{"id":3851,"date":"2025-01-06T16:44:38","date_gmt":"2025-01-06T07:44:38","guid":{"rendered":"https:\/\/www.itohpat.co.jp\/?post_type=ip&p=3851"},"modified":"2026-03-24T12:46:46","modified_gmt":"2026-03-24T03:46:46","slug":"3851","status":"publish","type":"ip","link":"https:\/\/www.itohpat.co.jp\/en\/ip\/3851\/","title":{"rendered":"The “Sushi Zanmai” Case: Appeal Court Decision ~ Intellectual Property High Court, October 30, 2024 (Case No. 2024 (Ne) 10031) ~"},"content":{"rendered":"
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1.  Overview<\/h2>\r\n

The Intellectual Property High Court overturned the Tokyo District Court\u2019s decision, which had confirmed trademark infringement as well as the injunctions and partial damages claimed for displaying the trademarks on their webpage.  The Intellectual Property High Court dismissed all claims made by the plaintiff, Kiyomura.<\/p>\r\n

This decision is noteworthy and valuable when analyzing the potential risk of trademarks displayed on websites.  The \u201cuse of a trademark on the internet\u201d has no borders unless technical restrictions are imposed.  Therefore, it is important to pay attention to the scope of trademark rights in each country based on the \u201cprinciple of territoriality and the principle of trademark independence.\u201d<\/p>\r\n

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2.  Case Overview<\/h2>\r\n

The plaintiff, Kiyomura, is a company engaged in running sushi restaurants, general procurement of seafood, development and manufacturing of food ingredients in Japan.  Kiyomura owns the registered trademark \u201cSUSHI ZANMAI\u201d in both English and Japanese, and operates a nationwide chain of restaurants under the name of \u201d SUSHI ZANMAI.\u201d<\/p>\r\n

The defendant, Daisho Japan (hereinafter \u201cDaisho Japan\u201d), is a company engaged in importing, exporting, and selling seafood and fishery products, as well as operating and managing general eateries.  Daisho Japan is a wholly-owned subsidiary of Daisho Singapore (Daisho (Singapore) PTE LTD) and is a part of the Daisho Group, which also includes companies based in Thailand and Malaysia.  The Daisho Group handles the procurement of food ingredients in Japan and exports them to its subsidiaries in Southeast Asia.<\/p>\r\n

The non-party, Super Sushi (SUPER SUSHI SDN. BHD.), is a company based in Malaysia and a member of the Daisho Group.  Super Sushi operates restaurants in Malaysia under the name \u201cSushi Zanmai\u201d and imports Japanese food ingredients from Daisho Japan.<\/p>\r\n

Daisho Japan introduced its business activities related to the procurement and export of seafood and fishery products on its corporate website in Japanese language.  Super Sushi has operated the restaurant \u201cSushi Zanmai\u201d in Malaysia (herein after \u201cDaisho\u2019s sushi restaurant).  Daisho Japan displayed its trademark on their corporate website.<\/p>\r\n

Kiyomura argued that Daisho Japan\u2019s act of displaying the trademark \u201cSushi Zanmai\u201d on its website constituted trademark infringement and a violation of the Unfair Competition Prevention Act.<\/p>\r\n

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3.  Summary of the Decision<\/h2>\r\n

The claims made by Kiyomura shall be dismissed on the ground of the following reasons.<\/p>\r\n

(1) Daisho Japan\u2019s webpage does not correspond to \u201cadvertisement related to services\u201d of the sushi restaurant services which fall under Article 2(3)(viii) of the Trademark Act. Therefore, it cannot be considered as using Kiyomura\u2019s trademarks and does not constitute the use of the trademark within Japan.<\/p>\r\n

Even if it were to be considered as an advertisement related to the sushi restaurant services, the Daisho\u2019s trademarks are not used in relation to the sushi restaurant services within Japan.  As the Daisho\u2019s trademark use does not damage functions of indicating a source brought from Kiyomura\u2019s trademark rights in Japan, it practically does not infringe the Kiyomura\u2019s trademark rights.<\/p>\r\n

(2) The webpage also does not constitute the use of \u201cidentification\u201d under Article 2 (1)(i) and (ii) under the Unfair Competition Prevention Act.<\/p>\r\n

(A) Whether Daisho Japan\u2019s use of the mark on its website constitutes an advertisement for services related to sushi restaurants via electromagnetic means<\/h3>\r\n

Daisho Japan introduced their business activities that export fresh, high-quality ingredients from Japan to restaurants in Southeast Asia on its webpage written in Japanese.  Daisho\u2019s trademark is displayed on its webpage.  However, it was placed at the end of the webpage, along with a brief description of the sushi restaurant in Malaysia, including the link to its English website.  There is scant information for general consumers regarding the sushi restaurant services, such as specific menu items, prices, or the restaurant\u2019s location.  The proportion of information related to the Malaysian restaurant on the entire page is also minimal.  Additionally, it is relatively easy to discern from the website that the sushi restaurant is located in Southeast Asia.<\/p>\r\n

Overall, Daisho Japan\u2019s webpage should be considered an advertisement for the export of food ingredients from Japan.<\/u>  The section using the Daisho\u2019s trademark (it is listed with other restaurant chains operated by the Daisho Group) aims to explain to the Japanese business operators about the destinations and usage of ingredients exported through the Daisho Group, thereby serving incentives to export food ingredients with Daisho Japan.<\/p>\r\n

Such use cannot be evaluated as the source of origin or the identification for distinguishing goods\/services of others related to the sushi restaurant services.  Daisho\u2019s trademark is not used to advertise the sushi restaurant to Japanese consumers, and there is no evidence that there is such an effect.<\/p>\r\n

Therefore, the Daisho\u2019s trademark use does not fall under \u201cproviding information via electromagnetic means regarding advertisements for services related to the sushi restaurant\u201d (Article 2(3)(viii) of the Trademark Act).<\/p>\r\n

(B) Views on infringement of Kiyomura\u2019s trademark rights by the use of Daisho\u2019s trademark<\/h3>\r\n

Even if the use of Daisho\u2019s trademark is considered as use under the Trademark Act discussed as above section (A), it does not infringe Kiyomura\u2019s trademark rights because it is not used in relation to the services provided within Japan.<\/p>\r\n

The Daisho\u2019s sushi restaurants provide restaurant services outside of Japan (in Singapore and Malaysia), and Daisho\u2019s trademark is used when providing these services locally.<\/p>\r\n

Accordingly, Daisho\u2019s trademark is not used in relation to sushi restaurant services within Japan.  Even if Japanese consumers who saw the Daisho\u2019s trademarks mistakenly believe the source of the services with Kiyomura\u2019s service, such a mistaken belief would invariably occur in locations where Japanese trademark rights do not extend because the Daisho\u2019s sushi restaurant does not provide services in Japan.  In consequence, Kiyomura\u2019s trademark rights are not infringed within Japan.<\/p>\r\n

(C) Principle of Trademark Independence and Principle of Territoriality<\/h3>\r\n

A trademark registered in one country is considered independent of trademarks registered in other countries (Article 6(1) and (3) of the Paris Convention). Furthermore, under the so-called principle of territoriality, the effect of trademark rights is understood to be limited to the domestic jurisdiction where the trademark is registered.<\/p>\r\n

Daisho\u2019s trademarks, which were lawfully registered in a foreign country, are used on respective webpages to indicate the provision of designated services in that foreign country.  If granting an injunction or other claims based on the Kiyomura\u2019s trademark rights, the Japanese trademark rights would, in substance, restrict the lawful use of foreign trademarks in that foreign country, even though the source of origin or other functions of the Kiyomura\u2019s trademarks are not infringed.  Therefore, from the perspective of both the principle of trademark independence and the principle of territoriality, granting an injunction or other claims Kiyomura\u2019s trademark rights cannot be deemed appropriate.<\/p>\r\n

(D) Reference to <\/h3>\r\n

Joint Recommendation Concerning The Protection Of Marks, and Other Industrial Property Rights In Signs,On The Internet<\/strong><\/a><\/p>\r\n

              The decision cites the above-mentioned Joint Recommendation and states that above interpretation is consistent with Article 2 of the Joint Recommendation, which describes, \u201cUse of a sign on the Internet shall constitute use in a Member State for the purposes of these provisions, only if the use has a commercial effect in that Member State.\u201d<\/p>\r\n

Although the Daisho\u2019s webpage,<\/p>\r\n