Nakamura & Partners - Patent Trademark & Legal Affairs

[Patent★] Rescission in a Trial Decision to Maintain “Fulvestrant Formulation” Case: A case in which the Intellectual Property High Court recognized an inventive step, holding that the results of administering a composition identical to the patented invention to a breast cancer mouse model were published in the academic journal “Clinical Cancer Research” but there was no common general technical knowledge of administering that composition directly to humans by intramuscular injection.

[Patent★] Patent Infringement Litigation seeking injunction, etc. “Lyophilized Preparation Containing High-purity PTH and Method for Producing Same” Case: A case in which the Intellectual Property High Court recognized an inventive step on the ground that it was not permitted to extract a part of a configuration from an embodiment of a cited reference and recognize it as a cited invention; moreover, it was not easily conceivable to consider removing parts other than the part in question.

[Patent★★] Patent Infringement Litigation “Thermoplastic resin composition, resin-molded article and polarizer-protective film using the same, and method for producing resin-molded article” Case: A case in which the first court case in Japan to recognize fulfillment of the first requirement of the doctrine of equivalents for an invention with numerical limitations; however, a case in which the fifth requirement of the doctrine was denied, and thus infringement under the doctrine of equivalents was denied.

Strengthening of Regulations on Personal Import of Counterfeit Goods ～The regulations come into effect as of October 1, 2022～

Overview of Revised Design Act 2019 (Effective April 1, 2020)

Case of “Frozen Dessert with Container” (Design Right)

【Trademark Act★】 A case in which the Intellectual Property High Court maintained the JPO’s decision of refusal, holding that a trademark as applied for, relating to a three-dimensional form of a tooth model fixing plate with support stand for dental work, falls under Article 3, Paragraph 1, Item 3 of the Trademark Act and does not fall under Paragraph 2 of the same Article.

【Trademark Act★】 A case in which the Intellectual Property High Court held as follows: The court found that each of the Defendant’s indications posted on each webpage of this case does not fall under “advertisement materials … relating to … services” (Article 2, Paragraph 3, Item (viii) of the Trademark Act) and does not infringe on the function of source indicatior of the Plaintiff’s trademark. The court also found that, for the same reasons, the posting in question does not fall under Article 2, Paragraph 1, Item (i) or (ii) of the Unfair Competition Prevention Act. In conclusion, the court revoked the decision by the court of first instance in which infringement on the Plaintiff’s trademarks was found, and dismissed the Plaintiff’s claims.

【Trademark Act★★】 A case in which the Intellectual Property High Court revoked a refusal decision by the JPO that the trademark in this application fell under Article 4, Paragraph 1, Item 11 or 15 of the Trademark Act. The court held that, in accordance with the actual circumstances of transaction related to the designated goods in Class 16, “information magazines concerning parts and accessories used for modifying off-road vehicles”, the trademark in the application, which is a two-line composite trademark consisting of “Jimny Fan” in Latin letters and “ジムニーファン” in Japanese katakana characters as shown below, is not similar to cited trademark 1 below, which is a logo consisting of “Jimny” in Latin letters, or cited trademark 2 below, which is a two-line trademark consisting of “Jimny” in Latin letters and “ジムニー” in Japanese katakana characters, and does not fall under Article 4, Paragraph 1, Item 11 of the Trademark Act. Moreover, the court held that there is no risk of confusion with Suzuki Motor Corporation’s goods or services bearing the “Jimny” trademark and that it does not fall under Item 15 of the same Paragraph.

【Unfair Competition Prevention Act・Copyright Act★】A case in which the Intellectual Property High Court maintained the District Court’s decision, holding that although the form of the Plaintiff’s goods is recognized as indication of the Plaintiff’s goods, the form of the Plaintiff’s goods is not similar to that of Defendant’s goods; thus, manufacture and sale of the Defendant’s goods does not fall under Article 2, Paragraph 1, Item 1 or 2 of the Unfair Competition Prevention Act; furthermore, the form of the Plaintiff’s goods is not recognized as a copyrighted work, and therefore manufacture and sale of the Defendant’s goods does not fall under copyright infringement.

Outline of the Copyright Act as amended in 2023

【Copyright Act ★】A case in which, with respect to a slide named “ミニタコ (Minitako)” which is a type of playground equipment imitating the shape of an octopus produced by the appellant (the plaintiff in the first instance) for parks, the Court denied copyrightability thereof as either artistic or architectural work.

【Unfair Competition Prevention Act★】A case in which the Tokyo District Court held as follows: the court recognized the implied license granted by the Defendant to the Plaintiff; the court then found that acts by the Defendant, a local public entity, in making or disseminating statements to the effect that “the Plaintiff has produced and used the character named “Chiitan☆” without the Defendant’s permission, thereby infringing the Defendant’s copyright or constituting unfair Competition”, constitutes “the act of making or circulating false allegations” as prescribed in Article 2, Paragraph 1, Item 21 of the Unfair Competition Prevention Act, among other things; and the court partially upheld the Plaintiff’s claim based on Article 1, Paragraph 1 of the State Redress Act.

【Unfair Competition Prevention Act★】A case in which the Intellectual Property High Court dismissed the appeal of the Appellant (first-instance plaintiff: X), holding that the act of the Appellee (first-instance defendant: Y) of using indications in advertisements for the EH-HA0G model hair dryer (Y’s product), including “nanoe MOISTURE+ moisturizes hair 1.9 times better,” “Amount of moisture generated compared to a conventional device: 18 times,” “preventive effect against hair color fading,” “helping to prevent friction damage” (each of Y’s indications) does not fall under Article 2, Paragraph 1, Item 20 of the Unfair Competition Prevention Act.

【Tort law★】 A case in which the Appellant had been streaming a “shogi” (Japanese chess) tournament for a fee with permission from the Japan Shogi Association, and the Appellee, as an individual viewer, had been reproducing the moves in the shogi tournament on a board and simultaneously streaming the moves for free to shogi fans on YouTube and other platforms. The Osaka High Court reversed the decision of the first instance court, in which the court partially recognized the Appellant’s request for an injunction and damages on the grounds of the Appellee’s defamation of business (Article 2, Paragraph 2, Item 21 of the Unfair Competition Prevention Act), holding that the Appellant’s request for Google and others to remove the content on the grounds of copyright infringement with regard to the live streaming videos does not constitute “infringement of [the] business interests” (Article 3 and 4 of the Unfair Competition Prevention Act) of the Appellee

As of October 1, 2023, right holders of patent rights, utility model rights, design rights, and trade secrets can stop the counterfeit products through simplified identification procedures based on the revision of the Order for Enforcement of the Customs Act in March 2023.