{"id":3818,"date":"2025-06-26T15:18:58","date_gmt":"2025-06-26T06:18:58","guid":{"rendered":"https:\/\/www.itohpat.co.jp\/?post_type=ip&p=3818"},"modified":"2026-03-24T12:46:46","modified_gmt":"2026-03-24T03:46:46","slug":"3818","status":"publish","type":"ip","link":"https:\/\/www.itohpat.co.jp\/en\/ip\/3818\/","title":{"rendered":"Cross-border use of trademarks on the Internet, and Trademark Protection in Virtual Spaces and in light of generative AI Technology"},"content":{"rendered":"

The 12th session of the Trademark System Subcommittee, the Intellectual Property Committee under the Japan Patent Office (JPO) Industrial Structure Council was held on June 13, 2025 and \u201cSubjects for consideration related to the Trademark System\u201d was published.<\/p>\r\n\r\n

Subjects<\/strong><\/p>\r\n\r\n

    \r\n

  1. Cross-border use of trademarks on the Internet<\/p><\/li>\r\n

  2. Trademark Protection in Virtual Spaces<\/p><\/li>\r\n

  3. Trademark Protection in light of the development of generative AI Technology<\/p><\/li>\r\n<\/ol>\r\n\r\n

    \r\n

    Cross-border use of trademarks on the Internet<\/h2>\r\n

    Problems<\/h3>\r\n

    \u27a2When a trademark is displayed in a transaction on the Internet, such use may fall, for example, under commercial use of a trademark (Article 2(3)(viii) of the Trademark Act)<\/p>\r\n

    \u27a2While the principle of territoriality<\/u> applies to the scope of trademark rights<\/u>, the use of a trademark on the Internet may be problematic as to whether it constitutes use in Japan<\/u>.<\/p>\r\n

    \u27a2An example is a case where a Japanese registered trademark is displayed on an online shopping site located on an overseas server.<\/u><\/p>\r\n

    Court decisions<\/h3>\r\n

    Suits to rescind a trial decision of a trial for non-use cancellation<\/h4>\r\n
    \r\n
    Decision on \u201cPAPA JOHN\u2019S\u201d case rendered on December 20, 2005 by Intellectual Property High Court (Case Number: 2005(Gyo-Ke)No.10095)<\/dt>\r\n

    \u2013 A registered trademark \u201cPAPA JOHN\u2019S\u201d for designated goods \u201cpizza\u201d was displayed on a webpage established on a server in the U.S.<\/p>\r\n

    \u2013 The defendant (trademark right holder of \u201cPAPA JOHN\u2019S\u201d) alleged that an act of advertising \u201cpizza\u201d on its webpage constitutes the \u201cuse of a trademark\u201d (Article 2 (3)(viii) of the current Trademark Act).<\/p>\r\n

    \u2013 The court\u2019s holding is as follows: The defendant\u2019s webpage is \u201cestablished on a server in the U.S and displayed only in English<\/u>, and therefore is not<\/u> found to have been targeted for Japanese consumers<\/u>. While defendant\u2019s webpage is also accessible from Japan and searchable through Japanese search engines, this is a matter of course for an Internet webpage and does not<\/u> provide sufficient grounds to consider that the advertisement through the aforementioned webpage constitutes use of the trademark in Japan<\/u>.\u201d<\/p>\r\n

    \r\n\"image\"\r\n<\/figure>\r\n<\/dd>\r\n<\/dl>\r\n\r\n
    \r\n
    Decision on \u201cCOVERDERM\u201d case rendered on November 29, 2017 by Intellectual Property High Court (Case Number: 2017(Gyo-Ke)No.10071)<\/dt>\r\n

    \u2013 A registered trademark \u201cCOVERDERM\u201d for designated goods \u201ccosmetics\u201d was displayed on a website established on a server (location unknown).<\/p>\r\n

    \u2013 The plaintiff (trademark right holder) alleged that they used the registered trademark for cosmetics on their website.<\/p>\r\n

    \u2013 The court\u2019s holding is as follows: \u201cSince the plaintiff\u2019s website introduces the history and actual situation of the brand related to the plaintiff\u2019s trademark in Japanese<\/u> and even the order form<\/u> and the send button<\/u> are written in Japanese<\/u>, it is clear that the plaintiff\u2019s website is an ordering site targeted for Japanese consumers<\/u>, even considering the fact that the product introduction at the link is written in English. Then, the plaintiff is at least found to have conducted use of the plaintiff\u2019s trademark in Japan referred to in Article 2(3)(viii) of the Trademark Act during the evidence-required period setting aside the question of whether or not it can be recognized as far as that goods bearing the plaintiff\u2019s trademark were delivered to Japanese consumers<\/u>.\u201d<\/p>\r\n

    \r\n\"image\"\r\n<\/figure>\r\n<\/dd>\r\n<\/dl>\r\n\r\n
    \r\n
    Decision on \u201cAROMA ZONE\u201d case rendered on January 28, 2020 by Intellectual Property High Court (Case Number: 2019(Gyo-Ke) No.10078)<\/dt>\r\n
    \r\n

    \u2013 A registered trademark :<\/p>\r\n\r\n\"image\"\r\n<\/picture>\r\n

    for designated goods \u201ccontainers for household or kitchen use\u201d was displayed on an online shop run by a Japanese resident in France (\u201cl\u2019Ange bio\u201d)<\/p>\r\n

     \u2013 Pointing to the facts that the online shop is operated in Japanese and sells products to Japan, and prices are displayed in Japanese yen, the court held that the use of the present trademark constitutes use in Japan because \u201cit can be inferred that the products were assigned to Japanese consumers with the present trademark affixed thereto, and it is at least clear that l\u2019Ange bio displayed the products for assignment.\u201d<\/p>\r\n

    \r\n\"image\"\r\n<\/figure>\r\n<\/dd>\r\n<\/dl>\r\n\r\n

    A trademark infringement suit related to cross-border use of trademarks on the Internet<\/h3>\r\n

    \u2013 The plaintiff argued that defendant\u2019s use of \u201cSushi Zanmai\u201d on their website constitutes a trademark infringement based on plaintiff\u2019s Japanese registered trademark \u201cSUSHI ZANMAI\u201d (designated service: providing foods and beverages mainly Sushi).<\/p>\r\n

    \r\n\"image\"\r\n<\/figure>\r\n\r\n

    1. First instance decision: rendered on March 19, 2024 by Tokyo District Court (Case Number: 2021(Wa) No.11358)<\/h4>\r\n

    The first instance decision evaluated that the defendant \u201cused\u201d the plaintiff\u2019s trademark (Article 2 (3) (viii) of the Trademark Act) on the grounds that defendant\u2019s act of displaying their trademark \u201cSushi Zanmai\u201d on its website would impair the origin-indicating function<\/u> and the quality-guarantee function<\/u> of the plaintiff\u2019s trademark, and the court recognized trademark infringement<\/u><\/strong>.<\/p>\r\n

    The court held that \u201ceven if the defendant\u2019s trademark is related to their sushi restaurants in Malaysia<\/u>, the act of having placed the defendant\u2019s trademarks on the webpages would impair the origin-indicating function<\/u> and the quality-guarantee function<\/u> of the plaintiff\u2019s trademark in Japan<\/u>, and would therefore be against the aforementioned purpose of the Trademark Act.\u201d<\/p>\r\n\r\n

    2. Appeal court decision: rendered on October 30, 2024 by Intellectual Property High Court (Case Number: 2024(Ne) No.10031)<\/h4>\r\n

    The appeal court decision did not<\/u><\/strong> recognize trademark infringement on the following grounds<\/u>:<\/p>\r\n\r\n

      \r\n

    1. use of the defendant\u2019s trademarks on their webpages cannot <\/u><\/strong>be found to constitute use of the trademark as \u201cadvertisement related to services\u201d of the sushi restaurants<\/u>; and<\/p><\/li>\r\n

    2. even if the use of the defendant\u2019s trademarks on their webpages constitutes use of the trademark, the defendant\u2019s trademarks are not<\/u><\/strong> used for provision of services in Japan.<\/u><\/p><\/li>\r\n<\/ol>\r\n

      The appeal court decision did not<\/u><\/strong> recognize trademark infringement based on the following<\/u>:<\/p>\r\n

      (1) The defendant\u2019s webpages are found to be intended to introduce that the <\/u>defendant <\/u>is engaged in <\/u>business <\/u>of exporting<\/u> fresh, high-quality<\/u> seafood and fishery products <\/u>from Japan to be served by chain restaurants serving Japanese food in Southeast Asia<\/u>, and therefore that the defendant\u2019s webpages are not<\/u><\/strong> fount to constitute \u201cadvertisement related to services\u201d of their sushi restaurants<\/u>.<\/p>\r\n

      (2) Even if use of the defendant\u2019s trademarks on their webpages were to be considered to constitute use of the trademark as \u201cadvertisement\u201d in terms of making the existence of their sushi restaurants widely known in Japan and therefore constitutes \u201cuse as a trademark,\u201d their webpages are found to be intended for domestic businesses considering exporting foodstuffs overseas<\/u>. Moreover, since their sushi restaurants <\/u>are found to be providing services of providing foods and beverages outside Japan (Singapore and Malaysia)<\/u>, their sushi restaurants are not<\/u><\/strong> found to provide similar services in Japan<\/strong><\/u>.<\/p>\r\n

      (3) The appeal court decision cites Joint Recommendation Concerning The Protection Of Marks, and Other Industrial Property Rights In Signs,On The Internet<\/a> issued by the WIPO (\u201cJoint Recommendation\u201d), applies the Joint Recommendation to this case, states that above interpretations are consistent with the Joint Recommendation, and concluded that use of the defendant\u2019s <\/u>trademarks <\/u>on their webpages does not<\/strong> constitute <\/u>use as a trademark in Japan<\/u>. When the factors for determining commercial effect referred to in Article 3(1) of the Joint Recommendation are examined, the following are observed:<\/p>\r\n

      the defendant\u2019s sushi restaurants do not<\/u><\/strong> provide services in Japan and there are no circumstances indicating that the defendant has undertaken plans to provide such services in Japan<\/u> (Article 3(1) (a));<\/p>\r\n

      the defendant\u2019s webpages do not<\/u><\/strong> display prices of their sushi restaurants in Japanese yen<\/u><\/strong> (Article 3(1) (c)(ii)); and<\/p>\r\n

      no contact information in Japan<\/u><\/strong> is provided on the webpages (Article 3(1) (d)(ii)).<\/p>\r\n

      In addition, the following circumstances are also found: the purpose of the defendant\u2019s<\/u> webpages<\/u> themselves<\/u> is to serve as advertisement of services of exporting foodstuffs from Japan<\/u>, and the defendant\u2019s trademarks are used in the context of introducing foreign restaurant chains that use those foodstuffs exported from Japan.<\/p>\r\n

      When these circumstances are comprehensively considered, even in light of the facts that the defendant\u2019s<\/u> webpages<\/u> are created in Japanese <\/u>(Article 3(1)(d)(iv)), and that the defendant\u2019s<\/u> webpages<\/u> do not<\/strong> explicitly indicate that they have no<\/strong> intention to provide services of their <\/u>sushi restaurants<\/u> to customers in Japan<\/strong> <\/u>((Article 3(1)(b)(ii)), it is not <\/u><\/strong>considered that the<\/u> use of the defendant\u2019s <\/u>trademarks <\/u>on their webpages has a commercial effect in Japan<\/strong><\/u>, and therefore should be considered as not<\/u><\/strong> constituting use as a trademark in Japan<\/strong>.<\/u><\/p>\r\n

      \u2460\u3000Summary<\/h3>\r\n

      \u27a2The factors pointed out in court decisions<\/u><\/strong> and the WIPO <\/u><\/strong>Joint Recommendation<\/u><\/strong> are useful to determine whether cross-border use of a trademark on the Internet constitutes use of a trademark in Japan<\/u> <\/strong>under the Trademark Act.<\/p>\r\n

      \u27a2Comprehensively considering those factors, where use of a trademark is evaluated as being targeted for Japanese consumers<\/u><\/strong>, the use is considered to constitute use of a trademark in Japan.<\/u><\/strong><\/p>\r\n

      \r\n\"image\"\r\n<\/figure>\r\n

      While it is necessary to continue to closely watch the discussions in the Patent System Subcommittee, it is considered that the current Trademark System addresses cross-border use of trademarks on the Internet to a certain extent.<\/p>\r\n\r\n