Defendant’s Goods
Defendant’s Goods 1
Defendant’s Goods 2
1. Concerning whether the form of the Plaintiff’s goods falls under Article 2, Paragraph 1, Item 1 or 2 of the Unfair Competition Prevention Act “indication of goods, etc.”
If the form of the goods has a distinctive feature that objectively distinguishes the goods from other similar goods (distinctiveness), and if the goods with the form become well known to consumers as indicating origin from a specific business (well known characteristics), through the continuous and exclusive use by a specific business for a long period of time, or as the result of extremely strong advertising or explosive sales results, etc., the form of the goods may acquire an origin-indicating function and in such a case, the form of goods falls under Article 2, Paragraph 1, Item 1 or 2 of the Unfair Competition Prevention Act.
(2) Concerning “Distinctiveness”
The overall form of the Plaintiff’s goods (being: two uprights, one on each side, two side beams, a seat board and a footrest board fixed between the two side uprights and parallel to the floor (Feature 1); the side uprights rise diagonally from the floor surface when viewed from the left or right, and the bottom edge of each side upright only connects to the diagonally cut front-facing end of each side beam and directly touches the floor surface, forming an approximate L-shape with an acute angle of approximately 66 degrees between each side upright and side beam (Feature 2); the seat board and the footrest board are both fitted and fixed in place along grooves formed on the inside of each side upright (Feature 3) combined with the feature of each side upright and side beam being in a straight line) constituted particularly distinctive features (the “distinctive feature”) that distinguished the Plaintiff’s goods from similar goods of other companies from the time the Plaintiff’s goods became available in Japan until the time the Defendant’s goods became available.
(3) Concerning “Well-known Characteristics”
The prominent feature of the Plaintiff’s goods was that it had become “well-known” as goods that indicated the business of the Plaintiff by the time the Defendant’s goods became available.
2. Concerning Similarity of the forms of the Plaintiff’s Goods and the Defendant’s Goods 1 and 2
Judgment on whether or not the form of each of the Defendant’s goods is similar to the indication of the Plaintiff’s goods or business is appropriate based on whether or not, under the actual circumstances of trade transactions, there is a risk that traders or consumers would recognize from the impression, memory, or association or the like based on the appearance, pronunciation, or concept of the two indications, that the two indications are similar in their entireties (Supreme Court Decision of October 7, 1983(Case No.658 (O) 1982)).
(2) Application to this case
Each of the Defendant’s goods does not have the characteristics of Feature 3 of the Plaintiff’s goods, since the Defendant’s goods have no grooves formed on the inside of each side upright, but instead the rear part of each side upright has numerous circular holes that combine with fixing members which screw into place, with support members to support the seat board and footrest board between the side uprights, so that a fixing member fixes a support member to the side uprights in a suspended position between the side uprights, and by aligning the fixing members with the holes and closing the screw component of each fixing member, the support members and fixing members clamp the side uprights front and back, fixing the support members to the side uprights firmly (Configuration f).
Therefore, under the actual circumstances of a trade transaction, it cannot be said there is a risk that each of the Defendant’s goods would be recognized by traders or consumers as similar in their entireties to the Plaintiff’s goods from the impression, memory, or association or the like, based on the appearance, pronunciation, or concept of the two indications.
3. Concerning whether or not the form of the Plaintiff’s goods is a copyrighted work
It is reasonable to determine that the creative expression of the shape of a practical product such as the Plaintiff’s goods is recognized as a copyrighted work only when it includes a part that becomes an object of independent aesthetic appreciation apart from its practical function, or when it is recognized that the practical product was created solely for the purpose of aesthetic appreciation.
(2) Application to this case
The prominent Features 1 to 3 of the Plaintiff’s goods are all features that were selected from among multiple options available in order to achieve the practical function of a height-adjustable chair for children. As a whole, these features also realize the function of a chair. Even if the Plaintiff’s goods have distinctive features that evoke aesthetic feelings as a creative expression of a chair, it cannot be said that the Plaintiff’s goods have any part that can be appreciated for its aesthetic value independent of the practical function as a chair. In light of the manufacturing and sales situation, it cannot be acknowledged that the Plaintiff’s goods were created solely for the purpose of aesthetic appreciation.
Furthermore, even if the Plaintiff’s goods are considered to have a level of creativity that could, as stated above, be the subject of independent aesthetic appreciation in terms of its distinctive features, each of the Defendant’s products does not have similar distinctive features, so that the impression is different from the sophisticated, simple, and sharp impression expressed by the Plaintiff’s goods in its straight-line form. Therefore, it is not possible to perceive directly the essential features expressed in the Plaintiff’s goods from each of the Defendant’s goods.
1. Concerning Summary 1 of the Judgment
In order to fall under “Indication of goods or business” described in Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act, so-called special distinctiveness and well-known characteristics are required, as indicated in recent Intellectual Property High Court cases and many other recent court cases, such as the Intellectual Property High Court, December 26, 2012 (Pair Loupe) case, the Intellectual Property High Court, April 14, 2015 (TRIPP TRAPP II) case, the Intellectual Property High Court, July 27, 2016 (Edison’s Chopsticks) case, the Intellectual Property High Court, February 23, 2017 (Water Intake Pipe) case, the Intellectual Property High Court, February 28, 2018 (Irregular Packing) case, the Intellectual Property High Court, March 29, 2018 (Unit Shelf) case, the Intellectual Property High Court October 4, 2023 (Inhaler) case, or the Intellectual Property High Court, November 9, 2023 (Dr. Martens) case. The Summary of Judgment 1 (1) is in line with previous court cases.
In this context, in the Summary of Judgment 1 (2) and (3), the court recognized for the first time that the form of the Plaintiff’s goods has special distinctiveness and well-known characteristics including not only Features 1 and 2, which the Plaintiff asserted, but also Feature 3, which the Defendant asserted. The court then recognized that the form of the Plaintiff’s goods falls under “Indication of goods or business” described in Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act. In this sense, such a recognition in the Summary of Judgment 1 (2) and (3) can be said to be a premise for determining that the forms of goods for both the Plaintiff and the Defendant are not similar as being “Indication of goods or business” described in Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act.
2. Concerning Summary 2 of the Judgment
This case is one of the very few court cases in which general criteria for judicial precedent (the Supreme Court, October 7, 1983 (Nippon Woman Power) case) for determining similarity of “Indication of goods or business” as described in Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act is explicitly applied in judging the similarity of the forms of the Plaintiff’s goods and the Defendant’s goods. There are other cases, such as the Tokyo District Court decision on April 17, 2014, which was upheld in the Intellectual High Court decision on April 14, 2015 (TRIPP TRAPP II Case).
In Summary 2 (2), the court denied the similarity between the forms of the Plaintiff’s goods and the Defendant’s goods since the Defendant’s goods have the Configuration f described above, but do not have prominent Feature 3 of the Plaintiff’s goods.
In many court cases in which the applicability of Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act was an issue, not many cases adopted the same judgment method. The Tokyo District Court, April 27, 1992 (Measurement Microscope) case, the Tokyo High Court, December 19, 2001 (MAGIC CUBE) case, and the Intellectual Property High Court, April 14, 2015 (TRIPP TRAPP II) case are examples with similar judgment methods. In particular, in the Intellectual Property High Court, April 14, 2015 (TRIPP TRAPP II) case, the court judged “in order to fall under unfair competition as described in Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act, it is necessary that the form of the Appellant’s goods and the form of the Appellee’s goods be similar in the point which is recognized as special distinctiveness in features of form of the Appellant’s goods which the Appellant’s asserts.”
3. Concerning Summary 3 of the Judgment
Concerning the criteria for determining whether or not a work of applied art is a copyrighted work, recent Intellectual Property High Court decisions have adopted the separability theory (the Intellectual Property High Court August 28, 2014 (Fashion Show) case) or the unlimited theory (the Intellectual Property High Court April 14, 2015 (TRIPP TRAPP II) case), which both differ from the stage theory-based additional requirements theory. In later lower court cases, the separability theory became mainstream, particularly in Tokyo District Court cases. Although there was a case in which the Intellectual Property High Court adopted the separability theory for whether or not the work in question was “a creative expression of ideas or emotions”, as stipulated in the first sentence of Article 2 Paragraph 1 of the Copyright Act (the Intellectual Property High Court December 8, 2021 (No.10044 (Ne) 2021) (Octopus Slide) case), and the same as in another court case (the Intellectual Property High Court June 29, 2021 (No.10024 (Ne) 2021) (TRIPP TRAPP III) case), the first half of Summary 3 (1) of the Judgment is understood to have adopted the separability theory for whether or not the work “falls within the scope of art…”, as stated in the second half of the same item. On the other hand, although it is unclear whether the issues of the separability theory, such as the method of judgment and other requirements, were considered or whether some court cases that did not necessarily follow the separability theory were considered (the Tokyo District Court case of January 29, 2020, in which the court focused on whether or not “the work has aesthetic characteristics that can be appreciated aesthetically” (Lighting Shade Case)), in the second half of Summary 3 (1) of the Judgment, the court laid out separate criteria for judging whether the purpose of production is solely for aesthetic appreciation, without considering separability.
In Summary 3 (2), with regard to the form of the Plaintiff’s goods, the court found that each and all of the distinctive Features 1 through 3 are practical and functional, and based on such finding, the court applied the judgment criteria in the first half of Summary 3 (1) and applied the judgment criteria in the second half in light of the manufacturing and sales situation of the Plaintiff’s goods to deny copyrightability of the work.
In this regard, Summary 3 (2) denied both the unlimited theory and the conclusion of the Intellectual Property High Court decision of April 14, 2015 (TRIPP TRAPP II Case), which affirmed the copyrightability of the shape of the form of the Plaintiff’s goods, as had other Intellectual Property High Court decisions (the Intellectual Property High Court decision of June 29, 2021 (Case No. 100024 (Ne) 2021) (TRIPP TRAPP III Case)). Moreover, Summary 3 (2) is understood to be a hypothetical judgment in a case where, should the copyrightability of the form of the Plaintiff’s goods be affirmed, it is judged that the form of each of the Defendant’s goods is not substantially identical (reproduction) or similar (adaptation) in terms of expression to the form of the Plaintiff’s goods, because the Defendant’s goods has the afore-mentioned Composition f and does not have the afore-mentioned prominent Feature 3.
【Keywords】Indication of goods or business with regard to Form of Goods, Special Distinctiveness of Form of Goods, Well-known Characteristics of Form of Goods, Applicability to Well-known Indications of Goods, Similarity in Goods Form, Applicability to Create Confusion, “TRIPP TRAPP”, “トリップトラップ”, “Choice Kids”
※ The contents of this article are intended to convey general information only and cannot be understood as providing any legal advice.
Kei IIDA (Writer)
Attorney at Law & Patent Attorney (Daini Tokyo Bar Association)
Contact information for inquiries: k_iida☆nakapat.gr.jp (Please replace ☆ with @.)