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KUBOTA has successfully acted on behalf of CASIO to obtain a 3D trademark for the three-dimensional shape of G-SHOCK under Japanese trademark Reg. No. 6711392 registered on June 26, 2023 (Appeal No. 2022-011052).
This case involves the issue of the doctrine of territoriality. Patentee enforced a patent for a system consisting of a server and terminals, against defendants. One of the defendants is a U.S. company and its servers are located in the U.S. Therefore, the defendant argued that the Japanese patent could not be enforced. On May 26, 2023, the Grand Panel of the IP High Court held that the acts of producing the system are considered to be performed in Japan even though the defendant has its servers in the U.S., and found infringement (IP High Court Judgment, May 26, 2023 (Case No. Reiwa 4 (Ne) 10046)).
The plaintiffs filed an invalidation trial against a trademark registration of “Scrum Master” (standard characters) (Reg. No. 6042646) on the ground that it falls under Article 3(1)(iii) of the Trademark Act (lack of distinctiveness) and on other grounds. The Japan Patent Office (“JPO”) rendered a trial decision that the trademark should not be invalidated relating to services such as " education and training relating to the use of information technology" in class 41 ("Designated Services”). The plaintiffs filed a lawsuit with the Intellectual Property High Court (“IP High Court”) to appeal and cancel the trial decision. The IP High Court found that “Scrum Master” (standard characters) falls under Article 3(1)(iii) of the Trademark Act as the mark would be generally recognized as indicating the quality (details) of Designated Services, and revoked the portion of the trial decision relating to the Designated Services (IP High Court Judgement, May 19, 2022 (Case number: 2021 (Gyo-Ke) 10100)).
On June 14, 2023, the National Diet of Japan passed a bill to amend the Unfair Competition Prevention Act of Japan, etc. (the "New Bill"). The New Bill makes very significant amendments to the Japanese trademark law and unfair competition law, including introduction of a consent system. The New Bill will come into effect within one year from the above date (the effective date to be designated by a cabinet order).
In this newsletter, we would like to introduce some important features of the New Bill.
The IP High Court moved to a new building in Naka-Meguro, Tokyo from October of 2022. The new building is called the “Business Court” and the IP divisions of the Tokyo District Court, the Bankruptcy division of the Tokyo District Court and the Corporate division of the Tokyo District Court also moved to this building. This new Court is about a 30 minutes’ drive away from the original building.
The Intellectual Property High Court (“IP High Court”) reversed the Tokyo District Court decision ruling that enforcement of the patent against refilled toner cartridges violated the Antitrust Act and constituted an abuse of rights, and granted the patentee's request for an injunction and damages on the grounds that the enforcement of the patent was not in violation of the Antitrust Act (IP High Court, March 29, 2022, Case No. 2020(ne)10057).
The IP High Court decided that a person skilled in the art could easily conceive of the invention characterized by the usage and dosage of the drug based on the invention described in the published clinical trial plan (clinical trial protocol) and the common technical knowledge. The court dismissed the request for cancellation of the invalidation trial decision (IP High Court Judgment, June 29, 2021(Case number: 2020 (Gyo-Ke) 10094).
Concerning the Plaintiff's application for a sound trademark containing lyrics "Matsumoto Kiyoshi", the IP High Court determined that the trademark cannot be considered to be a trademark containing "another person's name" under Article 4 (1) (viii) of the Trademark Act because the sound is not generally recognized as referring to a person's name. (IP High Court Judgement, August 30, 2021 (Case number: 2020 (Gyo-Ke) 10126).
In a patent infringement action, the Intellectual Property High Court allowed a defendant to deny that the defendant's products satisfy certain claim elements of the plaintiff's patent, even though the defendant previously made a statement admitting that the products satisfy such claim elements (IP High Court Judgment, June 28, 2021(Case number: 2020(ne)10044).
In a patent infringement case before the Tokyo District Court, the patentee filed a request for conducting on-site inspection. The Court rejected this request because the Court found the patent invalid and therefore on-site inspection is not necessary (Tokyo District Court judgment, March 30, 2021 (Case number:2019 (wa) 30991)).
The plaintiffs (the “Plaintiffs”) are a French fashion designer Christian Louboutin and his company whose high-end footwear with red lacquer-coated soles has become his signature. The defendant (the “Defendant”) is a Japanese women’s footwear brand, which produces and sells black high heels with red soles. The Plaintiffs claimed unfair competition against Defendant’s high heels, saying that the soles of the Defendant’s high heels are similar to their iconic red soles and filed a lawsuit seeking an injunction against production and sale of them, and damages before the Tokyo District Court (the “Court”). The Court dismissed the Plaintiffs’ claims (Tokyo District Court judgement, March 11, 2022 (Case number: 2019 (wa) 11108).
Toray Co., Ltd. ("Plaintiff"), which owns Japanese Patent No. 3531170 ("Patent"), filed a patent infringement action for seeking injunction and damages against Sawai Pharmaceutical Co., Ltd. and Fuso Pharmaceutical Industries, Ltd. (collectively, "Defendants"), by claiming that the Defendants’ generic drugs (“Defendants' Generic Drugs) infringe the Patent. The Tokyo District Court dismissed the Plaintiff's request, by saying that neither literal infringement nor infringement under the doctrine of equivalents (“DoE”) is not established (Tokyo District Court Judgement, 30 March 2021 (Case numbers: 2018(wa)38504 and 2018(wa)38508).
With the aim of preventing the spread of COVID-19, and further improving the convenience of administrative procedures, the JPO has decided to partially abolish signature and seal on a wide variety of deeds and documents.
The plaintiff, an individual and the patentee of an invention whose title is "viruses and their use in therapy", filed a lawsuit against the defendant Amgen K.K. who was conducting clinical trials using a virus that falls within the technical scope of the patented invention, alleging that the clinical trials constituted the working of the patented invention of the plaintiff's patent right and infringed the plaintiff's patent right. The Intellectual Property High Court (hereinafter referred to as the "IP High Court") maintained the original judgment of the first trial (Tokyo District Court, Case No. 2019 (wa) 1409, judgment issued on July 22, 2020), which dismissed the plaintiff's claims on the grounds that the clinical trials constituted “the working of the patented invention for experimental or research purposes" under Article 69(1) of the Patent Act (IP High Court, Case No. 2020 (ne) 10051, judgment issued on February 9, 2021).
In this case involving the pharmaceutical formulation of Palonosetron, on December 15, 2020, the IP High Court decided that there was no specific support for a limitation requiring a “storage stability of at least 24 months” in the specification and dismissed the request for cancellation of the JPO trial decision that invalidated the patent (IP High Court Case No. 2019 (Gyo-Ke) 10136 ).
To make the Patent Act of Japan more adapted to recent business activities with digitalization, remote works and non-contact due to the COVID-19 pandemic, the bill of the revision of the Patent Act was enacted on May 12, 2021 and promulgated on May 21, 2021, which includes the following revisions. Under the revised Patent Act, the patent system in Japan is anticipated to lessen the burden of maintaining, using and enforcing rights on patents.
On May 14, the National Diet of Japan passed a bill to amend the Patent Act, etc., which includes amendments to the Trademark Act and the Design Act regarding the definition of the term “importation” in order to put the brake on increasing counterfeit goods imported into Japan. It is now amended to include an act by a person in a foreign country of having another person bring products into Japan from abroad. This amendment is expected to lead to stricter border enforcement against counterfeit goods.
In a patent infringement case in which a patent owner sought damages calculated under Article 102(2) of the Patent Act, the Tokyo District Court held that Article 102(2) applies to the current case, but also that the presumption under Article 102(2) shall be overturned by 90-95%. (Tokyo District Court Judgment dated September 25, 2020 (Case no. 2017(wa)24210)).
The IP Hight Court (Case No. 2020 (Ne) 10016) judgment issued on August 20, 2020 decided on how to interpret the contractual provision which provides “the joint-owner shall forfeit its rights if the joint owner works the invention without permission from the other joint owners”.
On June 17, 2020, the Intellectual Property High Court (the "IP High Court") held that an invention regarding a composition for treating allergic eye disorder has a remarkable effect and has inventive step stating that a previous IP High Court judgment deciding that the same invention lacked inventive step does not bind the later Court on the issue of remarkable effect of the invention.
(IP High Court Case No. 2019 (Gyo-ke) 10118)
The IP High Court held that an invention entitled "method for settling Electronically Recorded Monetary Claims and a claim management server” does not meet the requirement of an invention (Article 2 (1) of the Patent Act) on the ground that its essence is exclusively directed to an arbitrary arrangement and does not utilize the laws of nature on nature's phenomena or order and therefore the invention is not a “creation of technical ideas utilizing the laws of nature” (IP High Court No. 2019 (gyo-ke) 10110, judgement issued on June 18, 2020).
In Japan, Article 102 (1) of the Patent Act presumes the lost profits of a patent owner as the amounts of damages. However, the interpretation and application of the article are still somewhat unclear and need further clarification. The Grand Panel already provided the guidance on how to calculate damages based on "Infringer's Profits" (Article102 (2) of the Patent Act) and "Reasonable Royalty" (Article102 (3) of the Patent Act) ("Previous IP High Court Judgement") (please see our newsletter of November 29, 2019). In the judgement ("Judgement"), the Grand Panel comprehensively shows the guidance for Article 102 (1) of the Patent Act. (IP High Court Case No. 2019 (Ne) 10003, Judgement issued on February 28, 2020)
In regard to two decisions by the JPO Trial Board refusing to grant patents related to CRISPR-Cas9 by the Broad Institute, part of the Massachusetts Institute of Technology and the Harvard University, the IP High Court on February 25, 2020 rescinded one of the decisions and upheld the decision of the other case.
The Intellectual Property High Court (the "IP High Court") maintained the decision of the JPO Appeal Board rejecting the registration for a defensive mark since the evidences submitted by the Plaintiff was not enough to establish that the registered trademark the defensive mark application is based on is "well known among consumers" within the meaning of Article 64(1) of the Trademark Act. (IP High Court Case No. 2019 (Gyo-Ke) 10166, judgment issued on September 2, 2020)
Under the revision of the Patent Act in 2019, the system of "on-site inspection (sasho)" will be available soon (expected to be in around October 2020) in patent infringement lawsuits, which enables to collect evidence concerning patent infringement by allowing access to premises of an alleged infringer and equipment in the premises (Articles 105-2 ~ 105-2-10 of the Patent Act). In this article, we set out below the overview of the system of on-site inspection.
The applicant (TOYOTOMI CO., LTD., the "Plaintiff") of a position trademark consisting of a three-dimensional shape of flames mirrored in the combustion cylinder of an oil stove (the "Shape of Flames") appealed to the Intellectual Property High Court (the "IP High Court") against a decision by the Japan Patent Office (the "JPO") that denied distinctiveness of a trademark finding that the Shape of Flames was intended for contribution to enhance the function or appearance of the products and had not acquired distinctiveness through use of the mark. The IP High Court also rejected the Plaintiff's claim (IP High Court No. 2019 (gyo-ke) 10125, judgement issued on February 12, 2020).
In Japan, Article 102 (2) of the Patent Act presumes the profits gained by an infringer through the act of patent infringement (namely, "Infringer's Profits") are the amounts of damages and Article 102 (3) deems an amount equivalent to the amount that the patentee would have been entitled to receive for the working of the patented invention ("Reasonable Royalty") to be the damages.
In this case, the interpretation of these articles was argued between the parties, and the Grand Panel provided guidance on how to calculate damages based on these articles.
(IP High Court Case No. 2018 (Ne) 10063, Judgement issued on June 7,2019)
In "a formulation for allergic eye disorder" Case on August 27, 2019, the Supreme Court of Japan noted that the IP High Court had erred by simply assuming that it would have been obvious to use the claimed compound for the intended purpose of the invention (i.e. medicament) without adequately considering:
On December 21, 2018, the Tokyo District Court held that a patent is infringed under the Doctrine of Equivalents, even though a claim element that was found to be not literally infringed was added by an amendment made during prosecution of the patent (Tokyo District Court, Case No. 2017 (wa) 18184).
SAPIX (the plaintiff in this case, Nippon Entrance Exam Co., Ltd.) is in the business of managing SAPIX, which is a famous preparatory school.
Entrance Exam Doctor Co., Ltd. (the "Defendant") obtained test questions made by SAPIX, published handbooks and provided commentaries on them for the students of SAPIX.
The Plaintiff, SAPIX filed a lawsuit against the Defendant seeking an injunction against the use of expressions which include "SAPIX" or "SAPIX in Katakana" and damages under Article 709 of the Civil Code, but the IP High Court rejected SAPIX's claims.
The Plaintiff, Nintendo Co., Ltd. ("Nintendo"), filed a lawsuit against KK MariCAR ("Defendant") seeking an injunction against the use of the "MariCAR" marks and "Super Mario Cart" costumes with respect to the "rental of go-carts and cosplay costumes" and damages on the grounds that the costume configuration of Nintendo's famous characters qualified as an "Indication of goods" under Article 2(1)(i) of the Unfair Competition Prevention Act ("UCPA.") The Court accepted Nintendo's claims and granted partial relief to Nintendo (Case No. 2017 (WA) 6293, judgment issued on December 25, 2017.)
Starting from October 1, 2018, the Japan Patent Office ("JPO"), has introduced a fast track examination ("Fast Track Examination") on a trial basis, where applicants can receive the first examination results about two months earlier than regular examinations.
On December 27, 2018, the Tokyo District Court issued a judgment that acknowledged trademark infringement by R&M JaPan Co., Ltd ("R&M JaPan"), who sold lighting apparatuses similar to the 3D trademark of a lamp shade by Luis Poulsen A/S ("Luis Poulsen"), named "PH-5," and awarded Luis Poulsen damages of 4.4 million JPY (Tokyo District Court No. 2017 (wa) 22543).
Asserting Japanese Patent No. 4313531 (the "Patent"), Baxalta Incorporated and Baxalta GmbH (correctively "Plaintiffs") sought an injunction prohibiting Chugai Pharmaceutical Co., Ltd, ("Chugai") from manufacturing, using, transferring, exporting, offering to transfer, and destruct Chugai's antibody drug Hemlibra(R) (emicizumab) ("the Products"). No damages were claimed in this lawsuit. The court ruled that the Products do not infringe the Patent, interpreting its functional claim narrowly. (The Tokyo District Court's judgement of March 28, 2018 (Case No. 2016 (wa) 11475))
In the first appeal case, the IP High Court held that a patent concerned did not satisfy the clarity requirement and thus invalid because a term used in the claims of the patent was ambiguous and thus unclear. The patentee removed the harmful description in the specification of the patent that could lead to ambiguity of the term concerned, and held that the patent satisfies the clarity requirement in the second appeal case.
The Grand Panel of the Intellectual Property High Court (the "IP High Court") decided that if an invention allegedly claimed to be a cited invention is a compound described in the form of general formula in the publication and the general formula has an enormous number of alternatives, it is impossible to extract a specific technical concept according to a specific alternative and find it as a cited invention unless there is a circumstance where the technical concept according to the specific alternative should be positively or preferentially selected. (Case No. 2016 (Gyo-Ke) 10182, 10184, judgement issued on April 13, 2018)
KK Shoes Selection (the "Plaintiff") filed a suit against KK Fukunaga (the "Defendant") seeking an injunction against sales, destruction of the goods and damages on the ground that the configuration of the Plaintiff's foldable umbrellas qualified as an indication of goods (the "Indication of Goods") and the importation and sales of such goods constituted unfair competition under Article 2(1)(i) of the Unfair Competition Prevention Act (the "UCPA"). The Tokyo District Court (the "Court") accepted the Plaintiff's claims and granted partial relief to the Plaintiff. (Case No. 2016 (wa) 10736, judgment issued on February 27, 2018)
The Intellectual Property High Court (the "IP High Court") reversed the decision of JPO Trial Board in favor of Red Bull on the invalidation trial regarding Red Bull marks and found the Red Bull marks to be highly famous not only for energy drinks but also for products for automobiles. (Case No. 2017 (Gyo-Ke) 10080, judgment issued on December 25, 2017)
The Japan Patent Office (the "JPO") recently amended its rule regarding the number of sub-classes that may be included in one International Class. Under the previous rule, an applicant was able to include only up to 7 sub-classes in one Class, and if the applicant exceeded this limit, the applicant was asked to show use or intent to use. However, under the new rule, an applicant is able to include up to 22 sub-classes in one Class. The new rule goes into effect on April 2, 2018.
In a judgment issued on March 24, 2017, the Supreme Court of Japan ruled on one of the requirements for finding patent infringement under the Doctrine of Equivalents, namely, that the patentee during prosecution did not intentionally exclude the equivalent product/method from the scope of the patent. The Supreme Court held that, even if an equivalent product/method could be easily conceived of by a person skilled in the art at the time of filing of the application but the applicant did cover the equivalent product/method in the claim, that does not necessary mean that the applicant intentionally excluded the equivalent method/product from the scope of the patent (Supreme Court Case No. 2016 (ju) 1242.)
Chugai Pharmaceutical Co., Ltd. ("Chugai") filed a patent infringement action in the Tokyo District Court against Iwaki Seiyaku Co., Ltd., Takata Pharmaceutical Co., Ltd., and Pola Pharma Inc. (the "Defendants") for manufacturing and selling generic drugs. In the lawsuit, Chugai sought damages caused by reduction of price of Chugai's original drug caused by price listing of the Defendants' generic drug. On July 27, 2017, the Tokyo District Court issued a judgement in favor of Chugai and ordered the Defendants to jointly pay damages. (Tokyo District Court, Case No. 2015 (wa) 22491)
On November 24, 2016, the Intellectual Property High Court of Japan (the "IP High Court") held that a patent that involves operation of online shopping malls is invalid due to lack of inventive step (IP High Court Case No. 2016 (ne) 10027).
In a case in which plaintiffs sought injunction and damages against a defendant under Article 2(1)(iii) of the Unfair Competition Prevention Act (the "UCPA"), which protects a product shape against unauthorized imitation for three years from the first sale of the product, the IP High Court held that the plaintiffs' products displayed at a trade show became protectable before the plaintiffs actually started selling the product, but also that the three-year period commenced from the date of the display (IP High Court No. 2016 (ne) 10018, judgment issued on November 30, 2016).
On March 1, 2017, the Japan Patent Office (the "JPO") made a press release stating that it issued first decisions to register trademarks that merely consist of colors. This is the first time that the JPO decided to register color marks since the JPO started receiving trademark applications for color marks in April 2015.
The Intellectual Property High Court of Japan (the "IP High Court") recently issued multiple judgments regarding product-by-process ("PBP") claims, which all held that a PBP claim is not indefinite just because a production method is included in the claim. This could be viewed as a trend towards limiting the applicability of the Supreme Court's so-called PBP claim judgment in 2015, which has been criticized for being too strict on PBP claims.
On December 19, 2016, the Tokyo District Court issued a preliminary injunction against the Defendant's operation of a coffee shop, finding that the exterior of the Defendant's coffee shop is similar to the exterior of the Plaintiff's well-known coffee shops. (Tokyo District Court Case No. 2015 (yo) 22042).
On appeal from the Japan Patent Office (the "JPO") Trial Board's decision to refuse trademark registration, the Intellectual Property High Court (the "IP High Court") reversed the JPO Trial Board decision, holding that the Plaintiff Mark "ELLEAIR (in Katakana) / i:na / IINA (in Japanese)" is dissimilar to the Cited Mark "IINA (in Japanese) / e-na", despite the finding that "i:na" and "e-na" have the same pronunciation. (IP High Court Case No. 2015 (gyoke) 10171, judgment issued on January 28, 2016)
On September 28, 2016, the Intellectual Property High Court issued a judgment in a patent infringement action involving facial care machines. In the judgment, the Court found that the patented invention lacked either novelty or inventive step due to the way a prior art device was actually displayed by the patent owner himself at an event held prior to the priority date of the patent, and held the patent invalid (IP High Court Case No. 2015 (ne) 10017).
In a judgment issued on October 31, 2016, the Intellectual Property High Court rejected the Plaintiff's claim that the Defendant's use of a similar food package constitutes unfair competition. In doing so, the court held that the food industry is inventing and developing various kinds of new products every day, and that the fact that a company has created a novel packaging design/configuration of goods does not necessarily mean that the said design/configuration will become recognized as an identification of source (IP High Court Case No. 2016 (ne) 10058).
The Amended Personal Information Protection Act (the "New PIPA") was promulgated on September 9, 2015, and will fully come into force within two years from then, most likely on April 1, 2017. The New PIPA makes several important amendments to the regulation on personal information under the current Personal Information Protection Act, with respect to issues such as sensitive personal information, Big Data, traceability and cross-border transfer of personal information. If your company runs B-to-C business in Japan or receives personal information from a company in Japan, it is recommended that you keep your eyes on the New PIPA.
In a judgment issued on March 30, 2016, the Tokyo District Court held that a patent that was granted extension of term may be enforced, not only against a product that was the subject of the disposition on which the term extension was based, but also against other products that are equivalent or essentially identical to the product that was the subject of the disposition (Tokyo District Court Case No. 2015 (wa) 12414).
In a judgment issued on December 24, 2015, the IP High Court held that a seller of chipsets is liable for the purchaser's damages caused by the purchaser agreeing to pay money to a patent owner in negotiations between the purchaser and the patent owner, because the seller failed to meet its contractual obligations to cooperate sufficiently with the purchaser in settling the dispute (IP High Court Case No. 2015 (ne) 10069).
On May 17, 2016, the Japan Patent Office ("JPO") made an announcement on bad faith trademark filings, telling legitimate trademark owners not to give up filing of new applications just because there are already prior trademark applications filed by third parties in bad faith.
In a judgment issued on November 17, 2015, the Supreme Court of Japan adopted a new standard on when a patent term extension shall be granted for drugs. The Japan Patent Office (JPO) initially ruled that, since a drug that has a certain active ingredient was previously approved for marketing, delay in approval of another drug that has the same active ingredient cannot be asserted as a basis for patent term extension, even if other elements such as dosage and administration are different from the first drug. However, the Supreme Court overturned the JPO decision and opened a room for granting patent term extension in such cases. (Supreme Court Case No. 2014 (gyo-hi) 356.)
In October 2015, the Japan Patent Office (JPO) issued the first series of decisions to allow registration of new types of trademarks based on the amendment to the Trademark Act that took effect on April 1, 2015, which newly introduced trademarks consisting of sounds, colors, holograms, motions and positions.
The Japan Patent Office (JPO) announced that it will decrease the trademark registration fee and the renewal fee. The JPO also announced that the applicants will have more options for extending deadlines for responding to office actions, by allowing an applicant to file a request for extension even after the deadline has passed. These changes will take effect on April 1, 2016.