Legal Updates

【Trademark Act ★】A case in which the court maintained the trial decision to dismiss the plaintiff’s request for invalidation, finding that the registered trademark of the defendant (the subject trademark) consisting of the words “sweets/party in Katakana” and the cited trademark of the plaintiff consisting of the words “sweet party in Katakana / SWEET PARTY” are not similar and that the registration of the subject trademark was not made in violation of Article 4(1)(xi) of the Trademark Law.

【Trademark Act ★】A case in which the Court affirmed the Japan Patent Office’s decision which refused an application for registration of a composite trademark composed of a figure part and a word part on the grounds that the trademark falls under Article 4, Paragraph 1, Item 11 of the Trademark Act in view of separate observation/essential part observation, general and constant state of transactions, and similarity between services.

[Patent★] Litigation Seeking of Rescinding the Trial Decision Case: A case in which a general problem that could be recognized by a person skilled in the art on the filing date of the patent application is also applicable to the cited invention, although there is no reference to the cited reference, therefore, the motivation is admitted. A case in which the Intellectual Property High Court denied the inventive step and rescinded the JPO decision.

[Patent★] “Equol-containing extract, method for production thereof” Patent infringement Appellate Court Case: A case in which the Intellectual Property High Court presumed the method for producing the Appellee’s products by applying Article 104 of the Patent Act. A case in which the Intellectual Property High Court granted a priority claim and determined the Original Filing Date as “the date of the patent application”. A case in which the Patentee won a reversal in the Intellectual Property High Court.

【Trademark Act ★】A case in which the Intellectual Property High Court held that the registered trademark (the trademark in question) owned by the plaintiff, which consists of “スマホ修理王” in standard characters and whose designated service is “repair or maintenance of telephone equipment” in Class 37, is a “trademark that is likely to negatively affect public policy” in light of the purpose and background of the application for registration, therefore, it falls under Article 4, paragraph 1, item 7 of the Trademark Act and the court maintained a trial decision of invalidation made by the Japanese Patent Office (the “JPO Decision”) to the same effect.

【Trademark Act ★】A case in which the Intellectual Property High Court maintained a cancellation decision made by the Japanese Patent Office (the “JPO Decision”), defendant, in a case of opposition filed by the defendant’s supporting intervener, on the ground that the registered trademark owned by the plaintiff which consists of words “hihachi” standard characters (the trademark in question), which designates “Household electrothermic appliances, non-electric cooking heaters for household purposes” etc. in Class 11, corresponds to a trademark which “is likely to cause confusion in connection with the goods … pertaining to a business of another person” in relation to the cited trademark consisting of “HITACHI” in standard characters for which the defendant’s supporting intervener has obtained trademark registrations, and falls under Article 4, paragraph 1, item 15 of the Trademark Act.

[Patent★] “Mounting Structure for Circuit Breaker” Case: A case in which the Intellectual Property High Court found that the divisional application in which the specific description in the original specification with respect to a configuration not directly related to the problem of the invention was abstracted and generically conceptualized and added to the scope of the claims does not fall under the addition of new matters. A case in which the Intellectual Property High Court denied the easily-conceived property for one of the reasons that the parts are small.

Strengthening of Regulations on Personal Import of Counterfeit Goods ～The regulations come into effect as of October 1, 2022～

【Trademark Act ★】A Case in which the Intellectual Property High Court partially rescinded a decision made by the Japanese Patent Office (the “JPO Decision”), which partially maintained a request for a trial for trademark invalidation, on the ground that the registered trademark which consists of words “Scrum Master” written horizontally in standard characters is a necessary and appropriate indication for the transaction as describing the quality of the designated services such as “teaching of art, sports or knowledge, education and training, planning, operation or conducting of qualifying examination, planning, operation or holding of seminars” in Class 41 and is generally recognized as indicating the quality of services when used for such designated services by traders and consumers and therefore falls under Article 3, para.1, item 3 of the Trademark Act.

【Trademark Act ★】The following registered trademark, which designates “T-shirts and hats” in Class 25, is not similar to the following cited trademark and has not been registered for “unfair purposes”. Therefore, the portion of the plaintiff’s request for invalidation trial based on Article 4(1)(xv) of the Trademark Act is dismissed (Article 47(1) of the Trademark Act) due to the passing of the period of exclusion. The trial court’s decision to dismiss the portion based on Article 4(1)(vii) of the Trademark Act was not erroneous, and the decision of the invalidation trial was affirmed.