12 Why are the Trademarks Protected?
A Comparative Approach to the Questions of theTrademark Functions in Europe and Japan(*)
Invited Researcher: Yann Henri BASIRE(**)
In Europe, the question of the trademark’s function is essential with regard to the development of the caselaw of the European Court of Justice. It is classical to consider the trademark as a guarantee of origin. But,
since 2009, the Court of Justice recognized four new functions: quality, advertising, investment, communication.
This new approach of the community judges has for consequences to make harder the understanding of themeaning of the doctrine of the trademark’s function. In order to have a better understanding of this issue, it
could be interesting to compare the question of trademark’s functions in another country, and more particularly
Japan. Indeed, the Japanese trademark system recognizes also three legal functions: origin, quality andadvertising. Therefore, a transversal approach and an analyze of the use of the trademark in both systems could
allow determining what the European system and the Japanese one could learn from each other’s experiences.

Ⅰ Introduction
The trademarks are important assets for thecompanies. Even, may be, one of the mostimportant. In 2012, the most valuable brand is“Apple” whose estimated value is around 182
billion of Dollars. The trademark “IBM” has avalue of 115 billion of Dollars 1. With regard to thisimportance, the law must intervene in order toensure the protection of the owner and of the freecompetition.
In Europe, the trademark system is little bite
complicated: a directive has harmonized thenational trademark systems. Therefore, even if
there are still the national systems, they areharmonized and must be respectful of thedirective and of the interpretation given of thistext by the European Court of Justice (now called
the Court of Justice of the European Union) 2 .
There is also a community system with acommunity trademark which can be registered in
the OHIM and which enforces in all the Member
States3. In Japan, there is the Japanese Trademark
Act of 1959, which has been amended many times
since this date.
The issue of the trademark’s function is
without any doubt one of the main issue in thefield of trademark. Actually, the understanding of
the function of a right allows determining thecontent of this right. Thus, the understanding of

the trademark’s functions allows us to determine
the legal regime of the trademark’s right.
Nowadays, in Europe but also in Japan, thecommentator and the courts recognized many
functions. This study has for aim to explain theEuropean approach and the Japanese one. On one
hand, the explanation of the Japanese system
could allow having a better understanding of theEuropean one that is particularly difficult tounderstand. On the other hand, the Japanesesystem could learn from the recent developmentin the European case law.
The study is divided in two parts: the firstone is related to the definition and the descriptionof the trademark’s functions and then the second
is related to their practical use.

Ⅱ The definitions of the trademark
functions
The Court of Justice recognized officially fivefunctions. We can add to this function the one of
exclusivity 4 . On the contrary, in Japan, thedoctrine and the judges recognize only threefunctions. Therefore, the functions shared by both
systems must be considered in a first time (1) andthen it is necessary to study the functions which
seem exclusive to the European system (2).

(*) This is a summary of the report published under the Industrial Property Research Promotion Project FY2012
entrusted by the Japan Patent Office.
(**) Doctor in Private Law, Associate Professor at the University of Orleans (France) and Lecturer at the Centre forInternational Intellectual Property Studies (CEIPI), University of Strasbourg (France)●

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1

The functions shared by both systems

The European and the Japanese systems
share three functions. In Japan, the recognition ofthese functions was easy but in Europe it wasmore controversial. These functions are thefunction of guarantee of origin (1), the quality
function (2) and the advertising function (3).
(1) The function of guarantee of origin
In Europe, this function is considered as themain one, as the essential function of the
trademark. This function is used in almost eachcase related to the trademark law since thefamous Arsenal decision of 20025. This function is
also aimed in the preamble of the European
Directive. It was early recognized in France andwas aimed notably by some decisions in the
middle of the nineteenth century 6 . Many
commentators aimed also this function in theirstudy or papers.
However, in a first time, the European Courtof Justice in the Hag decision in 1974 denied thisfunction and recognized it only in 1976, after
many criticisms, in the Terrapin/Terranova
decision. The Court noticed that: “the basic
function of the trademark to guarantee toconsumers that the product has the same origin isalready undermined by the subdivision of theoriginal right”7.
The judges speak about the function of origin
or also about the function of guarantee of identityof origin.
In Japan, the recognition was lesscontroversial. The doctrine and the commentators
seem unanimous to recognize the function ofindication of origin as the first function of the
trademark. O. SHOEN quotes thus that “Marks
that are attached to goods or services serve toindicate the origin and ownership of those goods orservices. This function is based on the identification
power of marks” 8 . For the Professor Tamura,“there is no doubt in that the source identifying
function is protected under the Trademark law”9.
The Japanese courts seem also use this function
for a long time, as in the decision Lacoste, Chanel
and Cartier10.
Even if this function appears as the main one,it is opened to criticisms. Indeed, the words used
to define this function are ambiguous. According
to this function, it appears that the trademark
could be understood as a kind of tool for the
consumer, and more precisely a tool guaranteeing
the source or the origin of the goods. The terms
guarantee, identity and even origin or source are●ambiguous. According to these words, does itmean that the trademark allows the consumer toknow the identity of the owner? Do we have tounderstand the trademark as a kind of company
name?
We could understand this function differently
and we could use different words in order toqualify this function.
The words guarantee used in Europe isdefinitely misleading. In France, this term isnotably used in the field of contract law. The word
identity – used in Europe – must be understoodas the “same”. Concerning the word origin,obviously a trademark does not allow theconsumer to identify the owner. With theglobalization, such an approach cannot be retained.
The term origin means that the trademark
guarantees that the goods put on the market
under the trademark always proceed from thelegitimate owner of this sign.
It could be better to speak about the functionof identification. Indeed, as any sign, and moreparticularly the legal signs, the trademark has an
identification function. Indeed, the owner uses a
trademark in order to identify its goods orservices. It is provided by the article 2 of theJapanese Trademark Act and by the article 2 of
the Trademark Directive.
Understanding the main function of the
trademark as an identification function is not a
new approach. In Europe, many decisions remindthat the trademark serves to identify goods orservices11. It means that the trademark allows theowner to distinguish its goods or services fromthose of other companies. In Japan also, manydecisions prefer to assert that the first function of
trademark is an identification function12.
Such a qualification is important and allows
reminding that the manufacturers or the traders
use the trademarks in order to designate thegoods or services with the aim to be
distinguished from its competitor. The trademark
does not have to be understood as a tool for the
consumers and this qualification prevents theconfusion.
(2) The function of guarantee of quality
In Europe, some commentators recognized
this function. CORNISH says that “Marks deserve
protection because they symbolize qualities
associated by consumers with certain goods orservices and guarantee that the goods or services
measures up to expectation”13.
In France, with regards to the newdevelopments of the case law of the Court of2 ●IIP Bulletin 2013 Vol.22

justice, more and more authors assert that thetrademark has also a function of quality 14 .
Nevertheless and fortunately, some other authors
contest the existence of this function15.
As defined by Cornish, the quality function
does not appear as a legal function. If we canunderstand that the consumer believes that thetrademark is an indicator of same, it is importantto underline that the owner is free to change thequality of its goods without any sanction on thebasis of the trademark right. Therefore, it isdifficult to understand the quality function as alegal one.
Concerning the Courts, some decisions of
the European Court of Justice aimed the conceptof quality 16 . The official recognition of thisfunction was made by the decision L’Oréal versus
Bellure in June 2009 17 . However, despite thisrecognition, the Court of Justice has not definedand used this function yet.
In Japan, the recognition of the quality
function seems more natural. It is recognized not
only by the authors but also by the Courts. S.
ONO quotes that “if a mark is used repeatedly (…)
users of goods or services will come to expect that
goods or services under the same mark hold thesame quality”18. This definition reminds obviously
the one of Cornish. More interesting is the usethat the Japanese judges make of this function.
Indeed, they take into account the quality
function when the infringement concerns
authentic goods, like in the cases of parallel
importation or of repackaging 19 . Thus, it isinteresting to notice that the Supreme court holdin the Fred Perry case that “the import oftrade-marked goods does not qualify as an
infringement of a trademark where (…) the
imported goods are not different in quality fromthe goods marketed under the registered trademark
in Japan due to the position of the right holder inJapan directly or indirectly to enforce a quality
control of the goods”.20
The Japanese approach allows understanding
what the quality function is and how it could be
used in Europe. Actually, the quality function
should be considered as a part of theidentification function. Indeed, a trademark is asign and it is necessary to apply here the semiotic
rules. As every sign, a signifier and a signified
constituted a trademark. The signifier is thecomponent of the sign, as the logo, the word or
the shape, and the signified is the good or theservice. The trademark is this whole and theprotection concerns this whole. In other words,
the protection conferred by the trademark right●

IIP Bulletin 2013 Vol.22

does not concern only the sign itself – i.e. thesignifier itself – but the relation between asignifier and a signified.
Usually, the signifier is harmed when there
is a reproduction or an imitation. Nevertheless, it
happens that it is also the signified. Therefore,
the identification function concerns in consequence
not only the sign – i.e. the signifier – but also thesignified. We can therefore assume that if one
part of this sign – the signified or the signifier – ismodified by a third without the authorization of
the owner, it could constitute an infringement. Itmeans that if a manufacturer or a trader puts on amarket a good with a specific registered sign, hedoes not want to see the sign or the good
modified by someone else. In one hand, whensomeone reproduces or imitates a sign thefunction of identification and the signifier are
harmed. On the other hands, the quality functionis harmed when the goods put on the market by
the owner or with it authorization is modified in asense that the quality of the good is harmed anddoes not correspond anymore with the will of theowner. More generally, we can also assume thatthe function of quality is infringed when theowner is not able to control the quality of thegoods put on the market. In such a case, it does
not correspond anymore to the will of the ownerand to the role that he wants to give to its
trademark.
(3) The function of advertising
In Europe, many commentators recognize
the advertising function. CORNISH asserts:“Marks are ciphers around which investment in the
promotion of a product is built and that investment
is a value which deserves protection as such, evenwhen there is no abuse arising frommisrepresentations either about origin or quality”21.
With regard to this definition, the advertising
function cannot be considered as a legal function.
Therefore, it should not be taken into
consideration to assess the infringement.
Nevertheless, the concept of advertisement
appears in many decisions. The General advocate
COLOMER quoted that “The matter is thus one ofestablishment of a dialogue between manufacturer
and consumer. The manufacturer gives theconsumer information in order to make him awareof the goods, and sometimes persuades him as well.
A trade mark is in reality communication”22. And
finally, in the L’oréal Bellure case23, the European
Court of Justice recognized the advertising
function as a legal one. Then, this function was
implemented in the Google Adwords case24. With3 ●regard to this decision, we can say that thisfunction could be harmed only when thecompetitor who uses the owner’s trademark
prevent the owner from promoting its own goods.
In Japan, once again, the recognition of thisfunction was less controversial and was aimed by
the authors 25 and the judges 26 . Nevertheless,despite this recognition, this function appears
more as a commercial function and not as a legal
one. Indeed, even if some decisions makereference to this function, it is not used as theorigin or the quality function. May be thisfunction could be used more efficiently outside
the scope of the trademark right, in the cases ofdilution of the well-known trademark27.
2

The function exclusive to the European
system(1) The function of investments
The concept of investment and reward exists
in the field of the patent right 28 and of thedatabases right 29 but does not exist in the
trademark law. The trademark right has neverbeen considered as a reward of financial or
intellectual investment.
If this function was also recognized in the
L’Oréal case in 2009, we waited for September
2011 and the Interflora case to understand what
this function means 30 . In this case the judges
specified that “in addition to its function ofindicating origin and, as the case may be, its
advertising function, a trade mark also be used byits proprietor to acquire or preserve a

reputation capable of attracting consumers
and retaining their loyalty” 31 . Thus, even if

this function overlaps the advertising function, it
must be understood broader than this latter. The
Court adds that this function is harmed when “theuse by a third party, such as competitor of the trade
mark proprietor, of a sign identical with the trade
mark in relation to goods or services identical withthose for which the mark is registered substantiallyinterferes with the proprietor’s use of its trade markto acquire or preserve a reputation capable of
attracting consumers and retaining their loyalty”32.
In the case where the owner has already areputation, the function of investment is harmed
when “use by a third party of a sign identical withthat mark in relation to identical goods or services
affects that reputation and thereby jeopardizes its
maintenance”33.
(2) The function of communication
The communication function was

also●

recognized by the Court of Justice in the L’Oréalcase. Nevertheless, as the quality function, it is
not defined and not used for the moment by the
CJEU.
(3) The function of exclusivity
In the case Centrafarm34, in 1974, the courtof justice recognized that the specific subject
matter of the industrial property is the guaranteethat the owner of the trademark has the exclusive
right to use that trademark. Therefore, we cansay that the trademark right has a function of
exclusivity. Such an assessment is logical when
we know that the trademark right is a property
right.
Nevertheless, despite this decision, andeven if the Directive recognize that thetrademark right is a property right, there is no
official recognition.

Ⅲ

The usefunctionsofthetrademarkIn order to consider the usefulness of thesefunctions, we need to distinguish in a “classicalway” this usefulness for the existence of the
trademark right (1) and for the exercise of theright (2).
1

The use of the trademark functions in
the assessment of the existence of the
trademark right

In the field of the conditions of the existenceof the trademark, it appears that the trademark
functions play a fundamental role for the grantingof the right, and more particularly for theassessment of the distinctiveness (1), and for theloss of the right, and more particularly for thequestion of the lack of genuine use (2).
(1) The use of the trademark functions forthe granting of the right(i)

The use of the trademark functions for theassessment of the distinctivenessThe distinctiveness can be defined as theability for the sign to identify goods and services
and allowing the distinction with the ones of thecompetitors. In other words, a sign can beregistered as a trademark only if the sign is able
to fulfill the function of identification. As we cansee, the condition of distinctiveness and thefunction of origin are firmly bound, insofar as thislatter explained this requirement.
4 ●IIP Bulletin 2013 Vol.22

In Europe, a sign is not distinctive when it isdescriptive or generic. More generally, even if thesign is not descriptive or generic, the sign can beconsidered as being not distinctive. In such a case,we speak about the distinctiveness per se. The
Court of Justice considers thus, notably in theparticular cases of slogan, that a sign is notdistinctive because it is not perceived as anindication of origin 35 . The function ofidentification justifies the requirement of the
distinctiveness per se.
As mentioned above, a sign must not be
generic, usual, common or descriptive. Thisrequirement can be explained by the rule of freecompetition. It is necessary to prevent theregistration of signs which could be useful for thecompetitor. It also can be explained by thefunction of identification. Indeed, these signs are
not able to play efficiently the role of the
trademark.
In Japan, the article 3 of the Trademark Act
is actually quite similar to the European text.
Indeed, it aims the question of the distinctivenessper se and of the signs which do not have to begeneric or descriptive. Therefore, it is possible toassume that the function of identification plays
also a crucial role. Such an assumption is
confirmed by the fact that many decisions related
to the article 3 aim the identification function36.
(ii) The use of the trademark functions for theassessment of the other requirements
Concerning the others requirement for theregistration, the function does not play the samerole. Indeed, the requirement of lawfulness is notconcerned or justified by the identification
function. Concerning the availability, it is notdirectly concerned or justified by theidentification function. This requirement allows
the protection of the previous exclusive rights, as
author’s right, design right, personality right ortrademark right. Nevertheless, we have to admitthat the coexistence of the identical signs in thesame specialty and with two different owners
harms their distinctiveness. The second
trademark creates a risk of confusion andprevents both signs to play their role. On thisoccasion, the function of origin must be assessedin order to determine if the sign is available ornot.
In Japan, the requirements are the same as inEurope. Therefore, the function of identification
is not used or is not justified in the case of
lawfulness. Concerning the case of availability,
when the previous exclusive right is a trademark,●

IIP Bulletin 2013 Vol.22

the judges make often reference to the function ofidentification in order to assess the validity of thelitigious trademark37.
(2) The use of the trademark function forthe loss of the right
In Europe, the trademark right can be lostfor lack of genuine use during a period of five
years. Obviously, this provision is justified by thefunction of trademark. The Court of justice in the
Ansul case stated that “The protection the marks
confers and the consequences of registering it interms of enforceability vis-à-vis third parties cannot
continue to operate if the mark loses its commercial
raison d’être, which is to create or preserve an outlet
for the goods or services that bear the sign of which
it is composed, as distinct from the goods or servicesof other undertaking”38.
The revocation can be obtained when thesign has become misleading or deceptive. Such a
revocation is not justified by the function of
trademark but more by the rules of freecompetition. The revocation can also be obtained
when the trademark becomes a common name.
With regard to the identification function, thissanction is logical. Indeed in becoming a common
designation, the trademark is incapable to fulfill
its function.
As in Europe, the trademark right can be
rescinded in Japan for lack of genuine use. This
provision, as in Europe, can be explained becauseof the function of identification. The trademark
can also be rescinded because of the misuse of
the sign. Thus, a trademark right must be
rescinded when the sign causes a risk ofconfusion with another business. In this case, thefunction of identification is harmed and justifies
the revocation.
2

The use of the trademark functions in
the assessment of the exercise of the
trademark right(1) The use of the trademark functions forthe assessment of the counterfeiting
The trademark right, even if it is a property
right does not have to be considered as an
absolute right. Indeed, in order to notice aninfringement two requirement must be fulfill. The
use of a litigious sign by a third must be done in
the course of trade and must correspond to a
trademark use. This second requirement is
explained by the trademark function. Indeed, thetrademark right protects a sign which is used to
identify goods or services. Therefore, if someone
5 ●else use this sign in another way, the trademark
right cannot be enforced.
(i)

The case of the double identity
In such hypothesis, the third part reproduces
and uses the same sign as the one of the first
trademark in order to designate the same goods.
In such a case, the question of the trademark
function should not be taken into account insofar
as such a behavior from the competitor harmed
necessary the property rights of the owner: it
harms the function of exclusivity of the
trademark right. That is why the paragraph 11 of
the Directive’s preamble provides that theprotection should be absolute, i.e. there is noneed to refer to the risk of confusion. In otherwords, there is no need to consider if theidentification function is harmed or not. Such anassessment of the infringement is logical withregard to the nature of the trademark right. In acase of double identity, you contest theexclusivity of the owner on its sign. It can becompared with an encroachment known in civillaw. Therefore, the mere noticing of this fact
should be enough to consider that there is an
infringement.
Nevertheless, since the decision Arsenal 39,
even in the case of double identity, it is necessary
to demonstrate that the essential function is
infringed. The owner has to demonstrate that itexists a risk of confusion. In other words, if the
defendant can show that its use does not create arisk of confusion, the judges will consider that theidentification function is not harmed and notice
the lack of infringement. According to such an
approach, the protection of owner became
narrower.
Since 2009, the situation evolved and is more
complicated as ever. Since the Bellure case 40, it isalso possible to take into account the otherfunctions. But as explained above, these functions
do not confer to the owner a broader protection.
Indeed, in the case of double identity, when
the judges recognized that the use is as atrademark, it seems that there is no need to referto the risk of confusion. Is it because of thenature of the trademark right? Or is it because
the risk of confusion is presumed and thispresumption cannot be disputed? In such cases ofdouble identity, it appears that the Japanesejudges notice only that there is a risk of confusion
without a real assessment41.
(ii) The case of the similarity
The case of similarity is less controversial●

even if the assessment of the risk of confusion isa big issue. Actually, it is important to notice thatthe scope of trademark right is determined by thetrademark function. In Europe and in Japan, theidentification is taken into account. Indeed, inorder to assess the counterfeiting in the case ofsimilarity, it is necessary to demonstrate theexistence of a risk of confusion or a risk of
association. Therefore, in such a case, theidentification function is harmed and determines
the scope of the trademark right beyond the same
goods or services. It is also important to noticethat in Europe, the other trademark function areuseless in the cases of similarity.
(2) The use of the trademark functions forthe assessment of the exhaustion
In Europe, the question of the exhaustion of
the trademark right is crucial. It allows
conciliating the IP rights and the principles of theEuropean Union as the free movement of goods.
The exhaustion rules are applied for all IP rights.
But Concerning the trademark right, it isinteresting to notice that if the first paragraph of
the article 7 of the directive limits the function of
exclusivity – i.e. the property right - the second
paragraph allows the trademark functions to limit
the rule of the exhaustion. Thus, in the case ofparallel importation or of repackaging, the Courtof justice uses the function of origin to limit theexhaustion rule. The Court of justice uses also
the concept of the reputation and of the
trademark image to justify such a limitation.
Therefore, in the future, the Court of Justice
should use the function of investment. It is also
possible to assume that one day, as in Japan, thefunction of quality will be use.
In Japan, the question of exhaustion is also
considered. As explained before, in the casewhere authentic goods are involved, the Japanesejudges use the identification function and thequality function. It is used in the case of parallel
importation or in the cases of repackaging.

Ⅳ Conclusion
With regard to this study, it appears that bothin Europe and in Japan, the trademark’s functions
exist and play a key role. It justifies theprotection conferred to the trademark owner. The
trademark functions are used in order to assess
the existence of the trademark right – thedistinctiveness, the revocation – and the exerciseof the right – the counterfeiting and theexhaustion –. Even if the both systems are quite
6 ●IIP Bulletin 2013 Vol.22

similar, we noticed that the European one, under
the influence of the Court of Justice, does notconsider – even if it is not official – the trademark
as a property right. It is a kind of exclusive rightwhose the scope is relative and determined by
the trademark’s functions. On the contrary, theJapanese system seems more respectful of the
trademark right and always considers thetrademark right as a property right. Then, even if
the question of the trademark’s functions seems
more developed in Europe than in Japan, theCourt of Justice should learn about the Japaneseapproach concerning the quality function. On theother hand, if one day, the Japanese Courts wants
to follow the same was as the European one, they
have to be very careful in order to stay respectfulof the trademark’s right and to avoid that thislatter be scarified because of the free competition
principle.
Obviously, this study could not be exhaustive.
Indeed, we tried to consider only the trademark’s
functions for the owner. It could be alsointeresting to study the function for the
consumers and therefore the place of the signs
used as trademark in the consumer’s right42. It
could be also interesting to consider the question
function of the well-known trademark.
1

http://www.millwardbrown.com/brandz/2012/Documents/
2012_BrandZ_Top100_Chart.pdf . The values of Toyota
and Docomo are respectively estimated to 21 and 15
billion of Dollars.
2
Directive 2008/95/EC of the European Parliament andof the Council of 22 October 2008 to approximate thelaws of the Member States relating to trade marks.
3
Council regulation (EC) n° 207/2009 of 26 February
2009 on the community trademark.
4
This function was recognized implicitly in theCentrafarm decision. ECJ, 31 Oct. 1974, n° 16/74, StéCentrafarm B.V et Adriaan de Peijper c. Sté Winthrop
B.V, Rec. 1974, p. 1183, para. 8.
5ECJ, 12 Nov. 2002, C-206/01, Arsenal football club, Rec.
2002, p. I-10273.
6
Paris, 16 Janu. 1868, Ann. propr. ind. 1869, p. 336.
7
ECJ, 22 June 1976, aff. 119-75, Terrapin c/ Terranova,
Rec. 1976, p. 1039, para. 6.
8
S. ONO, Overview of Japanese trademark law, Yuhikaku,
Tokyo, 2nd ed., 1999, Chap. 1, p. 36 – translated andavailable fromhttp://www.iip.or.jp/e/e_publication/ono/ch1.pdf.
9
Y. TAMURA, What functions of trademark are protectedby Japanese trademark law, Conference in Chongqing.
10
See for example, Tokyo District Court, 7 Dec. 1984,
AIPPI Journal, March 1985, p. 29, obs. Y. YAMASAKI;
Tokyo District Court, 47th Civil division, 20 Dec. 2005,
2005 (Wa) n° 8928.
11
See for example, ECFI, 8 Febr. 2011, aff. T-157/08,
Paroc c/ OHIM, para. 44.
12
See Supreme Court, 30 Dec. 1960, Minshu, Vol. 14, p.
●

IIP Bulletin 2013 Vol.22

201 quoted by Y. HARIMA, Shohyo no kinou ni kansuru
houritsugakuteki kentou, Minshoho Zasshi, p. 371-391,
1978 ; Osaka District Court, 24 Febr. 1976, AIPPIJournal, March 1977, p. 20.
13
W. CORNISH, D. LLEWELYN and T. APLIN, Intellectual
property: patents, copyright, trade marks and allied
rights, Sweet and Maxwell, 7th ed., 2010, 16-22.
14
C. GAVALDA & G. PARLÉANI, Droit communautaire desaffaires, JCPE 1997, I, n° 18-19, 653, n° 16 ; A.
FOLLIARD -MONGUIRAL, note sous CJCE, 18 juin 2009,aff. C-487/07, L’Oréal e.a., Rec. 2009, p. I-05185, Propr.
ind. 2009, n° 9, comm. n° 51, n° 3 ; C. DE HAAS, Le
non-sens d’une marque sans usage ou le vice
fondamental du droit des marques français et européen,
Propr. ind. 2010, n°1, étude n° 1, spéc. n° 9 ; J.
LARRIEU, Glissements progressifs vers une nouvelle
image de la marque, Propr. ind. 2010, n° 9, alerte n° 87.
15
A. KAMPERMAN SANDERS and S. MANIATIS, A consumer
trade mark: Protection based on origin and quality,
EIPR 1993, 11, p. 406, spec. 407; F.-K. BEIER,
Territoriality of trademark law and international trade,
IIC 1970, 48, p. 63. See in the same sense, Y.
SAINT-GAL, Marque et qualité, in Marque et droitéconomique in Les fonctions de la marque, Colloquedu 6 et 7 novembre 1975, Union des fabricants, 1976, p.
36, spec. p. 42.
16
ECJ, 11 July. 1996, C-427/93, Bristol-Myers Squibb c/
Paranova, C-429/93, Boehringer, C-436/93, Bayer, Rec.
1996, p. I-3457; ECJ, 23 Apr. 2009, C-59/08, Copad,
Rec. 2009, p. I-3421.
17
ECJ, 18 June 2009, C-487/07, L’Oréal e.a., Rec. 2009, p.
I-05185, para. 58.
18
S. ONO, Overview of Japanese trademark law, Yuhikaku,
Tokyo, 2nd ed., 1999, Chap. 1, p. 37 – translated andavailablefrom
http://www.iip.or.jp/e/e_publication/ono/ch1.pdf.
19
See for example, Osaka District Court, 27 Febr. 1970,
IIC 1971, p. 325, obs. S. KUWATA.
20
Supreme Court of Japan, 27 Febr. 2003, KK Three M v.
Hit Union Co. Ltd., “Fred Perry III”, IIC 2004, p. 216.
21
W. CORNISH, D. LLEWELYN and T. APLIN, op. cit., 16-22.
22
D. R-J. COLOMER, Concl., 6 nov. 2001, aff. C-273/00,
Sieckmann, para. 19.
23
ECJ, 18 June 2009, C-487/07, L’Oréal e.a., Rec. 2009, p.
I-05185, para. 58.
24
CJEU, 23 mars 2010, C-236/08, C-237/08 and C-238/08,
Google France et Google, Rec. 2010, p. I-02417, para.
91.
25
See, S. ONO, op. cit., p. 38.
26
Osaka District Court, 24 Febr. 1976, Osaka Sankei K.K.
v. Ox K.K., in T. Doi, Trademark and unfair
competition law of Japan, Digest of Court Decisions,Vol. 1, AIPPI Japan, p. 130.
27
K. L. PORT, Protection of famous trademark in Japan andthe United States, 15 Wisconsin International Law
Journal 259, 1997, p. 273.
28
The ECJ recognized that “the specific subject matter ofthe industrial property is the guarantee that the patentee,
to reward the creative effort of the inventor, has the
exclusive right to use an invention with a view tomanufacturing industrial product and putting them into
circulation for the first time”. ECJ, 31 oct. 1974, 15/74,
Centrafarm B.V. e.a. c/ Sterling Drug, Rec. 1974, p.
1147, para. 9.

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The Directive 96/9/EC of the European Parliament andof the Council of 11 March 1996 on the legal protectionof databases in its article 7: “Member States shallprovides for a right for the maker of a database whichshows that there has been qualitatively and/or
quantitavely a substantial investment in either theobtaining, verification or presentation of the contents toprevent extraction and/or re-utilization of the whole or ofa substantial part, evaluated qualitatively and/or
quantitatively, of the contents of that database”.
30
CJEU, 22 sept. 2011, C-323/09, Interflora e.a..
31
para. 60.
32
para. 62.
33
para. 63.
34
ECJ, 31 oct. 1974, 16/74, Sté Centrafarm B.V etAdriaan de Peijper c. Sté Winthrop B.V, Rec. 1974, p.
1183, para. 8.
35
See notably, ECFI, 11 Dec. 2001, T-138/00, Erpo
Möbelwerk c/ OHIM, Rec. 2001, p. II-3739 ; ECFI, 5
Dec. 2002, T-130/01, Sykes Enterprises c/ OHIM, Rec.
2002, p. II-5179.
36
See for example, Intellectual Property High Court,First Division, 17 Oct. 2006, 2006(Gyo-Ke) n° 10231 ;Intellectual Property High Court, Third division, 20
July 2005, 2005(Gyo-Ke)n° 10233.
37
See Intellectual Property High Court, Third Division,
27 June 2007, 2006(Gyo-Ke)10543; Intellectual
Property High Court, Second Division, 10 April 2007,
2006(Gyo-Ke)10532; Intellectual Property High Court,
SecondDivision,25
October
2007,
2007(Gyo-Ke)10205; Intellectual Property High Court,
Second Division, 19 July 2007, 2006(Gyo-Ke)10519;
Intellectual Property High Court, Second Division, 19
Apr. 2005, 2005(Gyo-Ke) n° 10103.
38
ECJ, 11 March 2003, aff. C-40/01, Ansul, Rec. 2003, p.
I-2439, para. 37.
39
ECJ, 12 Nov. 2002, C-206/01, Arsenal football club, Rec.
2002, p. I-10273.
40
ECJ, 18 June 2009, C-487/07, L’Oréal e.a., Rec. 2009, p.
I-05185.
41
See for exemple, Tokyo District Court, 47th Civil
Division, 20 Dec. 2005, 2005(Wa)n° 8928.
42
Indeed, as Osamu Sugawara quotes, the protection of
consumer resulting from the Japanese Trademark Act
is only indirect. O. Sugawara, Consumeris kara no
Shouhyouhou Tenbou, Patent, Vol. 29, n° 8, p. 49-55,
1976. The same thing can be asserted for the
trademark system in Europe. See on this question, Y.
Basire, Les fonctions de la marque : essai sur lacohérence du régime juridique d’un signe distinctif,
Thèse Strasbourg sous la direction du Professeur Y.
REBOUL, 2011, para. 711.

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8 ●IIP Bulletin 2013 Vol.22