Recently, many disputes regarding store appearances have
occurred relating to businesses, such as sushi or ramen stores.
Unlike the US where the trade dress theory exists, rules for
protecting store appearance in Japan are not set and no case
law has ever granted an injunction. This is the first case
granting an injunction in a store appearance case.
Summary of the case
Komeda runs Komeda Coffee store. The appearance of the
suburban-type store was designed with bricks and wood, focusing
on producing a soft space where the customers visiting the
store can relax just like in a living room at home.
Minosuke wanted to be a franchisee of Komeda but was
rejected. Thereafter, Minosuke constructed a building of the
first store of Masaki Coffee within 30 minutes distance by car
from Komeda's store and started a business.
Komeda received many enquiries and reports regarding the
relationship between the first store of Masaki Coffee and
Komeda Coffee store as soon as the first store of Masaki Coffee
was opened. Komeda released an announcement on its website
stating that there was no relationship.
Komeda filed a preliminary injunction and a main lawsuit at
the Tokyo District Court. Thereafter, Minosuke opened the
second store of Masaki Coffee which had the same appearance as
the first store of Masaki Coffee.
Source: Komeda Holdings
Decision of December 19 2016, Tokyo District Court
The Tokyo District Court (Presiding Judge Shimasue) granted
a preliminary injunction against the use of store appearance,
holding as follows.
Right to be preserved
1. Whether the store appearance of KOMEDA coffee
store falls under an indication of goods etc.
1.1 Case when the store appearance falls under an
indication of goods etc.
The store appearance (exterior of the store, structure of
the store and interior decoration) itself is not generally
chosen for the purpose of having the nature of the business
recognised (indication of the origin of business). However, in
some cases, it is selected for the purpose of embodying the
image of the business.
The whole appearance of the store indicates the business,
distinguishing the specific subject of business (indicating the
origin), and falls under an indication of goods prescribed in
Article 2(1)(i) and (ii) of the Unfair Competition Prevention
Act, if the following criteria are fulfilled:
i) the store appearance has a remarkable
feature objectively different from the store appearance of
other stores of the same kind;
ii) it is recognised that the store
appearance has come to be well-known among consumers as the one
indicating the origin of the specific proprietor, based on the
duration of the period in which the store appearance has been
used continuously and exclusively by the specific proprietor
and advertisements regarding the business including the store
1.2 Remarkable feature of the store appearance of
Komeda Coffee store
The store appearance of Komeda Coffee store is recognised by
a combination of several features, and this forms the unified
visual impression. Thus, it cannot be said that the appearance
that resulted from the combination of all of these features was
adopted only as a result of the architecture. The appearance
was selected as an image of a suburban-type store with the
intention of signifying a soft space where the customers
visiting the store can relax just like in a living room at
The exterior selected in the above-mentioned way, formed by
the combination of features, including the bay window brick
wall projecting under a gable roof from top to bottom, is
distinctive. When adding to the combination, the structure of
the store and the interior decoration, with the feature of the
partition with a semi-circular arch-shaped edge, the exterior
is more and more distinctive. Therefore, the store appearance
combining the above-mentioned features has a remarkable feature
which is objectively different from the store appearance of
other stores of the same kind, even in comparison with the
store appearance of the suburban-type stores of other coffee
Therefore, the store appearance of Komeda Coffee store
objectively has a remarkable feature different from the store
appearance of other stores of the same kind.
1.3 Exclusivity of the store appearance of Komeda
Minosuke argued that since the gable roof, bay window and
brick wall are a commonly used style of architecture, the
general appearance of the architecture illustrated by the store
appearance of Komeda Coffee store should not be exclusively
used by Komeda.
However, the store appearance of Komeda Coffee store which
Komeda claimed fell under an indication of goods in this case
is limited to it having a business indication generated only by
combining all of the exterior, the structure of the store and
the interior decoration. The store appearance of Komeda Coffee
store is an indication including many decorative elements to
embody the store image, rather than just a configuration to
fulfil the function and effect of the architecture, and is also
well-known among consumers. In addition, in this case, the
above-mentioned limitations are added and the conditions are
narrowed down a great deal. As a result, appearances will be
prohibited by reason of similarity only in cases where the
store appearance was imitated despite the fact that there was
no real necessity to do so in terms of the architecture.
Considering this, exclusive use of store appearance having a
harmful influence is extremely low.
In this case, the right to be preserved was easy to fulfil
because of the extreme similarity of the store appearances, and
the necessity for preservation was easily fulfilled because of
the action of Minosuke in building the first and second store
of Masaki Coffee. This decision seems to have cautiously
limited the scenario where a store appearance is protected by
confining an indication of goods to a circumstance where the
exterior, the structure of the store and the interior
decoration are combined so that exclusivity of the indication
does not occur. Accordingly, when seeking protection of store
appearance and relying on this decision, one should carefully
review the resemblance of the facts to this case. However, one
can have a more aggressive attitude to the accused infringer
than before as there is a decision granting an injunction now.
In addition, like Komeda, it is recommended businesses obtain a
three-dimensional trade mark.
Matsushita IMP Building
1-3-7, Shiromi, Chuo-ku, Osaka, 540-0001, Japan
Tel: +81 6 6949 1496
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