The Functions of Trade Marks and Their Role in Infringement Cases - What Can the EU and Japan Learn from Each Others' Experiences

FY Industrial Property Promotion Project, 2006

Posted: 8 Jul 2008

See all articles by Ilanah Simon Fhima

Ilanah Simon Fhima

Institute of Brand and Innovation Law, Unversity College London

Date Written: 2006

Abstract

Both Japan and the European Union (and for that matter, the United States) have operated trade mark registration systems for over a century, yet there remains a lack of clarity in relation to the fundamental issue of how a trade mark functions. The issue of trade mark function is particularly prominent in the European Union following the European Court of Justice's (ECJ) ruling that in assessing infringement, we must look for damage to the function of the earlier trade mark. Trade mark function has also been in the spotlight in Japan, particularly following the Japanese Supreme Court's Fred Perry case, confirming that parallel imports of genuine goods do not constitute trade mark infringement.

This paper examines why trade mark function is so controversial in both Japan and the EU and whether its key role in the case law of both Japan and the EU has led the courts in the two jurisdictions to reach similar conclusions on issues where it has been engaged. To the extent that there are differences, this paper considers why these differences arise, which approach is better, and what, as a result, the two jurisdictions can learn from each other.

The paper is divided into three sections. In the first section I consider the functions played by trade marks from a theoretical standpoint. This section will be broadly descriptive, rather than prescriptive or normative. The aim is to build an accurate picture of how trade marks function in today's market, which could serve as the starting point for a decision as to which trade mark functions should be legally protected.

In the second and third sections, I consider which trade marks functions are currently protected in Japan and the EU through an examination of the issues which have led to the most debated about trade mark function - parallel importation of trade marked goods and the extent to which use as a trade mark is required to succeed in an infringement action. Where there are differences between the two jurisdictions, I will consider why those differences arise, and which jurisdiction's approach makes better sense.

The paper concludes with an analysis of the extent to which the two jurisdictions have differed in recognizing the trade mark functions identified in the first part, and considers the likely future of judicial receptiveness of the various trade mark functions.

Keywords: Japan, European Union, Intellectual Property, Trademark, parallel importation, trade mark use, trade mark function

JEL Classification: O34, K00

Suggested Citation

Simon, Ilanah, The Functions of Trade Marks and Their Role in Infringement Cases - What Can the EU and Japan Learn from Each Others' Experiences (2006). FY Industrial Property Promotion Project, 2006. Available at SSRN: https://ssrn.com/abstract=1156780

Ilanah Simon (Contact Author)

Institute of Brand and Innovation Law, Unversity College London ( email )

Gower St
London WC1E OEG, WC1E 6BT
United Kingdom

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