1. Trade Dress

Under the laws of Japan, “trade dress” is not specifically defined as the target of protection. In Japan, the topics “Are Trade Dresses Protectable?” and “How to Protect Trade Dresses” are often discussed. Under the circumstances, Tokyo District Court issued the breakthrough decision.

(i) Facts

The coffee shop “Komeda” (hereinafter referred to as “Komeda Coffee”), which opens coffee shops all over Japan, filed a petition for a provisional injunction against “Masaki Coffee” to cease the infringement of the “shop appearance”, “interior decor” and “dishware”. See the “shop appearance” of both parties as below.

Komeda Coffee’s shop appearance

Masaki Coffee’s shop appearance

(ii) Decision

Tokyo District Court held that a “shop appearance” is within the definition of an “indication of goods, etc.” in Article 2 (1) (i) of the Unfair Competition Prevention Act and ordered Masaki Coffee to temporarily cease the use of the shop appearance, photos and pictures of the shop.

(iii) Our Brief Comments

As stated the above, under the laws of Japan, “trade dress” is not specifically defined as the target of protection. In order to protect “trade dress”, we have no choice but to make a claim based on the Unfair Competition Prevention Act. However, there are few cases regarding “trade dress” and there had been no cases where the Courts had accepted protection of “trade dress”. This case is the first and landmark decision and would have a great impact on protection of “trade dress” in Japan.

For your reference, we would also like to introduce the following past cases.

(a) Court: Osaka District Court
Case Number: 2006 (wa) 10470
Date of Decision: July 3, 2007

The plaintiff argued that the subject case should be protected under the Unfair Competition Prevention Act because the defendant used the similar shop appearance. However, the court did not provide their opinion about whether the shop appearance should be within the definition of an “indication of goods or services” under the Unfair Competition Prevention Act and the court concluded that the shop appearance in question was dissimilar.

(b) Court: Osaka District Court
Case Number: 2009 (wa) 6755
Date of Decision: December 16, 2010

In this case, the plaintiff argued that a design of display should be within the definition of an “indication of goods or services” under the Unfair Competition Prevention Act. However, the court rejected the plaintiff’s argument and concluded that a display should not be within the definition of an “indication of goods or services” in principle.

2. Color Mark

The Japan Patent Office first issued notices of allowance to the following two color marks.

This is the mark of a famous convenience store “Seven Eleven”. We believe you already know this mark.

This is the famous color mark used for erasers.

As of April 19, 2017, 407 applications of color marks were filed. The remaining 405 applications are still pending and waiting for the decision of the JPO.