Legal Updates

【Trademark Act★】 A case in which the Intellectual Property High Court maintained the JPO’s decision of refusal, holding that a trademark as applied for, relating to a three-dimensional form of a tooth model fixing plate with support stand for dental work, falls under Article 3, Paragraph 1, Item 3 of the Trademark Act and does not fall under Paragraph 2 of the same Article.

【Unfair Competition Prevention Act★★】A case in which the Nagoya District Court, using a judgment method similar to a filtration test, denied that technical information disclosed by an employee after abstracting and generalizing the information was of a confidential nature, which is a requirement of trade secrets, and handed down a full acquittal.

【Trademark Act★】 A case in which the Intellectual Property High Court held as follows: The court found that each of the Defendant’s indications posted on each webpage of this case does not fall under “advertisement materials … relating to … services” (Article 2, Paragraph 3, Item (viii) of the Trademark Act) and does not infringe on the function of source indicatior of the Plaintiff’s trademark. The court also found that, for the same reasons, the posting in question does not fall under Article 2, Paragraph 1, Item (i) or (ii) of the Unfair Competition Prevention Act. In conclusion, the court revoked the decision by the court of first instance in which infringement on the Plaintiff’s trademarks was found, and dismissed the Plaintiff’s claims.

[Patent★] Patent Administrative Litigation “Training Apparatus” Case: A case in which the Intellectual Property High Court recognized an inventive step on the ground that it was not permitted to extract a part of a configuration from an embodiment of a cited reference and recognize it as a cited invention; moreover, it was not easily conceivable to consider removing parts other than the part in question.

【Unfair Competition Prevention Act★★】A case in which the Sapporo High Court denied the confidential nature of information recorded in an electronic ledger of customers, then overturned the District Court conviction and handed down a full acquittal.

【Trademark Act★★】 A case in which the Intellectual Property High Court revoked a refusal decision by the JPO that the trademark in this application fell under Article 4, Paragraph 1, Item 11 or 15 of the Trademark Act. The court held that, in accordance with the actual circumstances of transaction related to the designated goods in Class 16, “information magazines concerning parts and accessories used for modifying off-road vehicles”, the trademark in the application, which is a two-line composite trademark consisting of “Jimny Fan” in Latin letters and “ジムニーファン” in Japanese katakana characters as shown below, is not similar to cited trademark 1 below, which is a logo consisting of “Jimny” in Latin letters, or cited trademark 2 below, which is a two-line trademark consisting of “Jimny” in Latin letters and “ジムニー” in Japanese katakana characters, and does not fall under Article 4, Paragraph 1, Item 11 of the Trademark Act. Moreover, the court held that there is no risk of confusion with Suzuki Motor Corporation’s goods or services bearing the “Jimny” trademark and that it does not fall under Item 15 of the same Paragraph.

[Patent★] Patent Administrative Litigation “Gas-System Extinguishment Facility”: A case in which the Intellectual Property High Court reversed a JPO decision on patent opposition in which a sub-citation was excessively abstracted (high-level conceptualization), and recognized inventive step.

[Patent★] Patent Infringement Litigation “A composition containing 2,3-dichloro-1,1,1-trifluoropropane, 2-chloro-1,1,1-trifluoropropene, 2-chloro-1,1,1, 2-tetrafluoropropane, or 2,3,3,3-tetrafluoropropene” Case: A case in which the court held that for inventions that identify impurities or byproducts for which there is no description of effects in the specification, support requirements were violated due to the lack of a description of the issue, etc.

【Unfair Competition Prevention Act・Copyright Act★】A case in which the Intellectual Property High Court maintained the District Court’s decision, holding that although the form of the Plaintiff’s goods is recognized as indication of the Plaintiff’s goods, the form of the Plaintiff’s goods is not similar to that of Defendant’s goods; thus, manufacture and sale of the Defendant’s goods does not fall under Article 2, Paragraph 1, Item 1 or 2 of the Unfair Competition Prevention Act; furthermore, the form of the Plaintiff’s goods is not recognized as a copyrighted work, and therefore manufacture and sale of the Defendant’s goods does not fall under copyright infringement.

[Patent★★] Patent Infringement Litigation “5-aminolevulinic acid phosphate salt” Case: A case in which the Tokyo District Court denied the eligibility of the cited invention yet approved the novelty of the present invention because the substance name of the invention was mentioned in the cited document, even though it was not feasible for a person skilled in the art at the priority date to carry out the invention without trial and error.