The Protection of the Marks with Reputation in Europe
and in Japan (*)
Invited Researcher: Yann BASIRE (**)
The owner of a trademark is traditionnally protected in the field of the speciality, i.e. against the use in thecourse of trade of a sign identical with or simiral to his trademark in relation to goods or services which are identicalwith or similar to those for which the trademark is registered. When the trademark is famous or well-known, theprotection is extended to the use made in relation to goods and services which are not similar to those for which theearlier trademark is registered. In Europe such an use is considered as a infringement. However, the protection is not
absolute. Indeed, in order to implement this particular protection, it is necessary to demonstrate that the thetrademarks at issue are identical or similar by virtue of which the relevant public established a link between them andthat there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, orbe detrimental to, the distinctive character (dilution) or the repute of the earlier trade mark (tarnishing). If the systemseems complete, it is far from perfect and totally efficient. Indeed, the case law has made useless the concept ofdilution. In order to have a better understanding of this issue, it could be interesting to compare the question trademark
country in Japan. A transversal approach of this question could be useful and oblige to rething the understanding of the
trademark with reputation.

I. Introduction
1. The scope of protection
The trademark right is limited where the sign has been registered by the office. It is the principle ofterritoriality1. Then, the trademark right can only be implemented in against the use of the third
relating to the identical or similar goods designated in the registration. The trademark right isgoverned the principle of speciality2.
2. The exception : the trademark with reputation
Exceptionnally, the scope of protection can be much broader. In some cases, the owner can beprotected beyond the principles of territoriality – beyond the boarder of a State – and of thespeciality – for dissimilar goods and services. It happens when the trademark is considered by theoffices or the judges as well-known, famous or repute. In other words, it happens when the
trademark is « known » by the public.
(*) This is a summary of the report published under the 2017 Industrial Property Research Promotion Project entrusted by the Japan
Patent Office.
(**) Associate Professor, University of Haute-Alsace, France, at our institute over a period of approximately 1 month from August21, 2017 through September 20, 2017, as an Invited Researcher for the Fiscal Year 2017.
1 See on this question, N. Bouche, Le principe de territorialité de la propriété intellectuelle, L’Harmattan, 2002. V. également, F.K.Beier, La territorialité du droit des marques et les échanges internationaux, JDI 1971, p. 5.
2 See, A. Bouvel, Principe de spécialité et signes distinctifs, Litec, IRPI, Le droit des affaires, Propriété intellectuelle, t. 24, 2004.

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(1) The recognition of the trademark with reputation(i) At the international level
The article 6bis relating to the well-know marks provides an exception to the principle of territoriality.
It gives the opportunity to the owner of a well-known trademark, which is not registered in one
country, to avoid the registration a sign as trademark if this sign constitutes a reproduction or animitation of his trademark. A similar rule has been then recognized, more recently, in the TRIPS
agreement, but this provision extend the protection of the non-registered well-know trademark to theservice mark and to the issue of the mark designating different goods and services.
(ii) At the European level
At the European level, the well-known trademark – of the article 6bis of the Paris Convention – isaimed in the Directive3 and the Regulation4 in the provision relating to condition of availability ofthe sign.
However the European provisions go further with the article 4, paragrap 4, a) of the former
Trademark Directive5, relating to the question of availability and the article 5, paragrah 2 which
provide a specific protection for the trademark with reputation beyond the principle of speciality.
The same provisions exist in the Regulation6 : the article 8 paragraph 5, relating to the availability,
and the article 9, paragraph 1, c), relating to the right conferred by the registration7.
(iii) At the Japanese level
The provisions related to the well-known trademark in the Trademark act do not concern the issuesof infringement but only the ones of registration. They aim different cases : the article 4(1)(x)concerns the question of the sign identical or similar to a non-registered well-known trademark and3 Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, then Directive

2008/95/EC of the European Parliament and the Council of 22 October 2008 to approximate the laws of the Member States
relating to trade marks (codified version). Today, Directive (EU) 2015/2436 of the European Parliament and of the Council of 16
December 2015 to approximate the laws of the Member States relating to trade marks
4 Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community trade mark, and then Council Regulation (EC) No.
207/2009 of 26 February 2009. Today, Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017
on the European Union trade mark.
5 Directive 2008/95/EC.
6 Regulation (EU) 2017/1001
7 It is important to notice that in a case of infringement for different goods and services, the owner could claim in the field oftrademark right and not in an unfair competition proceedings.

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indicating the same or similar goods and services ; the article 4(1)(xv) provides that a sign cannot
be registered if it is likely to cause confusion in connection with the goods or services pertaining toa business of another person ; the 4(1)(xix) aims the file of a sign made for unfair purposes ; thearticles 32(1) and 64(1) are respectively relating to the right to use the trademark arising from prioruse and to the defensive trademark, which is a concept totally unknown in European Union. Insofar
as, there is no article in the Trademark Act related to the infringement of a well-known trademark,it is necessary for the owner of such a trademark to use the UCPA : the article 2(1)(i) concerns theuse of a sign which causes a confusion with a well-known appellation (and not necessary aregistered trademark) ; the article 2(1)(ii) aims the acts of using an indication identical or similar toa famous one.

II. The concept of trademark with reputation
1. The concept of trademark with reputation in Europe(1) The definition of the trademark with reputation
A trademark with reputation can be defined as a registered mark, protected beyond the principle ofspeciality, known by a significant part of the public concerned by the goods or services designatedin the registration and in a substantial part of the Member state. If this definition could beconsidered as satisfactory, unfortunately it does not based on objective element – a substantial partof the Member state or known by a significant part of the public- and must be assessed case by case.
(2) The assessement of the trademark with reputation(i) The principles
The reputation must be demonstrated regarding all relevant facts as, in particular, the market shareheld by the mark, the intensity, geographical extent and duration of its use, and the size ofinvestment made by the undertaking in promoting it 8 . The assessment of the reputation must
definitily do on a case-by-case basis, and not on a abstract level. It depends of the market
concerned and all the other factors.

8 ECJ, 14 Sept. 1999, C-375/97, General Motors., para. 27.

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(ii) The exceptions
The article 9(1)(c) of the regulation must be interpreted as meaning that, in order to benefit fromthe protection afforded in that provision, a European Union trademark must be known by asignificant part of the public concerned by the products or services covered by that trademark, in a
substantial part of the territory of the EU, and that the territory of the Member state may beconsidered to constitute a substantial part of the territory of the Community9.
Then an earlier European Union trademark is unknown to the relevant public in the member state inwhich a registration of a national mark is applied for, the use of the national trademark does not, inprinciple, enable unfair advantage to be taken of it or of the distinctive character or reputation of
the earlier mark and is not detrimental to them. However, even if the earlier European Union
trademark is not known to a significant part of the relevant public in the Member state in which
registration of the national mark has been applied for, it is conceivable that a commerciallysignificant part of the latter may be familiar with it and make a connection between that mark andthe later national mark10.
(2) The concept of well-known trademark
A well-known trademark is like a trademark with reputation, but one is non-registered and the otherone is. Then, a well-known trademark is a trademark known by a significant part of the relevantpublic in a substantial part of a Member state, a city and to its surrounding area being not able toconstitute a substantial part of the Member State. The rules of assessment are the same of the ones
retained for the trademark with reputation.
2. The concept of trademark with reputation in Japan(1) The well-known trademark(i) The well-known trademark and the availability(a) The article 4(1)(x)- The definition
9 CJEU, 6 Oct. 2009, C-301/07, Pago International GmbH c/ Tirolmich registrierte Genossenschaft MBH SAS, para. 30.
10 CJEU, 3 Sept. 2015, C-125/14, Iron & Smith v. Unilever.

ivAccording to the article 4(1)(x), a well known trademark is a sign protected in the field of thespeciality, but beyond the principle of territoriality, which is widely known amongst Japanese endconsumers or relevant traders11, throughout Japan or in a particular area or, for a foreign trademark,well-known in one ore several countries. Indeed, well-knowness in foreing country is one of thefactors in determinating whether it is well-knonw in Japan or not.
- The assessment
The well-knowness of a trademark must be assessed according to the rules known for theassessment of the acquisition of the distinctiveness by the use provided by the art. 3(2) of theTrademark Act.
(b) The article 4(1)(xv)
The well-known trademark according to the article 4(1)(xv) is a sign which does not need to berecognized throughout Japan, by the relevant consumers, and protected beyond the principle ofterritoriality. Concerning, the assessement of the well-knowness, the JPO guidelines refers one
more time to the guidelines relating to the article 3(2) of the Trademark act.
(c) The article 4(1)(xix)
The article 4(1)(xix) seems to protect the well-known trademark, the registered or the nonregistered one, beyond the principle of speciality against the cases of dilution, ternishment or freeride. The JPO guidelines specify that the rules retained about the article 4(1)(x) applie mutatis
mutandis to the determination on wheter or not the relevant trademark is well-known among
consumers.
(ii) The defensive trademark
The defensive trademark gives the opportunity to owners of a well-known trademark to prevent thethird party from registering/using the mark that is similar or identical to the earlier mark in relation
to dissimilar goods or services 12 . The well-known trademark in question must be well-known
11 See for an example, Hiroshima Dist. Ct., 30 Sept. 1982, DCC Coffee v. Daiwa Coffee K.K. 499 Hanrei Times 211.
12 H. Onishi, op. cit., p. 184.

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amongst the relevant public accross the country as the indication of source of the applicant13 andcan be protected against the use of a second trademark for dissimilar goods or services which causea likelihood of confusion14.
(iii) The prior use
According to the article 32 of the Trademark act, the prior use of a sign as a mark creates sometrademark related rights 15 . As Professor Port noticed it, « if one entity’s mark becomes widely
recognized by consumers, that prior user may be able to use that fact to prevent another fromregistering the same or similar marks for use on the same or similar products»16. It allows priorusers of marks that have become widely recognized can continue to use the mark on or inconnection with those same goods or services17.
(2) The trademark with reputation in the field of the UCPA(i) The well-known trademark- The definition
According to the article 2(1)(i) of the UCPA, a well-known » trademark is a registered or non
registered sign protected in the field of speciality, known by the general public in a certain area ofJapan.
- The assessment
All the relevant circumstances should be used to determine the degree of recognition of the mark.
(ii) The famous trademark- The definition

13 Ibidem.
14 Ibidem.

See the examples given, Seiko defensive trademark application, No. 3460 of 1963 ; Haisee defensive trademark
application, No 24034 of 1981 ; Toyota defensive trademark application, No 21655 of 1981 ; Kurabit defensive trademark
application, No 11427 of 1999.
15 K. L. Port, Protection of famous trademarks in Japan and the United States, 15 Wisconsin International Law Journal 259 (1997), p.
271.
16 Ibidem.
17 Ibidem.

viAccording to the article 2(1)(ii) is a famous trademark is a registered or a non registered sign whichmust be recognized troughout Japan, and not only by the relevant consumers protected beyond theprincipe of speciality.
- The assessment
The relevant factors used for the assessment of the famousness are not so far from the ones used inEuropean Union. It is a case by case issue.

III. The protection of the trademarks with reputation
1. The protection of the trademarks with reputation at the time of the registration(1) The protection in Europe(i) The protection in the field of speciality- The protection conferred by the well-known trademark
The well-known trademarks are protected against the reproduction or the imitation which could be
registered for designating the same goods and services. The protection is not automatic. It is not
sufficient to notice that the signs and the goods are the same or similar, it is necessary todemonstrate that the second trademark could cause a « likelihood of confusion ».
- The protection conferred by the trademark with reputation
The Court of Justice, in the decision Davidoff18, decided that Articles 4, paragraph 4, a) has to beinterpreted as entitling the Member States to provide specific protection for registered trade marks
with a reputation in cases where a later mark or sign, which is identical with or similar to theregistered mark, is intended to be used or is used for goods or services identical with or similar to
those covered by the registered mark.
(ii) The protection beyond the principle of speciality

18 ECJ, 9 janvier 2003, C-292/00, Davidoff.

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- The protection conferred by the well-known trademark
The article 6bis relating to the well-known trademark limits the protection to the identical or similar
goods and services. Nevertheless, the TRIPS agreement added that this provision shall apply,
mutatis mutandis, to goods or services which are not similar to those in respect of which a
trademark is registered, provided that use of that trademark in relation to those goods or services
would indicate a connection between those goods or services and the owner of the registeredtrademark and provided that the interest of the owner of the registered trademark are likely to bedamaged by such a use19.
- The protection conferred by the trademark with reputation
Regarding the article 4, paragraph 4, a) of the former trademark Directive20, the Member states
were authorized, but not obliged, to consider the trademark with reputation as an earlier trademark
being able to avoid the registration of another one for different goods or services.
In the new trademark Directive, the protection of the trademark of reputation for dissimilar goods
and services as a relative ground of refusal will be compulsory for all the member states21. The
regulation provides also such a specific protection for different goods and services. It is aimed in
the article 8 paragraph 522.
(2) The protection in Japan(i) The protection in the field of speciality
The article 4(1)(x) of the Trademark act is the equivalent of the article 6bis of the Paris Convention.
It allows the protection of the domestic and foreign non-registered trademark by providing
merely that no sign shall be registered as trademark if this sign is identical with, or similar to,another person’s trademark which is well known among consumers as that indicating goods orservices in connection with the person’s business, if such a sign is used in connection with such
goods or services or goods or services similar thereto. The Japanese provision does not require any
demonstration of a likelihood of confusion.

19 The TRIPS agreement, Annex 1C of the Marrakesh Agreement establishing the World Trade Organization, signed on 15 April

1994, art. 16, § 3.
20 Directive 2008/95/EC.
21 Directive (EU) 2015/2436, art. 5, § 3, a).
22 Regulation (EU) 2017/1001.

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(ii) The protection beyond the principle of speciality- The article 4(1)(xv)
The article 4(1)(xv) provides that a sign cannot be registered if it is likely to cause confusion inconnection with goods or services pertaining to to a business of another person. As explained above,it allows a protection beyond the principle of speciality.
- The article 4(1)(xix)When the articles 4(1)(x) and (xv) cannot be applied, there is one last solution for the owner of awell-known trademark : article 4(1)(xix). In order to apply this article, the signs at issue must be
similar, but do not have to be a source of any confusion. Actually, the second trademark cannot beregistrered when it is filed for unfair purposes, i.e. unfair profits, causing damage to the otherperson, or any other unfair purposes. As for the item (xv), this provision allows the owner being
protected beyond the principle of speciality. This provision allows a protection against theregistrations made by bad faith and the ones which could dilute the well-known trademark.
2. The Protection of the trademarks with reputation against the misuses(1) The protection in Europe(i) The protection beyond the principle of speciality(a) The type of protection
The protection of the trademark with reputation was optional in the member states. In 2019, withthe transposition of the directive resulting from the « trademark package », the protection of the
trademark with reputation will be compulsory and the member state will not have the choiceanymore concerning the type of protection : the misuse will constitute an infringement to the
exclusive right. It will be considered as a counterfeiting.

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Concerning the European Union trademark, the former regulation23 provided already that the use
without the authorization of the owner of a trademark with a reputation for different goods orservices constitutes an infringement to the exclusive right, i.e. a counterfeiting. The new regulation
did not change anything on this point24.
(b) The conditions of the protection- The link
Contrary to the traditionnal cases of infringement made in the same speciality, the concept oflikelihood of confusion does not exist when the misuse is made for different beyond the principle ofspeciality25. The reason is simple : in such a case, the function of origin is infringed. Indeed, theconsumer cannot believe, when the goods and services are different, that they come from the same
company or companies having a commercial link. Therefore, it was necessary to find another way
to assess the infringement. Thus, the Court of justice, in the decisions Adidas26 and Intel27, made areference to the notion of the link.
- The damage or the faultoThe dilution

In the decision Intel, the judges specified that a trademark with a reputation necessarily has
distinctive character at the very least acquired through the use. Therefore, even if an earlier markwith a reputation is not unique, the use of a later identical or similar mark may be such as toweaken the distinctive character of that earlier mark. And there is a dilution, when the mark’s
ability to identify the goods or services for which it is registered and used as coming from theowner of that mark is weakened, since use of the later mark leads to dispersion of the identity andhold upon the public mind of the earlier mark28.
o

The ternishment

23 Regulation (EC) No. 207/2009, art. 9, § 1, c).
24 Regulation (EU) 2017/1001, art. 9, § 1, c).
25 And more generally, when the owner wants to implement the rules of protection of the trademark with reputation.
26 ECJ, 23 Oct. 2003, C-408/01, Adidas-Salomon et Adidas Benelux.
27 ECJ, 27 Nov. 2008, C-252/07, Intel Corporation.
28 ECJ, 27 Nov. 2008, C-252/07, Intel Corporation, para. 76.

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The misuse can be detrimental the repute of the trade mark. It is the prejudice of ternishment. In thesuch case, the infringement concerns the image of the trademark, the values conveyed by the sign.
This detriment is made out where the goods for which the mark applied for is used appeal to the
public’s senses in such a way that the earlier mark’s power of attraction is diminished. In a
Hollywood case29, the Board of appeal of the EUIPO recognized three types of ternishment.
o

The free-ride

The concept of free-ride relates not to the detriment caused to the mark but to the advantage takenby the third party as a result of the use of the identical or similar sign30. It covers, in particular,cases where, by reason of a transfer of the image of the mark or of the characteristics which it
projects to the goods identified by the identical or similar sign, there is clear exploitation on thecoat-tails of the mark with a reputation31.
(ii) The protection in the field of the speciality
In the decision Adidas, the Court of justice asserted that : « a Member State, where it exercises theoption provided by Article 5(2) of the Directive, is bound to grant the specific protection inquestion in cases of use by a third party of a later mark or sign which is identical with or similar to
the registered mark with a reputation, both in relation to goods or services which are not similar
and in relation to goods or services which are identical with or similar to those covered by thatmark »32. The « trademark package » includes this change and aims a protection against the misuseconcerning identical, similar or non similar goods and services33.

(2) The protection in Japan(i) The protection in the field of speciality
The article 2(1)(i) of the Unfair competition act provides a protection for the well-known trademark
against the use by the third of a sign identical or similar to it for the same or similar goods and

29 OHIM, 3rd Board of Appeal, 25 avril 2001, aff. R 283/1999-3.
30 ECJ, 18 June 2009, C-487/07, L’Oréal e.a., para. 41.
31 Ibidem, para. 49.
32 ECJ, 23 Oct. 2003, C-408/01, Adidas-Salomon et Adidas Benelux, para. 22. See for the article 9, § 1, c), CFI, 22 mars 2007, T-

215/03, SIGLA v. OHMI.
33 Directive (EU) 2015/2436, art. 10, § 2, c) ; Regulation (EU) 2017/1001, art. 9, § 1, c).

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services which could cause a confusion. Insofar as it is question of confusion, the protection is in
the field of speciality.
(ii) The protection beyond the principle of speciality
As mentioned above, the article 2(1)(ii) of the Unfair competition act provides a specific protection
for a particular type of sign : the famous indication, which includes the famous trademark. Even if
the concept is not aimed by the provision, it is question about the concept of dilution. Indeed, thisprovision is quite broad in its scope, insofar as it aims any use of another’s famous good or otherappellation, regardless confusion and regardless competition between the parties, creates a cause ofaction. More than the dilution, it seems that the ternishment and the free ride could also consitutean infringement on the basis of this provision.

IV. Conclusion : rethinking the protection of the trademark with reputation
The protection conferred by the reputation seems complicated, not coherent and sometimes totallyuseless. That is why it seems necessary to rethink the system.
The mark could be considered as a mean for its owner to convey some aspects of his personnality.
1. The transformation of the trademark : the legal phenomenon of « extrapatrimonialisation »(1) The trademark with reputation : the pseudonym of the owner ?
Why could not we consider a trademark with reputation as the pseudonym of the owner ? Even if it
is not its function, the trademark hides the identity of the owner. As the pseudonym, in a first time,
there is a full property right and with the reputation, it becomes a mean to convey a part of thepersonnality of the owner. Thus, the trademark is protected beyond the speciality, for different
goods and services. But, these feelings, these moral values, are not the ones of the trademark, but
the ones that the owner wants to share with the public. The mark with reputation become thesymbol of the owner34. Finally, as the pseudonym, the trademark does not become the mean ofidentification of the owner, but the mean of identification of its personnality or of the part of its
personnality. And, the legal regime of the mark with reputation allow the protection of theseelements.
34 See D. Brandt, La protection élargie de la marque de haute renommée au-delà des produits identiques et similaires – Étude de droit

comparé, Lib. Droz, 1985, p. 79.

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(2) The mark with reputation : the seat of personality rights ?
Even if the French doctrin is still divided on this question, the judges – the French35, but also theEuropean court of Human rights36 - recognized the possibility for the legal persons to be the ownerof personality rights. Then, the best way to define the personality rights – and the best way to
distinguih it from the property right - is their finality, which is the protection of interests linked to aperson37. In consequence, a mark could be the seat of a personality right because of its finality (butcould not be considered as a fully one) As for the work protected by a copyright, the trademark
with reputation could be the seat of personality rights which could protect a part of the personalityof the owner.
2. The consequences of the transformation of the mark(1) The free assignability of the mark with reputation
It is difficult to admit that the assignement of a trademark with reputation concerns also the feelingsor the values convey by this sign. The mere assignement of the trademark should not allow thetransfer of the personality rights. The assignement should be done in the same time of the thetransfer of the business. Such a transfer, attached to the trademark, could ensure the continuity ofthe personality of the former owner38. Indeed, the business could be considered as the materialtranslation of the personality of the owner in the field of his activity.
(2) The coherence of the regime of protection of the mark with reputation
The mark with reputation is protected against the dilution, the ternishment and the free-ride.
Concerning the damade of the dilution, it has been mentioned that its proof was almost impossible
to bring. That is why it seems important to have another approach and to understand differently thenotion of dilution.

35 See for example, V. Cass. com., 6 Nov. 1979, D. 1980, IR, p. 416, obs. C. Larroumet ; Cass. civ., 1re ch., 27 Sept. 2005, Propr.

intell. 2006, n° 18, p. 81, obs. J. Passa.
36 ECHR, 6 Apr. 2000, n° 35382/97, Comingersoll S.A. c/ Portugal ; ECHR, 30 June 2011, n° 8916/05, Assoc. Les témoins deJéhova c/ France, D. 2011, p. 1820.
37 O. Boskovic, La patrimonialité des droits – Brèves observations sur une notion fondamentale, R.R.J. 2005, n° 4, p. 1783.
38 P. Dunant, Traité des marques de fabrique et de commerce des indications de provenance et des mentions de récompenses

industrielles en Suisse, Genève, Eggiman, 1898, n° 116.

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The dilution should be noticed when the perception of the image or of the identity of the trademark
is disturbed or influenced by irrelevant informations, as the use by a third of identical or similarsign.
Then, concerning the prejudice of ternishment, it is clear that the image conveyed by the trademark
is infringed. Indeed, the third part use the sign without the authorization of the owner in a context
that does not correspond to the values, the feelings conveyed by the trademark.
Finally, in a case of free ride, the value, the image or the feelings convey by the trademark aretransfered to an another sign, to other goods and services. It would be considered also that theprotection against « the use which takes unfair advantage » is an indirect protection of thepersonality of the owner.

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