Newsletter (No.41) March 2024

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

Ranked "Outstanding" in Asialaw 2022/23 Rankings

*PATENT

[Patent★] Patent Infringement Litigation “Device for displaying ladder circuits in the event of an abnormality in a programmable controller” Case: A case in which the Intellectual Property High Court held that each existing component was considered an essential component for the solving the problem of the invention. A case in which the Intellectual Property High Court held that it is sufficient for the defendant to recognize and acknowledge that there is high probability that persons within the range of non-exceptional cases will use the accused product to infringe the patent.

[Patent★] Patent Infringement Litigation “Electroformed Tube” Case: The first and only lower court case to require “impossible or impractical circumstances” with respect to clarity requirement of a product invention specified by a manufacturing method, and to hold that the clarity requirement was violated.

[Patent★★] Patent Infringement Litigation “Image Forming Apparatus” Case (A case in which a divisional application was filed from a parent application to a child application and then to a grandchild application, the court held that the filing date of the grandchild application was retroactive only until to the actual filing date of the child application on the grounds that the child application was illegal for violation of divisional filing requirements and addition of new matter, and denied inventive step based on publicly known documents after the filing date of the parent application but before the actual filing date of the child.)

*TRADEMARK

【Trademark Act★★】A case in which the Intellectual Property High Court held that the defendant’s following indications 1 and 2 which consist of the words “バレナイ” and “二重” in two columns above and below on a black background are not similar to the plaintiff’s trademark 1 which consists of “バレないふたえ” in standard characters and the plaintiff’s following trademark 2 which consists of the words “バレない” and “二重” in two columns above and below. A case in which given the above, the IP High Court dismissed the appeal against the original judgement in which the district court dismissed the plaintiff’s assertion of trademark infringement on the ground that the defendant’s indications are not used as a trademark (Article 26, Paragraph 1, Item 6 of the Trademark Act).

【Trademark Act★★】A case in which the Intellectual Property High Court held that the applied trademark which consists of standard character “VENTURE” is dissimilar to the following cited trademark which consists of a large Chinese character “遊” in brush-style typeface at the top center and the Roman characters “VENTURE” in Gothic-style typeface at the bottom and not applicable to Article 4, Paragraph 1, Item 1 of the Trademark Act, and reversed a trial decision of rejection by JPO which decided them to be similar and applicable to the said provision.

*DESIGN

Simple introduction for many cases.

*IP GENERAL

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

Hideki Takaishi (Attorney at Law & Patent Attorney) (Publishing Manager)

Nakamura & Partners

Room No. 616, Shin-Tokyo Building, 3-3-1 Marunouchi, Chiyoda-ku,

*The content of this newsletter provides general information and is not legal advice.