Articles on Domestic

【Trademark Act ★】A Case in which the Intellectual Property High Court partially rescinded a decision made by the Japanese Patent Office (the “JPO Decision”), which partially maintained a request for a trial for trademark invalidation, on the ground that the registered trademark which consists of words “Scrum Master” written horizontally in standard characters is a necessary and appropriate indication for the transaction as describing the quality of the designated services such as “teaching of art, sports or knowledge, education and training, planning, operation or conducting of qualifying examination, planning, operation or holding of seminars” in Class 41 and is generally recognized as indicating the quality of services when used for such designated services by traders and consumers and therefore falls under Article 3, para.1, item 3 of the Trademark Act.

【Trademark Act ★】The following registered trademark, which designates “T-shirts and hats” in Class 25, is not similar to the following cited trademark and has not been registered for “unfair purposes”. Therefore, the portion of the plaintiff’s request for invalidation trial based on Article 4(1)(xv) of the Trademark Act is dismissed (Article 47(1) of the Trademark Act) due to the passing of the period of exclusion. The trial court’s decision to dismiss the portion based on Article 4(1)(vii) of the Trademark Act was not erroneous, and the decision of the invalidation trial was affirmed.

[Patent★] “X-ray Fluoroscopic Imaging Apparatus”Case: A case in which the Intellectual Property High Court emphasized that the present invention newly took up a task in question as the problem to be solved, and denied easily-conceived property (recognized inventive step) on the ground of the difference between the problem to be solved by the present invention and the problem to be solved by the main cited invention.

[Patent★] Patent Infringement Appellate Court Case demand for injunction: A Case in which, concerning the interpretation of the claim language of a plurality of “chambers”, the Intellectual Property High Court found that the defendant’s products do not satisfy the constituent elements of the patented invention of a product with the limitation “can be communicated with each other”. On the other hand, the defendant’s methods satisfy the constituent elements of the patented invention of a method without limitation. A Case in which the Intellectual Property High Court reversed the prior instance judgement which found that both defendant’s products and defendant’s methods did not satisfy the constituent elements of the patented invention.

[Patent★★] A Case in which the Intellectual Property Hight Court acknowledged joint direct infringement even if some part of the method invention was worked by another entity.

[Patent★] “Vinylidene chloride system resin wrap film” Patent infringement Case: A case in which the Tokyo District Court acknowledged inventive step by denying the ease of focusing on the “parameter” when it was not known whether the physical property value was satisfied even if the composition value was satisfied. Moreover, the Tokyo District Court recognized the support requirement and found that the defendant’s products fall within the technical scope of the invention.

【Trademark Act ★】A case in which the Court maintained the Japan Patent Office’s decision of refusal of a trademark application on the ground that the trademark which consists of the words “睡眠コンサルタント” written horizontally is a necessary and appropriate indication for the transaction as describing the quality of the designated services such as “teaching of art, sports or knowledge, planning, operation or holding of seminars, provision of electronic publications, production of books,” in Class 41, and is generally recognized as indicating the quality of services when used for such designated services by traders and consumers, and therefore falls under Article 3, para.1, item 3 of the Trademark Act

Amendment to Limit the Scope of the Claim During the Proceedings and Application of the Doctrine of Equivalence (International Trend in Case Law and Overview of Japanese Case Law)

【PATENT★】”LEARNING IMPLEMENT” Appeal Case: A case in which the Court found that the plaintiff’s (appellant’s) product merely produces an additional effect in addition to producing the effect of the patented invention, and acknowledged the existence of the second requirement of the doctrine of equivalents.

[Patent★★] “LINE Furufuru” Patent Infringement Case: ① A case in which the Tokyo District Court recognized the invention step on the following ground. The court denied the defendant’s logic that only the “GPS search function” should be extracted from the secondary reference and applied to the primary reference. Thus, the court recognized a hindrance to apply the “GPS search function” to the primary reference. ② A case in which the Court found that the defendant’s services which were not examined at the phase for examination on infringement were not subject to the compensation for damages; the defendant’s sales which were regarded as remotely related to the “Furufuru” function have no causal relationship, thus, were not subject to compensation for damages under Article 102, paragraph (3) of the Patent Act.