Non-traditional Trade Marks in the European Union and Japan: Is There an Inflating Trade Mark Balloon?

The EU has two trade mark legislations pursuing distinct objectives. The EU Trade Mark Directive 2015/2436 (Directive 2015/2436) harmonizes the national laws in the member states, while the EU Trade Mark Regulation 2017/1001 (Regulation 2017/1001) provides EU-wide trade mark protection with a single application and registration. The EU Intellectual Property Office (EUIPO),¹⁶ which replaced the Office for Harmonisation in the Internal Market (OHIM) after the trade mark reform in 2015, examines the EU trade mark applications made in accordance with Regulation 2017/1001.

The registration of an EU trade mark grants protection throughout the EU without prejudice to national registration.¹⁷ The EU trade mark registration is unitary. It is not an aggregate of registration in 27 member states.¹⁸ National and EU trade mark registrations are mutually exclusive. They may co-exist only when the same person owns them. Nevertheless, to register an EU trade mark, an applicant must prove distinctiveness in all member states. This rule has been problematic because most registered EU trade marks need protection in a smaller part of the EU due to linguistic barriers.¹⁹ For example, due to the alphabetical and semantic limitations, sometimes a word mark does not need protection in all the EU member states but only where the consumers can read and understand the word. The EUIPO does not, however, register a trade mark unless an applicant proves EU-wide distinctiveness. Since non-traditional signs can naturally overcome linguistic barriers, they must also be distinctive in all member states.

To provide clear and precise trade mark registration, the reform in 2015 created a more accessible and comprehensive trade mark registry.²⁰ As a result, both Directive 2015/2436 and Regulation 2017/1001 welcomed non-traditional trade marks. In addition to the EU trade mark laws and the decision of the European Court of Justice (ECJ), the EUIPO has guided non-traditional trade mark applications through technical matters by easing the standards of distinctiveness and representation by relying on the EU Commission Implementing Regulation 2018/626 (Regulation 2018/626).²¹

Japan did not have a uniform system to protect trade marks until the 1884 Trade Mark Ordinance (Shouhyou Jourei—商標条例)²² and the 1889 Trade Mark Act.²³ Trade mark protection and even the concepts of individual rights and duties were alien to Japanese law until the Meiji period, since, according to Hahn,²⁴ the Tokugawa Shogunate (1603–1868) prioritized maintaining the hierarchy and harmony in the society influenced by Confucianism. However, more precisely, to prevent the Catholic influence in Japan, the Tokugawa Shogunate created multiple local domains governed by feudal lords²⁵ while investing the control of metropolitan and trading areas in the central government. This delayed the formation of uniform property and trade mark law until the Meiji period.

During the Meiji period, the 1889 Trade Mark Act introduced a registration-based system and centralized trade mark protection in Japan.²⁶ Japan joined the Paris Convention on the Protection of Industrial Property²⁷ in 1889 and replaced the earlier acts with the 1959 Trade Mark Act (Trade Mark Act)²⁸ that is still in force following the amendments.

The 1889 Trade Mark Act of Japan defined a trade mark as consisting of ‘a specially distinctive figure, letters or a combination of both’.²⁹ However, later on, the 1889 Trade Mark Act abandoned the standard of ‘special distinctiveness’ (tokubetsu kencho—特別顕著) because of the various conflicting interpretations in practice regarding distinctiveness.³⁰ Article 2(1) of the Trade Mark Act replaced distinctiveness with perceptibility, while Article 3(1) and 4(1) follow on with a list of unregistrable signs.

The shift from the use-based to the registration-based system was not a coincidence. In fact, the trade mark acts of Japan followed a series of reforms during the Meiji Restoration. At that time, Japan decided to reform and redesign, amongst others, the intellectual property laws in order to have a justification for standing against the unfair trade agreements with Western countries like the US while reaching their level of development.³¹ Before the Meiji Restoration, the Tokugawa Shogunate felt the same need. To facilitate the Japan-US Treaty of Peace and Amity, the Shogunate delegated a group of people to the US who were expected to study the US from different perspectives, including intellectual property law.³² As a result, Japan reconstructed its commercial law based on the German and US systems.³³ This has been followed by a mixture of civil and common legal considerations in the intellectual property and competition debate in Japan. In trade mark law, Japan adopted the registration-based system...