Legal Updates

【PATENT ★★】”PIT CONSTRUCTING MACHINE” Case: A case in which the IP High Court found that (i) since the purposes of a primary cited invention and a secondary cited invention are different, the structure of the primary cited invention needs to be changed correspondingly to the difference in the purposes in order to be combined with the secondary cited invention (there is a factor teaching away from combining the secondary cited invention with the primary cited invention), and (ii) a part of a structure of a cited invention is not allowed to be extracted independently (the limitations of specifying technical contents as generic concepts). The Court acknowledged an inventive step of the Present Invention.

【PATENT ★★】”Topical Ophthalmic Formulation for Treating Allergic Eye Diseases” Case: A case in which the IP High Court, to which the case was remanded by the Supreme Court, found that an inventive step was acknowledged because the Present Invention has an unpredictable and remarkable effect, although the previous lawsuit judgment which determined that the different feature (the use) in the Present Invention would have been easily conceivable became final and binding.

【Trademark★】A case in which, with respect to the use of a trademark consisting of the characters, “農口”, written vertically in cursive style or in block style, for the designated goods of “Japanese sake” by Noguchi Shuzo Co., Ltd. [農口酒造株式会社] (formerly Yamamoto Shuzo Honten K.K. [山本酒造本店株式会社]) (the “Defendant”) who is the right holder of the trademark consisting of the characters, “農口”, written in standard characters, the Court affirmed the Japan Patent Office’s decision which dismissed a request for a trial for rescission of the Defendant’s trademark registration filed by 農口尚彦 [Naohiko Noguchi], the Plaintiff, who has strong name recognition among Japanese sake enthusiasts and worked for the Defendant as chief sake brewer, based on a cited trademark consisting of the characters, “農口尚彦研究所”, written vertically in block style, denying the applicability of Article 51, Paragraph 1 of the Trademark Act which stipulates to the effect that where a trademark right holder intentionally uses a trademark similar to a registered trademark in a manner that causes confusion as to the source of or misleads as to the quality of the goods or services, the trademark registration may be cancelled.

【Copyright★★】A case in which the Court found that with respect to a performance of a musical work by a teacher during music lessons at a music school, a business operator which runs the music school is considered as the subject entity who gives the musical performance, however, with respect to a performance of a musical work at the music school by a student, the subject entity who gives the performance of the musical work is not the business operator, but the student.

【Unfair Competition Prevention Act ★★】 A case in which, with respect to a program which disables a function of software but not “Technological Restriction Measures” themselves, which is used together with the “Technological Restriction Measures” by means of encrypting images, for preventing decrypted images from being recorded and stored, and makes it possible to record, store, and view decrypted images by using a viewer other than the authorized viewer, the Supreme Court found that the program in question corresponds to a program that “interferes with the effectiveness of the Technological Restriction Measures”.

【Trademark★】A case in which the Court affirmed the Japan Patent Office’s decision which refused an application for registration of a trademark, which is a position mark consisting of the shape of a packaging container of a product, finding that since the position mark in question consists only of a mark that indicates, in a common manner, the shape of a package of goods etc., the position mark in question corresponds to a trademark set forth in Article 3, Paragraph 1, Item 3 of the Trademark Act, and does not correspond to a trademark which has acquired distinctiveness through use as set forth in Article 3, Paragraph 2 of the same Act.

【Trademark Act★】A case in which the Court affirmed the Japan Patent Office’s decision which dismissed a request for an invalidation trial filed by the plaintiff against the defendant’s registered trademark which consists of the letters “BULLPULU TAPIOCA” and figures, and whose designated goods are “dairy products containing tapioca” etc. in Class 29 (the “Defendant’s Registered Trademark”), finding that the Defendant’s Registered Trademark is not similar to the plaintiff’s registered trademark which consists of the letters “STARBUCKS COFFEE” and figures, and whose designated goods are “coffee beverage” etc. in Class 30 (the “Plaintiff’s Registered Trademark”); and therefore, the Defendant’s Registered Trademark does not fall under Article 4, Paragraph 1, Item 11 of the Trademark Act, and further, the Defendant’s Registered Trademark is not likely to cause confusion in connection with the goods or services pertaining to the plaintiff’s business; and therefore, the Defendant’s Registered Trademark does not fall under Article 4, Paragraph 1, Item 15 of the Trademark Act.

[Patent★] “System Operating Method” Case（CAPCOM Co., Ltd. v. Koei Tecmo Games Co., Ltd.）; A case in which the judgement of IP court held that indirect infringement of method invention (Article 101, paragraph (4) of the Patent Act) includes an article working the patent invention in combination with other articles. It is not necessary to possess the article actually.

【PATENT ★】Tokyo District Court Case No. 2018 (Wa) 13400; September 11, 2019 (Presiding Judge SATO)

【PATENT ★】IP High Court Case No. 2019 (Gyo-ke) 10095; March 12, 2020 (Presiding Judge TAKABE)