Articles on Domestic

【PATENT★】”BEAUTY INSTRUMENT” Patent Infringement Case: A case in which the Tokyo District Court found that the defendant’s product, even after a design change, constitutes patent infringement under the doctrine of equivalents.

【Trademark Act ★★】 A case in which the Court found, with respect to the trademark “HIRUDOMILD” consisting of common characters (the “Trademark”), that the Trademark is considered as a composite trademark composed of the parts “HIRUDO” and “MILD”, and when compared to the cited trademark “Hirudoid” (the “Cited Trademark”), the “HIRUDO” part is similar thereto (falls under Article 4, Paragraph 1, Item 11 of the Trademark Act), stating that it is permissible to determine the similarity by separating the parts “HIRUDO” and “MILD” and observing only the “HIRUDO” part as an essential part of the Trademark, and thus revoked a trial decision of the Japan Patent Office which determined the registration of the Trademark to be maintained on the grounds that the Trademark was not similar to the Cited Trademark (did not fall under Article 4, Paragraph 1, Item 1 of the Trademark Act).

【PATENT★】”GAME PROGRAM” Case (GREE): A case in which the IP High Court revoked a decision of the Japan Patent Office, finding that it is not appropriate to determine, without specifying the reasoning conducted by using known technology etc., that the invention in question could be easily conceived by a person skilled in the art because the constitution related to the difference is “mere arrangement for a game”.

【PATENT★】”CELECOXIB COMPOSITIONS” Case: A case in which the IP High Court recognized inventive step of a parameter invention, finding that the parameter could not be easily conceived by a person skilled in the art.

【Trademark Act★★】A case in which the Court found that a sound trademark containing the lyric “matsumotokiyoshi” does not corresponds to a trademark which contains the name of another person set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act, and revoked a decision of the Japan Patent Office which refused an application for registration of the sound trademark because it corresponds to a trademark containing the name of another person.

【Trademark Act★★】 A case in which the Court found that a composite trademark consisting of a figure part and a word part falls under Article 4, Paragraph 1, Item 11 of the Trademark Act, stating that it is permissible to determine the similarity of a composite trademark by separating a figure part and a word part, and observing only the word part as an essential part of the composite trademark.

【PATENT★★】”Information Storage Device” Patent Infringement Case (Ricoh v. Toner cartridge recycling companies): This is the first case in which the Tokyo District Court recognized the plaintiff’s acts as a violation of the Antimonopoly Act (Article 19 and Article 2, Paragraph 9, Item 6 of the Antimonopoly Act, and Paragraph 14 of the Designation of Unfair Trade Practices) and dismissed the plaintiff’s claims for injunction and compensation for damages on the grounds that said claims constitute an abuse of rights.

【Copyright Act ★】 A case in which the Court adopted the separability theory with respect to copyrightability of applied art, and denied, based on said theory, copyrightability of a posture keeping tool.

【PATENT ★】”VIRUS” Patent Infringement Case: A case in which the Tokyo District Court found to the effect that experiments or research conducted to obtain marketing approval for a new (original) medicinal product also correspond to the “working of the patented invention for experimental or research purposes” set forth in Article 69, Paragraph 1 of the Patent Act. The right of a prior user was acknowledged.

【Trademark Act ★】A case in which the Court revoked a decision of the Japan Patent Office which refused an application for registration of the trademark “空調服”, consisting of common Japanese characters, which designates Class 25, “working clothes, shirts and blouson having ventilation function” as its designated goods, by finding that the trademark in question corresponds to a “mark consisting solely of a mark indicating, in a common manner, the quality…of goods” set forth in Article 3, Paragraph 1, Item 3 of the Trademark Act; however, the trademark in question corresponds to a “trademark by which, as a result of the use thereof, consumers are able to recognize the goods…as those pertaining to a business of a particular person” set forth in Article 3, Paragraph 2 of the same Act.