Articles on Domestic

[Patent★★] Patent Administrative Litigation “Aminosilane” Case: A case in which the Intellectual Property High Court recognized novelty and inventive step on the grounds that the substance name was listed in the cited reference, even though at the time of priority date, it was not possible for a person skilled in the art to manufacture or obtain the substance without trial and error.

【Trademark act★】A case in which, with respect to a trademark determined to fall under Article 3,paragraph (1), item (iii) of the Trademark Act in the initial decision of refusal but subsequently determined to fall under item (vi) of the same paragraph in a trial decision, the court held that, although a separate notice of grounds for refusal under Article 55-2, paragraph (1) and Article 15-2 of the same Act was required as a general rule, and the trial proceedings not complying with this procedural requirement contain a defect (a violation of the law), such defect is not a ground for rescission as it is not found to affect the result of the trial decision. A case in which the court found that the trademark, “奇跡のラカンカ (kiseki-no rakanka),” written in horizontal direction (the “Trademark”), falls under Article 3, paragraph (1), item (vi) of the Trademark Act for “confectionery flavored with siraitia (other than fruit-based, vegetable-based, bean-based or nut-based)” etc. in Class 30 and the decision to maintain the trial decision is finalized.

【Trademark Act★】 A case in which the Intellectual Property High Court determined that the registered trademark, which the Defendant owns, for the designated goods of class 30 “Gummi Candy” and indicating the Japanese characters “地球グミ” [chikyu gumi] in standard characters falls under Article 4, Paragraph 1, Item 10 of the Trademark Act, holding that the term “地球グミ” of the cited mark is widely recognized among consumers of gummi candies, including young people, as indicating the gummi candies “Trolli”, “Planet Gummi” or “Blue Planet” related to the business of the Plaintiff, who is an importer and distributor in Japan, or of the foreign manufacturer, by the date of the examination decision at the latest (February 22, 2022), and that there were no arguments or evidence that the trademark fell under the same item as of December 16, 2021, the filing date of the application (Article 4, Paragraph 3 of the Trademark Act), and rescinded a JPO decision that dismissed the request for a trial for invalidation of a trademark registration.

【Trademark Act★】A case in which the Intellectual Property Hight Court determined as similar (falling under Article 4, Paragraph 1, item 11 of the Trademark Act) comparing the following cited trademark with the part “Ｏ！Ｏｉ” of the following registered trademark by separating and observing the main elements of a composite trademark, and revoked the JPO’s decision which determined as dissimilar (not falling under the above provision).

［Patent★★] Patent Administrative Litigation “Antigen Binding Proteins to Proprotein Convertase Subtilisin Kesin Type 9 (PCSK9)”: A case in which the Intellectual Property High Court rejected the logic that the support requirement is satisfied by reciting a particular effect in the claim concerning a functionally expressed reach-through claim unlike the final judgment in the previous case.

[Patent★] Patent Administrative Litigation “Marine Vessel” Case: The fourth case in which the Intellectual Property High Court recognizes an inventive step through a “Disclaimer”．

【Trademark Act★★】A case in which the Intellectual Property High Court upheld a decision for rejection on the application for a trademark consisting only of the combination of a shade of orange (RGB combination: R221, G103, B44) for the entire box and a shade of brown (RGB combination: R94, G55, B45) for its upper perimeter, denying the acquisition of the ability to distinguish one’s own and other goods and services through the use and advertising of packaging boxes (commonly known as “orange boxes”) bearing the trademark applied for in relation to the designated goods and services in general, including goods and services not using the trademark applied for, based on the ability of general consumers to recognize the goods or services, and maintaining in its decision that Article 3, Paragraph 2, of the Trademark Act was not applicable.

[Patent★] Patent Infringement Litigation “Massage Machine” Case: A case in which the decision of the Osaka District Court was reversed and the alleged infringing products were determined to be included in the technical scope of the patented invention. A case in which the court held that Article 102, Paragraph 2, of the Patent Act is applicable when the patentee’s products and the infringing products compete abroad. A case in which the court indicates the norm regarding the overlapping application of Article 102, Paragraph 3, of the Patent Act in relation to the portion of the presumption overturned by Article 102, Paragraph 2, of the Patent Act.

[Patent★] Patent Infringement Litigation “Bone Fracture Fixation System” Case: A case in which the Intellectual Property Court approved the application of Article 102, Paragraph 2, of the Patent Act based on the fact that a group company which is a wholly owned subsidiary of a common ultimate parent company embodies the patent right when said group company sells products.

【Unfair Competition Prevention Act★】A case in which the Intellectual Property High Court maintained the District Court’s decision, holding that the form of the Appellee’s goods has so-called special distinctiveness and is well-known, and thus falls under the category of well-known indications of goods, etc., and since the form of the Appellant’s goods 1 and 2 is similar to that of the Appellee’s goods in such a way that is likely to create confusion with the Appellee’s products, it is judged to fall under Article 2, paragraph 1, item 1 of the Unfair Competition Prevention Act.