Newsletter (No.43) September 2024

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We are now introducing practical legal information on our homepage which especially focuses on Court Decisions related to IP rights.

http://www.nakapat.gr.jp/en/legal_updates_eng/

 This Newsletter summarizes legal information updated in the latest one month.

*PATENT

［Patent★★] Patent Administrative Litigation “Antigen Binding Proteins to Proprotein Convertase Subtilisin Kesin Type 9 (PCSK9)”: A case in which the Intellectual Property High Court rejected the logic that the support requirement is satisfied by reciting a particular effect in the claim concerning a functionally expressed reach-through claim unlike the final judgment in the previous case.

Intellectual Property High Court Case No.10093 (Gyo-ke) 2022, January 26, 2023

[Patent★] Patent Administrative Litigation “Marine Vessel” Case: The fourth case in which the Intellectual Property High Court recognizes an inventive step through a “Disclaimer”．

Intellectual Property High Court Case No.10151 (Gyo-ke) 2021, August 23, 2022

[Patent★] Patent Infringement Litigation “Massage Machine” Case: A case in which the decision of the Osaka District Court was reversed and the alleged infringing products were determined to be included in the technical scope of the patented invention. A case in which the court held that Article 102, Paragraph 2, of the Patent Act is applicable when the patentee’s products and the infringing products compete abroad. A case in which the court indicates the norm regarding the overlapping application of Article 102, Paragraph 3, of the Patent Act in relation to the portion of the presumption overturned by Article 102, Paragraph 2, of the Patent Act.

Intellectual Property High Court Grand Panel Case No.10024 (Ne) 2020, October 20, 2022

[Patent★] Patent Infringement Litigation “Bone Fracture Fixation System” Case: A case in which the Intellectual Property Court approved the application of Article 102, Paragraph 2, of the Patent Act based on the fact that a group company which is a wholly owned subsidiary of a common ultimate parent company embodies the patent right when said group company sells products.

Intellectual Property High Court Case No.10091 (Ne) 2021, April 20, 2022 (Presiding Judge Honda) 

*TRADEMARK

【Trademark Act★】A case in which the Intellectual Property Hight Court determined as similar (falling under Article 4, Paragraph 1, item 11 of the Trademark Act) comparing the following cited trademark with the part “Ｏ！Ｏｉ” of the following registered trademark by separating and observing the main elements of a composite trademark, and revoked the JPO’s decision which determined as dissimilar (not falling under the above provision).

Registered Trademark   Cited Trademark   Intellectual Property High Court Decision of December 4, 2023 (Case No. 10067 [Gyo-ke] 2023―Presiding Judge Honda)  

【Trademark Act★★】A case in which the Intellectual Property High Court upheld a decision for rejection on the application for a trademark consisting only of the combination of a shade of orange (RGB combination: R221, G103, B44) for the entire box and a shade of brown (RGB combination: R94, G55, B45) for its upper perimeter, denying the acquisition of the ability to distinguish one’s own and other goods and services through the use and advertising of packaging boxes (commonly known as “orange boxes”) bearing the trademark applied for in relation to the designated goods and services in general, including goods and services not using the trademark applied for, based on the ability of general consumers to recognize the goods or services, and maintaining in its decision that Article 3, Paragraph 2, of the Trademark Act was not applicable.

Figure 1. Trademark as applied for   Intellectual Property High Court Decision of March 11, 2024 (Case No. 10095 [Gyo-ke] 2023―Presiding Judge Miyasaka)