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 be said that the alleged Defendant created its own design without knowledge of the registered design.
Japanese Design Act, Article 29 (Non-exclusive license based on prior use)
A person who, without knowledge of a design in an application for design registration, created a design identical or similar to the said design, or a person who, without knowledge of a design in an application for design registration, learned of the design from a person who created a design identical or similar to the said design, and has been working the design or a design similar thereto or preparing for the working of the design or a design similar thereto in Japan at the time of the filing of the application for design registration (where the application for design registration is deemed to have been filed at the time of submission of the written amendment of proceedings under Article 9-2 or 17-3(1) (including the cases where it is applied mutatis mutandis pursuant to Article 50 (1) (including the cases where it is applied mutatis mutandis pursuant to Article 57 (1)), at the time of filing the original application or the written amendment of proceedings), shall have a non-exclusive license on the design right, only to the extent of the design and the purpose of such business worked or prepared.
<Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)>
https://www.ip.courts.go.jp/app/files/hanrei_en/797/002797.pdf