## Facts

- McDonald’s Company (Japan), Ltd. (McDonald’s) planned expansion into Japan and publicly announced in January 1971 that it would begin operating there.
- McDonald’s opened its first Japanese restaurant in July 1971, after which its trademarks became well known in Japan through its operations and public attention.
- Before McDonald’s opened in Japan, “McDonald’s” was known in Japan as the name of an American restaurant chain as early as 1966.
- By July 1969, the McDonald’s name was widely recognized in Japan, even though McDonald’s had not yet started business there.
- In July 1969, K.K. Marushin Foods (Marushin) filed applications to register a series of trademarks that were identical or very similar to marks used by McDonald’s.
- After obtaining registrations, Marushin began selling hamburgers in May 1972 through vending machines while using the registered marks.
- McDonald’s sued Marushin, arguing that Marushin’s earlier registrations should not prevail because Japanese consumers already recognized the disputed marks as indicating McDonald’s.
- The Tokyo District Court dismissed McDonald’s claims, reasoning that the well-known-mark exception to Japan’s first-to-register approach protected only marks well known in Japan (and did not extend protection based on foreign fame or recognition that predated domestic operations).
- McDonald’s appealed to the Tokyo High Court.

## Issues

1. Whether the “McDonald’s” mark (and related marks) were sufficiently well known among Japanese consumers by July 1969 to warrant protection in Japan, despite McDonald’s lack of Japan operations at that time.
2. Whether Marushin’s registration and use of identical or very similar marks for hamburgers were likely to mislead consumers into believing an association with McDonald’s.
3. Whether Marushin could rely on Japan’s first-to-register rule and its earlier registrations to defeat McDonald’s claim based on prior public recognition of McDonald’s marks in Japan.

## Decision

- The Tokyo High Court rejected the Tokyo District Court’s narrow view of the well-known-mark doctrine and treated a mark’s actual recognition in Japan as the key inquiry, not whether the mark owner had begun operating domestically by the filing date.
- The court determined that McDonald’s name had achieved substantial public recognition in Japan by July 1969, such that Japanese consumers associated the mark with the American McDonald’s restaurant chain.
- The court held that Marushin’s use of the registered marks on hamburgers sold through vending machines was likely to create mistaken beliefs about source or sponsorship in light of McDonald’s recognition.
- The court limited the effect of Marushin’s earlier registrations and granted relief to prevent continued confusing use of the disputed marks on hamburgers.

## Legal Principles

- A foreign-origin mark can receive protection in Japan when it is, in fact, well known to Japanese consumers, even if the mark owner had not yet commenced Japan operations when another party filed similar marks.
- “Well known” status turns on recognition among relevant consumers in Japan; formal market entry is evidence of recognition but is not the sole path to protection.
- Japan’s first-to-register framework does not provide blanket shelter where a later user’s registration and use are likely to mislead consumers by trading on an already recognized mark.
- In assessing confusing similarity, courts focus on marketplace impression and the risk that consumers will assume a connection with the already recognized business.

## Conclusion

McDonald’s Co. (Japan) v. K.K. Marushin Foods holds that McDonald’s marks were protectable in Japan based on their actual recognition among Japanese consumers before McDonald’s began domestic operations, and that Marushin’s earlier registrations and vending-machine hamburger use of identical or very similar marks could be restrained because they were likely to cause mistaken beliefs about connection or source.


McDonald's Co. (Japan) v. K.K. Marushin Foods, 10 Mutai Zaisan Hanreishu 478 (1978)