Legal Updates

＜Osaka District Court＞ 2010 (Wa) 4770 (December 16, 2010) “Long-handled scissors” Case

Similarity of design (Infringement case) (Conclusion) Novelty should be found. (Applicant won.) The essential features of the registered design are the “shape of the blade part as well as the ratio of the length of the fixed coupling part or the handle part in the entire length”. The design of the Defendant’s Design is identical […]

＜IP High Court＞ 2010 (Ne) 10014 (March 28, 2011) “Covers for underground structure (manhole)” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s designs are not Similar to the registered design. (Design right owner lost.) In judging whether designs are similar or dissimilar, it is necessary to observe the design as a whole. In this case, it is necessary to grasp the part of the design that is most likely to […]

＜Osaka District Court＞2010 (Wa) 9966 (September 15, 2011) “Manicure nail file” Case

Damages caluculation (Article 39(1)) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) Article 39(1) of the Design Act (Lost profits based on a right holder’s profit) (i) Price of the defendant’s product was much cheaper than the plaintiff’s product. (plaintiff’s product: 500 yen, defendant’s product: 100 yen) (2) Contribution […]

【PATENT★】”LEARNING IMPLEMENT” Case: A case in which the Court found that the plaintiff’s product constitutes patent infringement under the doctrine of equivalents and dismissed the plaintiff’s claim for confirmation of absence of right to demand an injunction.

―Osaka District Court Case No. 2019 (Wa) 3273 of March 25, 2021 (Presiding Judge Masaki SUGIURA)   ◆Main Text of the case   1. Patent Claim “A learning implement…includes…a picture selection means for selecting picture data of one set of pictures from picture data of a plurality of sets of pictures recoded on the picture recording […]

＜IP High Court＞ 2011 (Gyo-Ke) 10239 (December 15, 2011) “Release paper for printing” Case

Easiness of Creation (Article 3(2) of the Design Act) (Conclusion) A person ordinarily skilled in the art could have easily created based on the cited design. (Applicant lost.) Article 3(2) of the Design Act questions the novelty and/or originality of the conception of the design from the standpoint of a person ordinarily skilled in the […]

＜IP High Court＞ 2011 (Gyo-Ke) 10240 (December 15, 2011) “Release paper for printing” Case

Easiness of Creation (Article 3(2) of the Design Act) (Conclusion) A person ordinarily skilled in the art could have easily created based on the cited design. (Applicant lost.) Article 3(2) of the Design Act questions the novelty and/or originality of the conception of the design from the standpoint of a person ordinarily skilled in the […]

＜Osaka District Court＞ 2010 (Wa) 13746 (December 15, 2011) “Water cleaner” Case

Damages caluculation (Article 39(2) and Article 39(3)) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) *The design of Defendant’s Water cleaner and the resistered design are identical, and there was no dispute. Article 39(2) of the Design Act (Lost profits based on an infringer’s profit) Since the product is […]

＜Osaka District Court＞ 2011 (Wa) 9476 (May 24, 2012) “Angle adjuster” Case (Partial Design)

Similarity of design (Infringement case) (Conclusion) Defendant’s design 2-1 and 2-2 are Similar to the registered design. (Design right owner won.) / Defendant’s design 2-3 is NOT Similar to the registered design. (Design right owner lost.) (1) Defendant’s Angle adjuster 2-1 is similar. (2) Defendant’s Angle adjuster 2-2 is similar. (The excised colored red portion […]

＜Osaka District Court＞ 2010 (Wa) 805 (March 15, 2012) “Tile carpet” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is Similar to the registered design. (Design right owner won.) Carpet tile is an interior product that is laid on the floor for interior decoration. For this reason, in the course of transactions, differences in patterns, textures, colors, etc., are emphasized in catalogs, etc., by showing small […]

＜Osaka District Court＞ 2011 (Wa) 9600 (June 21, 2012) “Portable thermos” Case

Similarity of design (Infringement case)   (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) ⇒Appeal Court<Osaka High Court> 2012 (Ne) 2216 judged the same. The plaintiff asserts that the fact that the defendant’s design has almost no unevenness on the sides does not make the two designs completely different […]

＜IP High Court＞ 2012 (Gyo-ke) 10042 (July 18, 2012) “Tires for two-wheeled vehicles” Case

Novelty (related to Prior designs) (Conclusion) Novelty should be found. (Applicant won.) The three grooves in the applied design have straight edges, and the width of the grooves tapers toward the ends. This gives the viewer an aesthetic impression that the grooves are composed of thin straight lines with a sharp point at one end, […]

＜Tokyo District Court＞ 2011 (Wa) 10705 (June 28, 2012) “Ventilation opening” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) All of the essential parts, i.e., (1) the ratio of the rattle part to the water reservoir part is approximately 7 to 3 in the resistered design, whereas it is approximately 8 to 2 in the […]

＜Osaka District Court＞ 2010 (Wa) 16066 (September 20, 2012) “Hair Dryer” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) Although the registered design and Defendant’s Hair dryer has common pattern in the shape of the shade portion, the essential part of the registered design is not limited to the shape of the shade portion, and […]

＜IP High Court＞ 2011 (Gyo-Ke) 10159 (November 30, 2011) “Contact lens” Case

Novelty (related to Prior designs) (Conclusion) Novelty should be found. (Applicant won.)   In comparison with the human eye, the applied design has an aesthetic that gives more natural, harmonious, and gentle impression. In comparison with the human eye, the Prior design has an aesthetic that gives an artificial and mechanical impression by discarding naturalness. […]

[Patent★★] “Interleaving Paper for Glass Plates” Case: A case in which the court deemed that the invention of the prior application falls under an “invention” which is appropriate material as a cited invention (Article 29-2 of the Patent Act). If an invention lacks concreteness, or technical content of an invention is insufficiently disclosed even taking into consideration the common general technical knowledge of a person ordinarily skilled in the art, it does not fall under the “invention” and does not have an effect of excluding the later application provided for in this Article

Intellectual High Court Case No. 2020 (Gyo-ke 10005) on November 10, 2020 (Presiding Judge TAKABE)   Overview   1. The scope of the claim Interleaving paper for glass plates, which is produced from wood pulp as a raw material, wherein an amount of silicone contained in the paper is 0.5 ppm or less　relative to absolute […]

【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.

―Tokyo District Court Case No. 2017 (Wa) 32839 of March 19, 2020 (Presiding Judge Koichi TANAKA)   ◆Main text of the case   1. An excerpt from the Judgment (doctrine of equivalents) [Regarding the first and second requirements for equivalence] …it should be said that the technical idea (the principles of the solution of the […]

【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).

Intellectual Property High Court Decision of September 21, 2021 (Case No. 2021 [Gyo-Ke] 10029―Presiding Judge Tomonari HONDA)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding criteria for determining whether it is permitted to separate elements of a composite trademark and observe its essential part With regard to a composite trademark […]

【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”.

―IP High Court Case No. 2019 (Gyo-ke) 10085 of June 4, 2020 (Presiding Judge TSURUOKA)   ◆Main text of the case   1. An excerpt from the Judgment When compared with the Present Invention, replenishment of a card in the Cited Invention…is different from that in the Present Invention in the destination of the card […]

【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.

―IP High Court Case No. 2019 (Gyo-ke) 10137 of October 28, 2020 (Presiding Judge OTAKA)   ◆Main text of the case   1. Patent Claim (Patent No. 3563036) “A pharmaceutical composition comprising one or more orally deliverable dose units, each comprising particulate celecoxib in an amount of about 10 mg to about 1000 mg …having […]

【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.

The Intellectual Property High Court Decision of August 30, 2021 (Case No. 2020 [Gyo-Ke] 10126―Presiding Judge Ichiro OTAKA)   ◆Main text of the case   【Summary of the Judgment】 Regarding the meaning of the “name of another person” set forth in Article 4, Paragraph 1, Item 8 of the Trademark Act Even if a 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.

The Intellectual Property High Court Decision of July 29, 2021 (Case No. 2021 [Gyo-Ke] 10026―Presiding Judge Yoshiyuki MORI)   ◆Main text of the case   【Summary of the Judgment】 Regarding criteria etc. for determining whether it is permitted to separate elements of a composite trademark and observe its essential part   With regard to a […]

【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.

Tokyo District Court Case No. 2017 (Wa) 40337 of July 22, 2020 (Presiding Judge SATO)     1.　An excerpt from the Judgment “Article 21 of the Antimonopoly Act provides that the ‘provisions of this Act do not apply to acts found to constitute an exercise of rights under the…Patent Act…’ However, it is understood that […]

【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.

The Intellectual Property High Court Decision of June 29, 2021 (Case No. 2021 (Ne) 10024 — Presiding Judge Yoshiyuki MORI)   ◆Main text of the case   【Summary of the Judgment】 1.　Regarding copyrightability of applied art Although there are no express provisions in the Copyright Act, it is construed that even an industrial product for […]

【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.

―Tokyo District Court Case No. 2019 (Wa) 1409 of July 22, 2020 (Presiding Judge SATO)     (1)  Article 69, Paragraph 1 of the Patent Act It is provided that: “A patent right is not effective against the working of the patented invention for experimental or research purposes.”   (2)  The Supreme Court Decision of […]

＜Osaka District Court＞ 2010 (Wa) 16066(September 20, 2012) “Hair Dryer” Case

Similarity of design (Infringement case)  (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) Although the registered design and Defendant’s Hair dryer has common pattern in the shape of the shade portion, the essential part of the registered design is not limited to the shape of the shade portion, and […]

＜Osaka District Court＞ 2011 (Wa) 3361(November 8, 2012) “Cubic Face Mask” Case

Damages caluculation (partial design)   (1) Average royalty rate for textile products is 6.1%. (2) Plaintiff invested time and effort in developing this design. (3) This design contributed considerably to the sales of the Defendant’s products. (4) There is a perfect competitive relationship between Plaintiff and Defendant, as a result, it was not assumed that […]

＜Osaka District Court＞ 2012 (Gyo-ke) 10105, 10106, 10107, 10108, 10109, 10110(November 26, 2012) “Artificial Tooth” Case

Novelty (related to prior arts) (Conclusion) Novelty should be found. (Design right owner won.) Since the concumers of artificial teeth are specialists like dentists, and they select artificial teeth by noticing the difference in small form, such a small difference should be also recognized by them. ⇒Not similar. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan […]

＜Osaka District Court＞ 2011 (Wa) 529＞(January 22, 2013) “Discharge Lamp” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) The registered design intensifies the regular and static impression because the first barrel lower surface is line symmetric. On the other hand, Defendant’s Discharge lamp intensifies the irregular and dynamical impression because the first barrel lower […]

＜Osaka District Court＞ 2012 (Wa) 4224 = ＜Osaka High Court＞ 2013 (Ne) 1136(March 7, 2013) “Slot Machine Partition” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) Even if a registered design contains the same components as those of prior art, it should not immediately be interpreted as not becoming a essential part of the registered design, because that part may attract the […]

＜Tokyo District Court＞ 2012 (Wa) 3162(April 19, 2013) “Sandal” Case

Similarity of design (Infringement case)  (Conclusion) Defendant’s design is similar to the registered design. (Design right owner won.) <Difference Point 1 (color)> The registered designs does not limit the color. <Difference point 2 (number of disc-shaped members)> The number of rows in the vertical and horizontal are the same. Only the difference is the number […]

＜Osaka District Court＞ 2012 (Wa) 6771(August 22, 2013) “Tomb” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) Defendant’s tomb and the registered design are different in the essential part and rectangular portion. The parts in which they are similar was generally equipped for publickly known Turtleback tombs. ⇒Non-infringement <Writer: Hideki Takaishi (Attorney-at-law licensed […]

＜Osaka District Court＞ 2011 (Wa) 14336(September 26, 2013) “Indicator Light for Game Machines” Case

Similarity of design (Infringement case) (Partial Design right) (Conclusion) Defendant’s design is similar to the registered design. (Design right owner won.) The Design right holder had many partial design rights for “Indicator light for game machines,” and enforced several ones of them. Other designs were judged invalid, but this resistered (partial) design was admitted valid […]

＜Tokyo District Court＞ 2013 (Wa) 12233(January 23, 2014) “Package for Disc Packaging” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) Because all parts other than the number of the bank-shaped support were publicly known, this number is the essential part of the registered design. The resistered design has 4 bank-shaped support. The Defendant’s Package has 6 […]

＜IP High Court＞ 2013 (Gyo-Ke) 10287(March 27, 2014) “Cell Phone” Case

Novelty (related to prior arts) (Conclusion) Novelty should be found. (Applicant won.)     The applied design gives a generally rounded, soft impression. On the other hand. the prior art gives a sharper and flatter impression as a whole compared with the applied design. ⇒ Not similar. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and […]

＜Osaka District Court＞ 2013 (Wa) 2462(April 21, 2014) “Panel for Construction Use” Case

Prior Use Right (Design Act Article 29) (Conclusion) Prior use right was admitted for a partial design . (Design right owner lost.) Defendant ordered and received the manufacture of the parts (mouthpiece) of the Defendant’s Panel and manufactured/sold it afterward. Therefore, at the latest on the date of receipt of the parts (mouthpiece), Defendant had […]

＜Tokyo District Court＞ 2013(Wa)6920(May 29, 2014) “Dental Implant” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) *This judgment indicated the logic how to identify the “essential part of the design” in a registered design right. Considering nature, purpose, application, function, and usage of the dental implant, the essential part of the registered […]

＜IP High Court＞ 2016 (Gyo-Ke) 10034(September 21, 2016) “Frozen Dessert with Cap” Case

“One application per design” (Design Act Article 7) (Conclusion) Admitted as “One application per design” (Design right owner won.) In order to comply with the requirements of Design Act Article 7 (“One application per design”), the design must be one product in one form. “Frozen dessert with Cap” is considered to be composed mainly of […]

＜IP High Court＞ 2016 (Gyo-Ke) 10121(November 30, 2016) “Inhaler” Case

Novelty (related to prior arts) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) At the end of the mouthpiece portion of the applied design, the circular hole is formed in the center, combined with that the mouthpiece cover portion is transparent.  As a result, this portion attracts the user’s […]

＜Tokyo District Court＞ 2016 (Wa) 13870( January 31, 2017) “Wheeled Platform” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) Regardless of the presence or lack of Push Bars, the resistered design and Defendant’s Wheeled plat are not similar, because, when seen in its entirety, there is a different aesthetic impression from these two designs. ⇒ […]

＜IP High Court＞ 2016 (Gyo-Ke) 10239＞(May 30, 2017) “Vehicle with an Imaging Device” Case

Eligibility of Design (Conclusion) The applied image is not a graphic image allowed in the OLD Japanese Design Act. (Design right owner lost.) A “graphic image … for use in the operation of the article” (limited to the operations carried out in order to enable the article to perform its functions) refers to a graphic […]

＜Osaka District Court＞ 2015 (Wa) 8271(October 12, 2017) “Clothes Drying Stand” Case

Claim for the compensation for an employee design against company (Conclusion) The Plaintiff’s claim was dismissed. To be admitted as a co-creator of  a registered design, it is not enough to simply orivude an idea as an assistant or adviser, but it is required to be involved with the creation. In addition, the creation must […]

＜IP High Court＞ 2017 (Gyo-Ke) 10188(March 12, 2018) “Accessory Case Shaped Camera” Case

Easiness to create the design (Conclusion) The applied design was easy to create based on prior arts. (Design right owner lost.)    The applied design has a usage and function as an accessory case, and also has a usage and function as a concealed camera of photographing and recording so as not to be understood […]

＜IP High Court＞ 2017 (Gyo-Ke)10181(February 26, 2018) “Tool for Correcting how to hold Chopsticks” Case

Easiness to create the design (Conclusion) The registered design was easy to create based on prior arts. (Design right owner lost.) The registered design is composed of two parts (i) to be attached and detached to chopsticks for the purpose of training infants how to use chopsticks, and these two parts give (ii) an integral […]

＜IP High Court＞ 2018 (Gyo-Ke) 10009(May 30, 2018) “Bolt Cover for a Hollow Steel Pipe Member,” Case

Easiness to create the design (Conclusion) The registered design was easy to create based on prior arts. (Design right owner lost.)                   The shape of the end of the Prior art 1 is formed arbitrarily so as to mate with the opposite parts (the locking rib of the […]

＜Tokyo District Court＞ 2017 (Wa) 11295(September 21, 2018) “High-pressure Oxygen Capsule” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) It is emphasized in the [Explanation of Design] of the Publication of Registered Design that the door and both ends of the capsule are transparent and that it is possible to look into the bed inside. […]

＜Osaka District Court＞ 2016 (Wa) 6539( October 18, 2018) “Trash Can” Case

Damages caluculation (Conclusion) No dispute for infringement. (Design right owner won.) The infringer’s profit should be calculated on the basis of the actual sales amount even if the infringer sells at less than cost, unless the infringer’s sales are substantially deemed as the disposal of the infringing products. In order to obtain more damages, a […]

＜Osaka District Court＞ 2016 (Wa) 12791＞(November 6, 2018) “Lighting Equipment for Testing” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s equipment 1 is similar to the registered design. (Design right owner won.) / Defendant’s design 2 is not Similar to the registered design.(Design right owner lost.) (Defendant’s equipment 1) When observing from the front or oblique front, a user does not recognize the existence of a screw hole. […]

＜Tokyo District Court＞ 2017 (Wa) 40178(December 20, 2018) “Eye Mask” Case

Damages caluculation (partial design) (Conclusion) Infringer’s design is similar to the registered design.(Design right owner won.) Though the registered design and the infringer’s eye mask have many common elements, these elements were shown in publicly known designs. Further, the different point between the registered design and the infringer’s eye mask, “in the registered design, roughly […]

＜Osaka District Court＞ 2017 (Wa) 849(March 28, 2019) “Electronic Cigarette Case” Case

Prior Use Right (Design Act Article 29)  (Conclusion) Prior use defense was affirmed.(Design right owner lost.)   Defendant had ordered a third party to make a sample of the alleged Defendant’s product before the date on which the design right owner’s product was released. Given this developmental status of the alleged Defendant’s product, it can […]

＜Osaka District Court＞ 2017 (Wa) 5011(March 28, 2019) “Nail Clipper” Case

Damages caluculation (partial design) (Conclusion) The damages were calculated at 28% (0.7×0.4) of the Infringer’s profits. No dispute for infringement.(Design right owner won.) The registered partial design (solid line portion) has a significant influence on the aesthetics of the entire nail clipper as it is stands out when placing down or holding it. Therefore, for […]

＜IP High Court＞ 2018 (Gyo-ke) 10152(April 11, 2019) “Electric Toothbrush” Case

Novelty (related to prior arts) (Conclusion) Novelty should not be found.(Applicant lost.)   General consumers, which are the main users of this designation, pay special attention to the overall shape of the gripping portion with emphasis on the easiness of gripping and operation. Therefore, as the whole shape is common between the applied design and […]

＜Osaka District Court＞ 2017 (Wa) 8272＞(August 29, 2019) “Flowing Somen Noodle Machine” Case

Similarity of design (Infringement case) (Conclusion) Infringer’s design is similar to the registered design.(Design right owner won.)   Before this application, a water-slider-type “Flowing Somen Noodle Machine” which also has a rotator in the center of the tray portion like a running-water-pool-type did not exist. Therefore, the novel feature of the registered design was the […]

＜Osaka High Court＞ 2018 (Ne) 2523 = 2018 (Gyo-ke) 10181(September 5, 2019) “Inspection Lighting Apparatus” Case

Easiness to create the design (Conclusion) The registered design is not easy to create based on prior arts. (Design right owner won.)     If a person skilled in the art can apply prior art 2 to prior art 1, the registered design can be reached. However, as a premise that “motivation” is require to […]

＜Osaka High Court＞ 1980 (Ra) 542(September 28, 1981) “Storage Cabinet” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not similar to the registered design.(Design right owner lost.) This case showed the general criterion on how to consider publicly-known designs when determining the main part of a registered design. (This criterion is still being followed by later court cases now.) No special creativity or aesthetic […]

＜Tokyo High Court＞ 1997 (Ne) 404(June 18, 1998) “Self-propelled Crane” Case

Similarity of design (Infringement case) (Conclusion) Infringer’s design is similar to the registered design.(Design right owner won.) This case showed the general criterion of similarity between the registered design and an infringer’s design as follows. (This criterion has been followed by the later court cases still now.) Taking into consideration the nature, use and usage […]

＜Tokyo High Court 1984＞(Gyo-Ke) 7(July 30, 1985) “Faucet Fitting” Case

Novelty (related to prior arts) (Conclusion) Novelty should not be found. (Design right owner lost.)  A request for an invalidation trial before the JPO by a non-exclusive licensee shall not be contrary to the doctrine of good faith, unless there are special circumstances. When identifying a design shown in a prior art, not only the […]

＜Tokyo High Court＞ 1978 (Gyo-Ke) 30(March 25, 1980) “CUP NOODLE” Case

Novelty (related to prior arts) (Conclusion) Novelty should not be found. (Applicant lost.) As the characters “CUP NOODLE” on the surface of a container is not deemed a “pattern” in this case, these characters do not generate Novelty. There is room for interpretation that the characters lost their original function as a means of communication […]

【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.

The Intellectual Property High Court Decision of February 25, 2021 (Case No. 2020 [Gyo-Ke] 10084―Presiding Judge MORI)   ◆Main text of the case   【Summary of the Judgment】 Regarding whether or not the trademark in question falls under Article 3, Paragraph 1, Item 3 of the Trademark Act   At the time of the trial […]

【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.

―IP High Court Case No. 2019 (Gyo-ke) 10102 of May 24, 2020 (Presiding Judge TAKABE)     【Summary and Consideration of the Present Decision】 1. Motivation to combine the secondary cited invention with the primary cited invention, and a factor teaching away from combining the two inventions (an inventive step of the Present Invention was […]

【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.

―IP High Court Case No. 2019 (Gyo-ke) 10118 of June 17, 2020 (Presiding Judge MORI)  <※Case Remanded to the IP High Court by the Supreme Court (Supreme Court Case No. 2018 [Gyo-hi] 69 of August 27, 2019)>     Issue ① ― Regarding an “unpredictable and remarkable effect” to be taken into consideration in determining […]

【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.

The Intellectual Property High Court Decision of December 23, 2020 (Case No. 2020 [Gyo-Ke] 10050―Presiding Judge OTAKA)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding well-knownness of a cited trademark consisting of the characters, “農口尚彦研究所”, written vertically in block style (the “Cited Trademark”) In order to consider that the Cited […]

＜Supreme Court＞1991 (Gyo-Tsu) 103 (September 10, 1993) 　”SEIKO EYE” Case

Similarity (Article 4, paragraph(1), item(11) of Trademark Act) (Conclusion:) The Trademark should not be judged as similar to the JPO-Cited Trademark. The JPO-Cited Trademark consists of “SEIKO”, which is the abbreviation for the products or trade name of a well-known manufacturer and seller of watches and clocks in Japan, and “EYE”, which is a general, […]

【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.

The Intellectual Property High Court Decision of March 18, 2021 (Case No. 2020 [Ne] 10022―Presiding Judge KANNO)   ◆Main text of the cases   【Summary of the Judgment】 1. Regarding musical performances by teachers (1) Regarding the subject entity who gives a musical performance When determining the subject entity who gives a performance of a musical […]

＜IP High Court, First Division＞ 2007(Gyo-Ke)10369 (June 24, 2008)　“Interactive network for dental treatment” Case　　

Eligibility (Conclusion) The claimed invention is eligible. In the case where a claim refers to some technical means, if the essence of a claimed invention is found to be directed to human activity itself, considering the recitation in the claim as a whole, then the claimed invention is not eligible. On the other hand, in […]

＜IP High Court, Second Division＞ 2016(Gyo-Ke)10147 (June 8, 2017)　“Tomato Drink” Case

Description Requirement (Conclusion) Effect of the claimed invention is not sufficiently disclosed in the specification by working examples (patent should be invalidated). The patented invention relates to a tomato drink having (i) a sugar content of 7.0 to 13.0, (ii) a sugar-acid ratio of 19.0 to 30.0, and (iii) a total content of glutamic acid […]

＜IP High Court＞ 2006(Ne)10077 (May 30, 2007)　”Ink tank for ink jet recording device” case

Requirements for Divisional Applications (1) If a divisional application is not properly divided from its parent application, there is no retroactive effect for the filing date of the divisional application. (2) If a specification of a parent application describes a feature as essential or describes or suggests that the invention without such feature does not […]

＜Supreme Court＞ 2004(Ju)997 (June 17, 2005)　Injunction Claimed by Patentee Who Granted Exclusive License Case

Jurisdiction and Others (Conclusion) Even if a patent owner has granted an exclusive license under their patent right, which is registered under Article 77 of Japanese Patent Act, the patent owner may enforce the patent right to seek an injunctive relief on their own accord. According to the concept of “exclusive license,” which is registered […]

＜IP High Court, Second Division>＞2016(Ne)10018 (November 30, 2016)　”Tube-like Humidifier” Case

Requirement of “Another Person’s Goods” under Art. 2, para. 1, item 3 of the UCPA (Conclusion) Goods exhibited in an exhibition (not for sale yet) can be “another person’s goods” protected by the UCPA if they have been completely developed, commercialized, and have reached the stage of being ready for sale. This is a case […]

＜IP High Court, Grand Panel＞2015 (Ne) 10014 (March 25, 2016)　”Maxacalcitol” Case

Burden of Proof and 1st Requirement for Doctrine of Equivalets (Conclusion) A patentee and an alleged infringer owe the burden of proof for the requirements (1) to (3) and (4) and (5) respectively for the doctrine of equivalents, and the essential part of a patented invention in the requirement (1) means a unique technical idea […]

＜IP High Court, Grand Panel＞2012 (Ne) 10015 (February 1, 2013) “Waste Storage Device” Case

Presumption of Patentee’s Damages by Infringer’s Profits (Conclusion) Patentee’s working of a patented invention is not required to presume patentee’s damages by infringer’s profits under Article 102, paragraph (2) of the Patent Act, and the application thereof should be allowed when there are any circumstances suggesting that the patentee could have gained profits if no […]

＜Supreme Court, First Petty Bench＞ 1998(Ju)332 (September 7, 2000) “Gona printing fonts” Case

The Possibility of Copyright Protection of Printing Fonts (Typefaces) (Conclusion) In order for a typeface for printing (printing fonts) to be protected as a “copyrighted work” under the Copyright Law, it must have originality compared to conventinal fonts and also aesthentic characteristics that make it an object of artistic appreciation. Article 2(1)(i) of the Copyright […]

【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”.

The Supreme Court Decision of March 1, 2021 (Case No. 2018 (A) 10—Presiding Judge YAMAGUCHI)   ◆Main text of the case   【Summary of the Judgment】 With respect to measures, which restrict images from being viewed by means of encrypting images to transmit them in a way that requires decryption by a viewer installed on […]

＜Supreme Court＞ 1994(O)1083 (February 24, 1998)
“Ball Spline Bearing” Case

(Conclusion) Patent infringement may be found under the doctrine of equivalents with the requirements (1) – (5).   Patent infringement may be found, even if the literal difference is found between the claim of the patented invention and the subject product, etc., under the the doctrine of equivalets, if (1) the different part is not […]

【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.

The Intellectual Property High Court Decision of December 15, 2020 (Case No. 2020 [Gyo-Ke] 10076―Presiding Judge TSURUOKA)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding whether or not the position mark in question falls under Article 3, Paragraph 1, Item 3 of the Trademark Act Article 3, Paragraph 1, Item […]

【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.

The Intellectual Property High Court Decision of September 16, 2020 (Case No. 2019 [Gyo-ke] 10170―Presiding Judge OTAKA)   ◆Main text of the case   【Summary of the Judgment】 Regarding whether the Defendant’s Registered Trademark falls under Article 4, Paragraph 1, Item 11 of the Trademark Act   It is recognized that, at the end of […]

[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.

–Intellectual Property Court Case No. 2018 (Ne) 10006 on September 11, 2019 (Presiding Judge Tsuruoka)   Overview 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. Indirect infringement of method […]

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

“ANTENNA” Case: A case in which the Court found that the wording of the “cylindrical portion for power feeding” in the claims of the plaintiff’s patent is interpreted to mean that the cylindrical portion is actually used for power feeding, and that the defendant’s product is not found to fulfill the constituent feature of the […]

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

“METHOD FOR CRUSHING POLYCRYSTALLINE SILICON FRAGMENTS AND POLYCRYSTALLINE SILICON RODS” Case: A case in which the Court found that the measuring method for the “median particle size which is measured by mass” of the tungsten carbide particle is not described in the patent specification, and therefore, the invention fails to fulfill the clarity requirements.   […]

[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.

Tokyo District Court Case No. 2017 (Wa) 28189;  January 17, 2020 (Presiding Judge Sato)   Overview 1. The invention Relating to each sheet of the laminated body of the sheet-like objects, the scope of claims in the invention specifies that “the first intermediate piece” is formed substantially as the same length as a width dimension […]

【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.

Osaka High Court Decision of January 14, 2021 (Case No. 2019 [Ne] 1735―Presiding Judge Yozo YAMADA)   【Summary of the Judgment】 Regarding Requirements for Copyright Protection In order to receive protection as a copyrighted work under the Copyright Act, a work (i) is required not to be “thought or sentiment” itself, but to be an […]

【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.

The Intellectual Property High Court Decision of September 2, 2020 (Case No. 2019 [Gyo-ke] 10166―Presiding Judge OTAKA)   ◆Main text of the case   【Summary of the Judgment】 Meaning of being “well known among consumers” stipulated in Article 64, Paragraph 1 of the Trademark Act as a requirement for a defensive mark registration The defensive […]

【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.

The Intellectual Property High Court Decision of June 24, 2020 (Case No. 2019 [Ne] 10069―Presiding Judge OTAKA)   ◆Main text of the case   【Summary of the Judgment】 1. Consumer recognition of the MMPI indication It is acknowledged that consumers of the “psychological testing”, which is the designated service of the Trademark, include psychologists and […]

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

Ⅰ. Background of Amendment The Act Partially Amending the Copyright Act and the Act on Special Provisions for the Registration of a Computer Program Work (Act No. 48 of 2020) was enacted on June 5, 2020, and promulgated on June 12, 2020. The main points of the amendments and the dates of enforcement are as […]

【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.

The Intellectual Property High Court Decision of August 27, 2020 (Case No. 2019 [Gyo-Ke] 10143―Presiding Judge TSURUOKA)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding distinctiveness of the composition of the position mark in question (the “Applied Trademark”) (whether or not Article 3, Paragraph 1, Item 6 of the Trademark […]

【PATENT ★★】IP High Court Grand Panel Case No. 2019 (Ne) 10003; February 28, 2020 (Presiding Judge TAKABE)

“Beauty Instrument” Case: A case in which the Court made a decision on a calculation method of an amount of damages based on Article 102, Paragraph 1 of the Patent Act and the circumstances to be taken into account in the calculation.   【Regarding Summary of the Judgment Rendered by the IP High Court Grand […]

【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.

The Intellectual Property High Court Decision of June 17, 2020 (Case No. 2019 [Gyo-Ke] 10164―Presiding Judge MORI)   ◆Main text of the case   【Summary of the Judgment】 1. As specified below, the mark in question consists of the letter “I” and a heart shape placed horizontally side by side (hereinafter referred to as “I […]

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

“Fluid Pressure Cylinder and Clamp Device” Case: A case in which the Court found that new technical matters were added by an amendment (such an amendment was not permitted). ―The matter deleted by the amendment was a main means of solving the problem to be solved by the invention.   【Comments】 With regard to an […]

【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.

The Intellectual Property High Court Decision of July 29, 2020 (Case No. 2020 [Gyo-Ke] 10006―Presiding Judge MORI)   ◆Main text of the case   【Summary of the Judgment】 The mark “TAKAHIROMIYASHITATheSoloist.” (common characters) is easily recognized as a composite trademark composed of the portions of “TAKAHIROMIYASHITA” and “TheSoloist.”, and the portion of “TAKAHIROMIYASHITA” is objectively […]

【Copyright Act ★★★】 A case in which, with respect to a tweet posted on Twitter using a photographic image which was an unauthorized copy of a photograph taken by a photographer and posted on his own website with his name displayed, the Supreme Court found that there is infringement by the user of Twitter who retweeted the tweet containing the photographic image of the photographer’s right to determine the indication of an author’s name on the grounds that as a result of retweeting the tweet the photographic image was trimmed due to system specifications of Twitter and displayed on timelines, causing the photographer’s name to disappear, and acknowledged the photographer’s demand against Twitter, Inc. for disclosure of email addresses of the user of Twitter who retweeted the tweet.

Decision of the Supreme Court, 3rd Petty Bench, July 21, 2020 (Case No. 2018 (Ju) 1412—Presiding Judge TOKURA)   ◆ Main text of the case   【Summary of the Judgment】 The phrase “the work…is made available or presented to the public” under Article 19, Paragraph 1 of the Copyright Act (which provides for the right of […]

【PATENT ★★】IP High Court Case No. 2018 (Gyo-ke) 10110; November 14, 2019 (Presiding Judge OTAKA)

“Celecoxib Compositions” Case: A case in which, with respect to an invention with numerical limitations, the Court denied compliance with the support requirement for specifications stating that the description of the invention in the specification is required to contain descriptions such that those skilled in the art can recognize how to solve the problem of […]

【Trademark Act ★】A case in which the Court found that a color trademark consisting solely of orange without contours cannot be said to have acquired distinctiveness as a source indicator under Article 3, Paragraph 2 of the Trademark Act even if such a trademark has been used for a long period of time for hydraulic excavators, the designated goods of the trademark.

The Intellectual Property High Court Decision of June 23, 2020 (Case No. 2019 [Gyo-Ke] 10147―Presiding Judge TAKABE)   ◆Main text of the case   【Summary of the Judgment】 1. Whether or not a trademark has acquired distinctiveness as a source indicator under Article 3, Paragraph 2 of the Patent Act must be determined by taking […]

【PATENT ★】IP High Court Case No. 2018 (Gyo-ke) 10151; September 18, 2019 (Presiding Judge TSURUOKA)

“Mattress for Gatch Bed” Case: A case in which the Court found that it is sufficient for a cited invention to be recognizable as a set of features or technical ideas disclosed in a cited reference. The Court identified one example of use as a cited invention among the four examples of use disclosed by […]

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

I. Background of Amendment The Act Partially Amending the Copyright Act and the Act on Special Provisions for the Registration of a Computer Program Work (Act No. 48 of 2020) was enacted on June 5, 2020, and promulgated on June 12, 2020. The main points of the amendments and the dates of enforcement are as […]

[Patent*] “Roll paper for packaging medicine” (Court of Second Instance) – A case in which the appellants of an infringement lawsuit other than a claimant or an intervenor of an invalidation trial who did not file a suit for revocation of the trial decision of dismissing the request for the invalidation trial are restricted from making a defense of invalidity based on the same fact and the same evidence.

– IP High Court Case No. 2019 (Ne) 10009 on June 27, 2019 (Presiding Judge OTAKA) –   ＜Judgement of Prior Instance Osaka District Court, 2016（Wa）6494＞   ◆ Judgement   1  Restriction on “Defense of Invalidity” in the lawsuits under the principle of faith In the Court of Second Instance in this case, in addition […]

【Trademark Act ★】 A case in which the Court revoked a decision of the Japan Patent Office which refused an application for registration of the mark “CORE ML” by finding that the mark “CORE ML” consisting of common characters is not similar to either of the cited trademarks “CORE” and “コア” (KO-A in English) which consist of common characters.

The Intellectual Property High Court Decision of May 20, 2020 (Case No. 2019 (Gyo-Ke) 10151 — Presiding Judge MORI)   ◆ Main text of the case   【Summary of the Judgment】 1. When judging the similarity of the mark “CORE ML” consisting of common characters and the cited trademarks consisting of common characters, or “CORE” […]

【PATENT ★★★】Supreme Court Case No. 2018 (Gyo-hi) 69; August 27, 2019

“Topical Ophthalmic Formulation for Treating Allergic Eye Diseases” Case: A case in which the Supreme Court found that, when determining an inventive step of an invention, an “unpredictable and outstanding effect” should be considered based on whether or not a person skilled in the art could have predicted such effect based on a structure of […]

【PATENT ★★】IP High Court Case No. 2018 (Gyo-ke) 10036; March 19, 2019 (Presiding Judge MORI)

“Inhibition of IL-17 Production” Case: A case in which, regarding an invention related to a pharmaceutical composition which contains a publicly known active ingredient and is for publicly known therapeutic use, the Court identified a newly discovered mechanism of action as “intended use” of the invention and affirmed novelty and inventive step of the invention. […]

【PATENT ★】Japanese Evidence Collection Procedures in Patent Infringement Case

The Japanese Patent Act provides a “Document Production Order” for proving infringement and damages. Though such Document Production Order has been issued sometimes for proving damages after the Court found infringement, there has been only a few cases in which the Order was issued for proving infringement. Considering such difficulty to prove patent infringement, a […]

【Trademark Act ★】 A case in which the Court revoked a decision of the Japan Patent Office which refused an application for registration of the mark “ベジバリア／塩・糖・脂” (BEJIBARIA/Salt・Sugar・Fat) on the grounds that the mark is similar to the registered trademark “塩糖脂” (Salt, Sugar, Fat).

The Intellectual Property High Court Decision of March 19, 2020 (Case No. 2019 (Gyo-Ke) 10152 — Presiding Judge TSURUOKA)   ◆  Main text of the case   【Summary of the Judgment】 Regarding the mark “ベジバリア／塩・糖・脂” (“／” indicates a line break) , the overall mark “ベジバリア塩・糖・脂” or only part of the mark, “ベジバリア” produces a sound […]

【PATENT ★★】IP High Court Grand Panel Case No. 2018 (Ne) 10063; June 7, 2019 (Presiding Judge TAKABE)

“Carbon Dioxide-Containing Viscous Composition” Case: A case in which the Court determined the calculation of damages under Article 102, Paragraphs 2 and 3 of the Patent Act and the elements to be considered therefor.   【Comments】 In this case, the Court determined the calculation of damages based on Article 102, Paragraph 2 (an amount corresponding […]