How to resolve cross-border trademark infringement
～Sushi Zanmai (Go crazy about Sushi) Case～
Intellectual Property High Court, October 30, 2024 (Case No. 2024 (Ne) 10031)

“Does the use of trademarks on a website in connection with the services provided in foreign country constitute trademark infringement in Japan?”.

Recently, a remarkable and noteworthy decision was rendered on this issue. At the first instance, the Tokyo District Court held that such use does constitute trademark infringement in Japan, since the website was written in Japanese targeting Japanese consumers and it thus impairs the Plaintiff’s trademark source-identifying/quality guaranteeing function.

However, the IP high Court overturned the decision judging that the Defendant’s use of the mark does not impair any trademark function as it was not used in a trademark sense. Interestingly, the IP high court referred to the WIPO’s “Joint Recommendation Concerning The Protection Of Marks, and Other Industrial Property Rights In Signs, On The Internet” adopted in 2001.

In conclusion, the WIPO rule may be taken into consideration in future cases when judging potential risk of trademark infringement when a trademark is used on a website in foreign countries.