Legal Updates

Outline of the Trademark Act, Design Act and Unfair Competition Prevention Act as amended in 2023

Outline of the Copyright Act as amended in 2023

[Patent★] “Light Source, Backlight Unit Including Light Source and Liquid Crystal Display Device” Case: The case in which the Intellectual Property High Court denied the inventive step on the grounds that it was possible to extract a coherent technical idea from multiple paragraphs in the cited reference and that the numerical limitation without data was a design matter.

【Trademark Act★】A case in which the Intellectual Property High Court held that concerning the trademark consisting solely of the color red (PANTONE 18-1633TP) applied to the sole portion of women’s high-heeled shoes, the trademark cannot be said to acquire the high degree of distinctiveness required under Article 3 Paragraph 2 of the Trademark Act.

【Trademark Act★】A case in which the Intellectual Property High Court held that the “朔北” part of the trademark “朔北カレー” is dissimilar (not applicable to Article 4(1)(11) of the Trademark Act) to the cited trademark “サクホク” by separating and observing the elements of the composite trademark and reversed a refusal decision which decided them to be similar (applicable).

[Patent★] “Retroreflecting sheet having printed layer” Patent Infringement Injunction Case: A case in which the Intellectual Property High Court considered the royalty rate (5%) proposed by the patentee during pre-litigation negotiations as one factor and decided that the royalty rate to be determined ex post facto would be twice that rate (10%).

【Intellectual Property Law ★】A case in which the Intellectual Property High Court held that a provision in an exclusive management agreement between a music agency and performers prohibiting the performers from entering into contracts with third parties for the purpose of performing without permission for a period of six months after the termination of the agreement (the provision in question) is invalid in violation of public order and morals as unreasonably restricting the performers’ freedom to choose their occupation. A case in which the court held that publicity rights and moral rights (rights of attribution) pertaining to the group name (the group name in question) attached to the group of performers shall be held by each member and cannot be exercised by the music agency after the termination of the agreement.

【Trademark Act ★】A case in which the Court maintained the Japan Patent Office’s decision of refusal of a trademark application on the ground that the trademark consisting of the words “おんじゃくきゅう” and “温石灸” in two columns, which is used for the designated services of “Massage and therapeutic Shiatsu massage; moxibustion; acupuncture; chiropractic; providing medical information; dietary and nutritional guidance” in Class 44, merely describes the quality of the designated services, and therefore falls under Article 3, para.1, item 3 of the Trademark Act. In addition, if the trademark is used for the designated services other than “moxibustion (treatment) using warm stones”, it may be liable to be misleading of the quality of services, and therefore also falls under Article 4, para.1, item 16 of the Trademark Act.

[Patent★★]“LASER BEAM WORKING MACHINE” Case: A case in which the Intellectual Property High Court found the absence of grooves from the drawings in the specification and allowed the correction of the claims excluding the grooves. A case in which the court found inventive step because the grooves were essential to the cited invention, and therefore, there were grounds for hindrance.

[Patent★★] “Wiring Box” Case: Litigation of Rescinding the Trial Decisions Made by the JPO on a Patent Case.A case in which the Intellectual Property High Court held that when a divisional application was filed with a parent, child, and grandchild applications …, the filing date of the grandchild’s application was not retroactive to the filing date of the parent’s application if the child application violated the divisional requirement/added new matter.