Legal Updates

[Patent★] “Laminated Body of Sheet-like Objects（wet tissue）” Case: A case in which the court held that the products did not satisfy the claim recitation “approximately in a width of 1/2” when a deviation rate was larger than around 10% of “1/2” in consideration of the problem to be solved by the invention.

【Copyright★★】A case in which the Court found that the plaintiff’s work titled “Message” is recognized as having copyrightability mainly in that a phone receiver of a public telephone is fixed in the state of being taken off the hook and floating in water, and bubbles are generated from the receiver, and that the defendant’s work has commonalities with the plaintiff’s work in all of the parts that contain creative expressions, and the defendant’s work is made in dependence upon the plaintiff’s work; therefore, the defendant’s work is a reproduction or adaptation of the plaintiff’s work.

【Trademark Act★】A case in which the Court affirmed the Japan Patent Office’s decision which refused an application for a defensive mark registration based on a registered trademark (the “original registered trademark”), finding that the requirement of being “well known among consumers” stipulated in Article 64, Paragraph 1 of the Trademark Act for a defensive mark registration refers to the case where the original registered trademark is recognized nationwide among the relevant consumers of all or some of the designated goods of the original registered trademark as that indicating the designated goods pertaining to the business of the holder of the trademark right, and that the relevant consumers recognize the original registered trademark as having reached the level of being famous.

【Trademark Act ★】A case in which the Court found that the defendant’s marks containing the letter part of “MMPI” which was widely recognized among consumers as that referring to the “Minnesota Multiphasic Personality Inventory”, which is the questionnaire-based psychological testing developed by Hathaway and Mckinley for understanding character tendencies, or to the abbreviation of the testing, correspond to a trademark indicating, “in a common manner”, the “quality” of the designated service pertaining to the Trademark “MMPI”, or “psychological testing”, and that Article 26, Paragraph 1, Item 3 of the Trademark Act applies to the defendant’s marks and the effect of the right for the Trademark does not extend to the defendant marks.

Outline of 2020 Amendments to the Copyright Act and Act on Special Provisions for the Registration of a Computer Program Work (Supplement)

【Trademark Act ★】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, finding that since the position mark in question cannot be considered to contain distinctive character in its functional composition itself in light of attentiveness possessed by general consumers who are considered as consumers of the designated goods, the position mark in question corresponds to a trademark set forth in Article 3, Paragraph 1, Item 6 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.

【PATENT ★★】IP High Court Grand Panel Case No. 2019 (Ne) 10003; February 28, 2020 (Presiding Judge TAKABE) < Original Decision: Osaka District Court Case No. 2016 (Wa) 5345; November 29, 2018 >

【Trademark Act ★】A case in which the Court affirmed the Japan Patent Office’s decision which refused an application for registration of the mark consisting of the letter “I” and a heart shape placed horizontally side by side, with the letters “JAPAN” written underneath, finding that since the mark in question is one which cannot be recognized by consumers as pertaining to any person’s business, it falls under Article 3, Paragraph 1, Item 6 of the Trademark Act and cannot be registered.

【PATENT ★】IP High Court Case No. 2019 (Gyo-ke) 10026; December 11, 2019 (Presiding Judge TSURUOKA)

【Trademark Act ★】A case in which the Court affirmed the Japan Patent Office’s decision which refused an application for registration of the mark “TAKAHIROMIYASHITATheSoloist.”, finding that the mark in question consisting of common characters 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 the mark in question is not acknowledged that the “registration of which has been approved by the person concerned” under the same Item.