[Trademark/Foreign Server] 2024 (Ne) 10031 <Hibiku Shimizu> — “Sushi Zanmai” Case
更新日：02false44 GMT+0000 (Coordinated Universal Time)
Article information
Article type: Case note
Category: Trademarks
Topics: —
First published on this website: 2026-11-01
Display and classification checked: November 2, 2026
Originally published on Ameblo: 2025-05-29 (Japan time). Full English translation.
[Trademark/Foreign Server] 2024 (Ne) 10031 <Hibiku Shimizu>
“Sushi Zanmai” Case
⇒ Reversed: no trademark infringement
[Issue 1: Application of Trademark Act Article 2(3)(viii)]
At first instance, the defendant's webpages were found to be created mainly for Japan, were recognized as concerning services similar to food and beverage services, and were treated as advertising.
However, the IP High Court held that the website as a whole aimed to promote exports of food ingredients from Japan, and that the defendant's displayed indications were merely part of an introduction to its overseas-store business, not advertising directed to consumers in Japan.
[Issue 2: Trademark Use and Infringement of the Source-Indicating Function]
The IP High Court held that, even if the display were considered “advertising,” the defendant's indications concerned overseas stores not providing services in Japan. Thus, the source-indicating and quality-guaranteeing functions of the plaintiff's marks were not impaired, and any confusion would have effects only abroad.
[Issue 3: Territoriality and Consistency with the Joint Recommendation]
In light of trademark independence and territoriality under the Paris Convention, the IP High Court held that indications lawfully registered abroad were confined to provision of services in that country.
It also concluded, in light of the Joint Recommendation, that there was no trademark use because no commercial effect in Japan was recognized.
*Regarding the Joint Recommendation:
Concerning the “factors for determining commercial effect” listed in Article 3(1) of the Joint Recommendation, the IP High Court
held that, comprehensively considering that “the sushi restaurants do not provide services in Japan and there are no circumstances indicating that they have undertaken plans to do so (subparagraph (a)); the webpages do not display the restaurants' prices in Japanese currency (subparagraph (c)(ii)) or contact methods in Japan (subparagraph (d)(ii)); and, as noted above, the webpages themselves are intended to advertise the service of exporting food ingredients from Japan, with the defendant's indications used in the context of introducing restaurant chains that use the exported ingredients abroad,” even taking into account that “the webpages are written in Japanese (subparagraph (d)(iv)) and do not explicitly state the absence of an intention to provide the restaurants' services to customers in Japan (subparagraph (b)(ii)),” “the use of the defendant's indications on the webpages cannot be said to have a commercial effect in Japan and thus does not constitute use as trademarks in Japan.”
Update history
The first-published date remains unchanged. Display maintenance, classification changes, related-article updates, and text corrections are recorded separately.
November 1, 2026: First published on this website.
November 2, 2026: Added article information, classification, topics, language navigation, related articles where the same case was confirmed, consultation guidance, and SEO. The original text and first-published date were preserved.
