in categories of cases mentioned in
the above (2), both of the cases where it is an
issue to which goods the mark attached to thegoods is directed (category i), and the cases
where the mark indicates the attribute of thegoods ‘category ii) are all dealt with “form not tofunction distinguishing the own goods from theothers’ goods or indicating the source. In any
events, it finally results in that it cannot function
distinguishing the own goods from the others’
goods. However, the case where the goods isdifferent from that directed by the mark can beconsidered as an issue of similarity of the marks,
and cases where the mark indicates the attributecan be considered as an issue of Art 26. Thus, it
can be said that the present cases with regards to“use as a trademark” are judged by using such
criteria as “function distinguishing the own goods
from the others’ goods” or “use as a trademark”
that is not included in the provisions also to suchthe cases that can be dealt with according to theprovision.
Since in the cases where the goods may bedifferent depending on the observer (category iii),
the function distinguishing the own goods fromthe others’ goods shall be considered, it is an
issue for whom it is directed. It can be seen,
however, that it is not decided whether there isan infringement or not depending on the observer,
if deciding the case by reviewing objectively towhat the trademark attached to the goods orservices is directed.
2

The construction of theories introducing“use as a trademark”(1) The theories in the cases
The following theories have been presented
in court decisions. Most academic theories
support either (ii) or (iii).
(i) A theory that the function to distinguish thegoods of the trademark holder from those ofother parties should be interpreted as one of
the attributes of a trademark that are coveredby the definition of a trademark (Article 2,paragraph (1) of the Act) (the Tatsumuracase(*15));(ii) A theory that according to provisions in Arts.
1 and 3, the essence of a trademark lies in thefunction to distinguish the goods of the
trademark holder from those of other parties
and therefore that a third party’s use of a markwould constitute an infringement only if themark is used in such a way that it exercises
said function (the Junishi case(*16));(iii)A theory that Article 3 and Article 25 of theTrademark Act specify that the “right to use aregistered trademark” means the right to use
a trademark that has the function to indicate
the source of the goods to which thetrademark is applied (the POS case(*17)); and(iv) A theory that, in light of Article 26 of theTrademark Act, it is required that thedefendant has used a mark in such a way thatit exercises the function to distinguish thegoods of the trademark holder from those ofother parties (Under the Sun case(*18)).

(*14) Tokyo District Court Judgment, January 21, 2003, H14(wa )4835, unpublished yet.
(*15) Tokyo District Court Judgment, September 29, 1976, Hanrei Jiho no. 867, p. 74(*16) supra note 7.
(*17) supra note 4.
(*18) supra note 13.
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(2) Analysis of the theories based on which
the concept, “use as a trademark,” wasestablished
Among the theories presented above,
theories (i) to (iii) were established based on theinterpretation of a trademark performing anessential
functionandtheregistration
requirements. I do not support these theories forthe following reasons:(a) A trademark performing an essentialfunction serves as an identification mark.
However, said function should not necessarily be
regarded as the function of the trademark thatshould be protected under the Trademark Act;and(b) The registrations requirements should be
regarded as minimum requirements for the grantof an exclusive right. Therefore, it would benecessary to separately determine whichfunctions of a trademark should be protectedagainst an infringement by a third party.
The theory presented as (iv) above seems
more reasonable than other theories, though not
perfect. Like the concept “use as a trademark,”
Article 26 of the Trademark Act is a tool usedon
the purpose to deny an infringement.
3

Situations in Europe(1) Statutory grounds for “use as atrademark”
While the European Union Trademark
Directive is analyzed to identify possible
statutory grounds, none of the grounds were
found to be sufficiently credible.
(i) In recital 11 of the preamble of the Trademark
Directive, it is provided that “(t)he protection
afforded by the registered trade mark, thefunction of which is in particular to guarantee
the trade mark as an indication of origin,should be absolute in the case of identity
between the mark and the sign and the goods
or services.”(ii) In the definition in Art. 2, a trademark isprovided that signs are capable ofdistinguishing the goods or services.
(iii) The text in Art. 5 (1) “using in the course of
trade” is possibly interpreted as “use toindicate the source of goods in which thetrademark is used” (*19)(iv)Since Art 5(5) stipulates “…shall not affectprovisions in any Member State relating to theprotection against the use of a sign other thanfor the purposes of distinguishing goods orservices,…”, it is possible to be interpreted thatthe Directive shall protect “use of mark for the
purpose of distinguishing goods or services”.
(2) “Use as a trademark” in European
countries (U.K. and Germany)
It was found that “use as a trademark” is oneof the requirements for a trademark infringement
under the domestic laws of the U.K. and Germany
and its definition was analyzed.
(i)

U.K.
Section 10 of the UK Trademark Act
provides the act to be regarded as trademark
infringement and is similar to Art.5 of the
Directive. As for the text “if he uses in the courseof trade” among the requirements forinfringement, there are two split opinions: theone interprets that requires “use as a trademark”
and the other does not. In British Sugar case(*20),
it is decided that the text “uses in the course of
trade” in Section 10 (1) shall be interpreted as notmeaning “use as a trademark”. Considering thepreamble of the Directive states to guarantee thetrade mark as an indication of origin, however, themajority of opinions require “use as atrademark”.(*21)(ii) Germany
One of the grounds for “use as a trademark”
to be required shall be Section 16 (limitation of
the effects of a trademark) of the old Act(Warenzeichengesetz 1968). Section 16 of the old
Act stipulated, with respect to name, trade name,etc., “no one shall be prevented to use… in thecourse of trade, as far as the use is not caused in amanner of trademark” (“….wird niemandgehindert,….im Geschäftverkehr zu gebrauchen,sofern der Gebrauch nicht warenzeichenmäßig
erfolgt.”) That is, even if an indication falls undersuch categories, it may be regarded to constitutean infringement if it is used as an trademark. In
Section 23 of the current Act regarding to thelimited effect of trademark, however, similarly to(*19) Ilanah Simon, ’How Does“Essential Function”Doctrine Drive European Trade Mark Law? – What Is the Essential
Function of a Trade Mark?’, 36 IIC 401, 412 (2005).
(*20) British Sugar plc v. James Robertson & Sons Ltd. [1996] RPC 281.
(*21) Chiaki Kawai, “Shohyo no Teigi, Touroku Yoken oyobi Shiyo (U.K. Trademark Act 1994 tono Hikaku
nioite”(Definition of Trademark, Requirements for Registration and Use (in comparison with U.K. Trademark Act
1994), AIPPI Vol.46, No.12 (2001) p.784.
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the Directive, it is revised as “if the use does notoffend against the good customs.” (“sofern die
Benutzung nicht gegen die guten Sitten
verstößt.”) Therefore, in Germany, intense
disputes have been developed whether “use as atrademark” could be a requirement for
infringement under the new law. (*22)(3) Precedents of the European Court ofJustice
There have been some precedents of theEuropean Court of Justice such as the BMW casewhere the Court required “use as atrademark.”(*23) However, subsequent judgments
have made it unclear whether such a requirement
needs to be satisfied. In the Arsenal judgment(*24)
and the Adam Opel judgment, (*25) domestic courts
referred to the European Court of Justice aquestion as to “whether the defendant’s act
constitutes use as a trademark.” The Court has
not directly answered the question. Instead, theCourt mentioned that an infringement judgment
should be made based on whether the use does oris likely to affect an essential function of the
trademark. In these judgments, the Court
mentioned what functions of the trademark
should be taken into consideration. The fact thatthe plural form, “functions,” was used indicatedthat the functions include not only the essentialfunction but also other functions. The details
about the functions had been unclear until the
L’Oreal judgment revealed that the functions
include the function of “guaranteeing the qualityof the goods or services in question and those ofcommunication, investment or advertising.” (*26)(4) Situations in Europe --- Conclusion --The judgment criteria employed by theEuropean Court of Justice seem to be in a processof shifting from whether the act of an alleged
infringer constitutes use as a trademark towhether the act has damaged a function of the
trademark. The concept “use as a trademark,”
which was used under former domestic laws as
well, varies in terms of underlying provisions andthe types of act that are considered to be “use asa trademark.” Therefore, in order to fill the needfor uniform criteria for infringement judgment in

the whole of Europe, it was probably necessary to
shift to the approach of judging which trademark
function has been damaged.
3

Summary: the meaning of “use as atrademark”

Among the theories based on which theconcept “use as a trademark” was established,those that have been supported by many
precedents and academic theories seem to be
imperfect. This is probably because thosetheories were formulated afterward in order tolimit, to some extent, the scope of the effect of a
trademark right, which cannot be sufficiently
limited by the literal application of infringement
requirements alone. As shown in recent
precedents in Europe, it would cause no harmeven if the court adopts an approach of judging an
act of damaging a trademark function as an
infringement.
It should be noted that the definition of a
trademark performing an essential function andthe registration requirements should be
discussed separately from the definition of an act
that constitutes an infringement. This is because
the definition of an act that constitutes aninfringement should change according to social
situations. Therefore, the trademark functions
that should be taken into consideration in making
an infringement judgment should not be limited
to the function to distinguish the goods of the
trademark holder from those of other parties or
the function to indicate the source of the goods towhich the mark is applied.

Ⅲ Utilization of the Concept “Use
As a Trademark” in Lawsuits
In many trials, the concept “use as atrademark” is regarded as a prerequisite for a
trademark infringement claim. Therefore, in thecurrent situation where “use as a trademark” isinterpreted as “use in such a way that the markexercises the function to distinguish the goods ofthe trademark holder from those of other partiesor the function to indicate the source of the goods
to which the mark is applied,” if the defendant(*22) Shin-ichi Kukuminato, “Shin Doitsu Shohyohou no Tokucho (10) Shoyo teki Shiyo”(Characteristics of the New
German Trademark Act (10) Use as a Trademark) AIPPI Vol.42, No.7 (1997) p.531-542, which coordinates academic
theories regarding “use as a trademark” in Germany.
(*23) Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v Deenik (C-63/97) [1999] ECR I-905.
(*24) Arsenal Football Club v Reed (C-206/01) [2002]ECR I-10273.
(*25) Adam Opel AG v Autec AG (C-48/05) [2007] ECR I-1017.
(*26) L'Oreal SA v Bellure NV (C-487/07) [2009] ECR 00.
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uses a mark in a way that it does not exercise
such a function, the court would find thedefendant’s use as non-infringing without taking
other requirements into consideration. This
Chapter examines two issues, 1. Burden of
allegation and proof and 2. Utilization of theconcept “use as a trademark” as a requirement
for an infringement.
1

Burden of allegation and proof

The academic theories on the burden of
allegation and proof may be divided into three
types that claim that the burden of allegation andproof lies in (i) the plaintiff, (ii) the defendant, and(iii) both parties because the requirement, “useas a trademark,” is an evaluation requirement.
An analysis on infringement cases from theperspective of the claims made by the parties
concerned and the court judgment has revealed
that a significant relation with the burden of
allegation and proof, etc., was found only in a casewhere the plaintiff’s claims were made based
solely on the literal interpretation of statutory
infringement requirements, about which thedefendant did not dispute. This case suggests that
if the defendant does not claim that its use of amark did not constitute use as a trademark, thecourt would make a judgment based solely on theliteral interpretation of statutory infringement
requirements. It should be noted, however, that,in this case (Popeye undershirt case (Tokyo
District Court) (*27)), the defendant did not takepart in oral proceedings.
2

Consideration of the concept “use as atrademark” in lawsuits(1) The requirements for a trademark
infringement taken into consideration in
judicial proceedings
This section gives a general idea on what
ultimate facts, evidentiary facts, etc., mean andwho should bear the burden of allegation andproof and examines the approaches taken in
trademark infringement lawsuits. Furthermore,this section analyzes the utilization of the concept“use as a trademark” in infringement lawsuits andcategorizes them into four models entitled Model
A to D. Each model is evaluated from theperspective of the burden of allegation and proof

and the utilization of the concept “use as atrademark.”
Model A: The concept “use as a trademark” isadopted as an independent requirement for a
trademark infringement
An analysis of court decisions has shown that,in cases where the applicability of the concept“use as a trademark” is at issue, the court firstjudges whether this requirement is satisfied. It isalso revealed that the parties concerned makeclaims and determine the validity of the claims
based on the presumption that “use as atrademark” is an independent requirement.
In this model, either the plaintiff or the
defendant may be considered to bear the burdenof allegation and proof. As explained in “1. Burdenof allegation and proof,” if the defendant does notmake a claim with regard to this requirement, thecourt would not make a judgment on thisrequirement. This court decision suggests thatthe burden of allegation and proof lies in the
defendant.
Model B: The concept “used as a trademark” isutilized in trademark similarity judgment
In the case where a trademark that is
identical or similar to the plaintiff’s registeredtrademark is affixed to certain goods, if theidentical or similar trademark is considered to be
used as an identification mark for goods different
from the designated goods of the plaintiff’s
registered trademark or if the identical or similar
trademark is considered to be used not as anindicator of the source of the goods but as an
ornament, those goods could be judged as
non-similar. The example cases include “Kyohocase(*28)” and “Popeye undershirt case.”(*29)
In cases that fall under this model, theplaintiff should claim and prove that its registeredtrademark is used for goods. In response, thedefendant shall determine the validity of theclaims.
Model C: “Use as a trademark” is regarded as arequirement for the types of use specified in
Article 2, paragraph (3) of the Trademark Act
This is an approach taken based on theinterpretation that the use of a mark constitutes(*27) Tokyo District Court Judgment, April 19, 1974, Mutaishu (Collection of court decisions on intangible assets), vol. 6,
no. 1, p. 114(*28) supra note 6.
(*29) Osaka District Court Judgment, February 24, 1976, Hanrei Jiho no. 828, p. 69.
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the type of use specified in each item of Article 2,paragraph (3) only if the mark serves the function
to distinguish the goods of the trademark holder
from those of other parties. (*30) This model is thesame as Model A in substance. In this model,
however, the plaintiff should allege and prove thatthe defendant’s use of a mark constitutes use as atrademark because the plaintiff is in a position toallege and prove that the defendant’s use falls
under a certain item of Article 2, paragraph (3).
In both Model B and Model C, based on thepresumptions that the similarity or non-similarityof the trademark in question and the use that falls
under Article 2, paragraph (3) constitute ultimate
facts and that requirements including use as atrademark constitute evidentiary facts, the court
could judge whether the use in question
constitutes use as a trademark based on theinformation presented by the parties concerned
even if those parties have not alleged and proved
it explicitly. The academic theories introduced in
the section entitled “1. Burden of allegation andproof” include a theory that, “while the plaintiff
should bear the burden of allegation and proof inprinciple, the plaintiff does not have to allege andprove it explicitly because the plaintiff’s
allegation always covers use as a trademark. This
theory is workable if use as a trademark is
considered to be an evidentiary fact.
Model D: “Use as a trademark” is interpreted
from the perspective of denial of illegality or theperspective of defense
In this model, the occurrence of an
infringement is considered to be proved if thefollowing requirements for an infringement aresatisfied: the enforceability of the plaintiff’s
trademark, trademark similarity, and the use that
falls under any item of Article 2, paragraph (3).
However, this may be disproved in the casewhere the mark in question falls under any itemof Article 26, paragraph (1), where the use of themark damages the function to distinguish thegoods of the trademark holder from those of otherparties, or where the right is abused. The burdenof allegation and proof is expected to beshouldered by the defendant.
In this model, special attention should be
paid to the relation between the applicability of
Article 26, paragraph (1) and the scope of theconcept of “use as a trademark.” Article 26,

paragraph (1) is applicable in some cases where
the use of a mark does not constitute use as atrademark. The following section further
examines the relationship between Article 26 andthe concept “use as a trademark.”
3

Relationship with Article 26 of theTrademark Act(1) Interpretation of Article 26
The registration requirements (Article 3,
paragraph (1)) should be interpreted separatelyfrom Article 26, paragraph (1). Article 26,
paragraph (1) is useful in dealing with an act thatis technically regarded as an infringement basedon the literal interpretation of the relevant
provisions of the Trademark Act. Since the scopeof the effect of a trademark right would be too
wide if the scope is determined based on theliteral interpretation of the relevant provisions of
the Trademark Act, said Article is designed to
explicitly specify, in advance, typical types oftrademarks that should be excluded from thescope of the effect of a trademark right (inparticular, the trademarks that do not perform thedistinction function). Understandably, it wasdifficult for the legislator to list all of the types oftrademarks that should be excluded from thescope of the effect of a trademark right. Therefore,
it should be permitted to apply Article 26,
paragraph (1) by analogy to other types oftrademarks that are not listed in said Article.
(2) In a common manner
The issue of how to interpret the phrase “In
a common manner” used in Article 26, paragraph(1), items (i) to (iii) arises when determining
what kind of act falls under said paragraph.
Use in a common manner could mean either
that simply the appearance of the mark in use iscommon or that the method of affixing the markonto goods or services is common as well. Since
Article 26 covers trademarks that are actuallyaffixed to goods or services, there are no reasonsfor disregarding the indication method. The
criteria for determining whether a certain
indication method is common or not would varydepending on the industry to which the goods orservices belong. It should be interpreted that
common indication means not only an indication
not performing the distinction function but also
an indication that should be excluded from the(*30) Makoto Amiya, “Shohyohou dai 2 jou, dai 3 kou ni okeru shohyo no ‘shiyou’ no teigi ni tsuite” (Definition of “use” ofa trademark in Article 2, paragraph (3) of the Trademark Act), Patent, Vol.26, No.3 (1973) pp. 16-22 (cited from pp.
18-19).
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scope of the effect of a trademark right.
(3) The relationship between the concept“use as a trademark” and theapplicability of Article 26, paragraph (1)If Article 26 is interpreted as above, Article
26, paragraph (1) is applicable to some of the
trademarks that are not in use as a trademark. For
example, if the defendant’s mark is regarded as anindicator of the attributes, contents, origin, etc.,of goods, Article 26, paragraph (1), items (ii) to(iv) would be applicable.
For example, in the Omocha no Kuni case,(*31)
he plaintiff, who owned the registered trademark“Omocha no Kuni” (designated goods: toys),demanded damages, etc., from the defendant, who
had used indications including “Omocha no Kuni”
and “TOYLAND” as guidance and signs forcustomers in the section where toys were sold. In
this case, it can be interpreted that the trademark
was used in a common manner as an indicator of
the place where service similar to designatedgoods was provided (Article 26, paragraph (1),item (ii)).
In the CALGEN case,(*32) he plaintiff, who
owned the registered trademark “CALGEN”,
demanded damages, etc., from the defendant, who
had affixed an indication consisting of words
including CALGEN to the packages ofstrawberries on sale because the soil conditioner“CALGEN” was used for the farming of the
strawberries. Based on the interpretation that thesoil conditioner “CALGEN” was a raw material togrow strawberries, Article 26, paragraph (1), item(ii) would be applicable to this case.

Model D, the defendant may make a defense byutilizing the concept “use as a trademark” inorder to determine the applicability of Article 26,
paragraph (1) or in order to make an allegation(e.g., a function of the trademark is not damaged).
In all of Model B, Model C, and Model D, theconcept “use as a trademark” is useful regardlessof how the concept is utilized as a requirement.
Therefore, judgment from the sole perspective of
this concept would expedite dispute resolution.
Currently, most court judgments are made basedon the interpretation that use as a trademark is anindependent requirement as shown in Model A. In
a trial, the court first examines whether thisrequirement is satisfied or not. It is suspectedthat this practice has been adopted for the
purpose of serving the interest of judicial
economy. If this is the case, the approachcurrently taken by courts would not be the mostappropriate one.
An analysis of cases where the use of a markdoes not constitute use as a trademark hasrevealed that some cases may be judged from theperspective of trademark similarity, while othercases may be judged from the perspective of theapplicability of Article 26, paragraph (1). Whencases are judged from these perspectives, adecision as to which party should bear the burdenof allegation and proof must be made on acase-by-case basis. The plaintiff should bear theburden if a judgment is made from theperspective of trademark similarity, whereas thedefendant should bear the burden if a judgment ismade from the perspective of the applicability of
Article 26, paragraph (1).

4Ⅳ Discussion

Summary: Utilization of the concept“use as a trademark”

1
As described in Section 1 above, there arevarious academic theories on the burden of
allegation and proof. Section 2 has examineddifferent models. Model A shows that, if use as atrademark is regarded as an independent
requirement, the burden of allegation and proof
should be shouldered by the defendant. This view
is supported by some court decisions. In the caseof Model B and Model C, the burden should beshouldered by the plaintiff in principle. It should
be noted, however, that if use as a trademark is
regarded as an evidentiary fact, it would be
unnecessary to make an explicit allegation. In

Cases where it is difficult to find the useof a mark as an infringement based on
the currently accepted interpretation

The following are cases where it is difficult
to find the use of a mark as an infringement basedon the currently accepted interpretation. An
analysis of the following cases has revealed thatthe currently accepted interpretation of “use as atrademark” could prevent a court from settling acase in an appropriate manner, while it would beappropriate to find the use of a mark to be
non-infringing in some cases.

(*31) supra note 2.
(*32) Tokyo High Court Judgment, October 2, 1996, Chizaishu, Vol.28, No.4, p.695, Supreme Court Judgment, September
4, 1997, H9(o)58.
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(1) Cases where the defendant used a marknot for the purpose of distinguishingthe defendant’s goods, etc., from thoseof other parties
These cases typically involve comparative
advertisement. Based on the currently acceptedinterpretation, the use of a mark in such a casedoes not constitute use as a trademark because
the mark is used not for the purpose of
distinguishing the defendant’s goods from thoseof other parties. These cases will be dismissed bycourts without considering the possibility of
infringement from other perspectives.

Under the current legal system, use of afamous trademark is subject to Article 2,paragraph (1), item (ii) of the Unfair Competition
Prevention Act. Since said Article requires “useas an indication of goods or business” (whichcorresponds to the concept “use as a trademark”
in the Trademark Act), said Article would not beapplicable if the mark used by a third party does
not perform the function to distinguish the goodsof the trademark holder from those of otherparties. As a result, in such cases as describedabove, the trademark would not be protected by
the Unfair Competition Prevention Act either.

(2) Cases where, at the time of sale, themark in use does not perform thefunction to distinguish the goods of the
trademark holder from those of otherparties or the function to indicate thesource of the goods to which the markis applied but could damage thefunctions of the trademark after the sale
These cases include a case where a customer
requests alteration of goods to which a trademark
is applied (Callaway Golf case(*33)and a case where
the content of a product is refilled by recycling
the container upon customer request (Ink bottlecase(*34)). (*35)In these cases, the mark in use does
not constitute use as a trademark because thecustomer is aware that the registered trademark
on the product does not indicate the source of thealtered or refilled product.

2(3) Cases where a famous trademark isused for a decorative purpose or in theform of free-riding
These cases includes a case where a model
gun carries an indication that is identical with thatof a real gun (Beretta case(*36) and the case wherea miniature car of a real car carries the logo of the
car maker (Adam Opel case(*37)) In these cases,
the famous trademark applied to the goods is notconsidered to be performing the function toindicate the source of the goods. Therefore, it islikely to be found that such use of a mark does notconstitute use as a trademark. Consequently, insuch a case, trademark use even for goods similar
to the designated goods of the registeredtrademark would be found to be non-infringing.

Conclusion --- based on the cases
where it is difficult to find the use of amark as an infringement based on thecurrently accepted interpretation ---(1) Approach used in trials
The scope of the effect of a trademark righttechnically defined by the relevant provisions of
the Trademark Act is excessively wide. The
concept “use as a trial” plays a role in limiting thewide scope to a practical range and adjusting thecompeting interests of the plaintiff and thedefendant to a reasonable extent. However, theapproach taken by courts based on theinterpretation that “use as a trademark” is arequirement for an infringement has made it
harder for them to find the use of a mark to be
infringing as shown in the above-described cases
where the currently adopted approach seemed
inappropriate. As discussed in the section on
consideration of the concept “use as a trademark”
in trials in III. 2., the concept is used as arequirement, even as a prerequisite, for an
infringement. Since such use of the concept is
primarily for the sake of efficiency and simplicity
of judicial proceedings, the concept should be
regarded as neither an independent requirement
nor a prerequisite.

(*33) Tokyo District Court Judgment, December 25, 1998, Hanrei Jiho No.1680, p.112.
(*34) Tokyo High Court Judgment, August 31, 2004, Hanrei Jiho No.1883, p.87, Tokyo District Court Judgment, January
21, 2003 (not contained in a collection of court decisions).
(*35) In both cases, however, the claims of the trademark holder were eventually accepted.
(*36) Tokyo District Court Judgment, June 29, 2000, Hanrei Jiho No.1728, p.101.
(*37) supra note 25.
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(2) Trademark functions other than thefunction to distinguish the goods of the
trademark holder from those of otherparties or the function to indicate thesource of the goods to which the markis applied
Companies’ behavior exhibited in theirmarketing activities shows that they use various
methods such as TV commercials, Internet
advertisement, presentation of monitor survey
results, and distribution of samples to pedestrians
in order to promote consumption. Somecompanies conduct activities to improve
consumers’ image of their trademarks. A
trademark plays a role as a symbol of all theinformation generated in the course of suchmarketing activities. Therefore, even if the use ofa mark does not damage such function as thefunction to distinguish the goods of the trademark
holder from those of other parties or the function
to indicate the source of the goods to which themark is applied, the use of a mark would hinder
the accumulation of “power” in the trademark aslong as the strategic activities to increase productsales are interfered with in one way or another.
It has been revealed that trademarks havevarious functions including the function tocommunicate information through advertisement
or by other means, the function of image building,and the function of investment. These functions
depend on the existence of an essential functionof the trademark (the function to distinguish thegoods of the trademark holder from those of otherparties or the function to indicate the source ofthe goods to which the mark is applied.). Each of
those non-essential functions could be damaged
individually. If left unaddressed, such damage
could spread from the damaged function to an
essential function such as the distinction function.
Therefore, when judging whether the use of amark constitutes an infringement, the court shalltake into consideration not only the distinction
function and the source-indicating function but
also other functions.

indicators of their goods. Currently, the function
to distinguish the goods of the trademark holder
from those of other parties or the function toindicate the source of the goods to which themark is applied is considered to be an essential
trademark function in Japan. History has shownthat such currently accepted interpretation mightchange in the future. Economic and socialchanges will require readjustment of the scope ofprotection against an infringement by a third party.
As mentioned in the discussion about cases in
Europe, various trademark functions will be
newly recognized. Consequently, the concept“use as a trademark” could hinder, rather thanassist, judicial proceedings. In each trademark
infringement case, the court should take into
consideration various functions performed by thetrademark and adopt a more flexible approach in
judging the case.

Ⅴ In Closing
A history of trademarks shows that membersof craft guilds in the middle ages affixed marks totheir goods in order not to assist consumers tochoose particular goods but to clearly indicate
producer responsibility. The placement of suchmarks was obligatory. After the dissolution ofguilds, craftsmen were given the freedom tochoose their own trademarks and use them as● 10 ●IIP Bulletin 2010