The information found or referenced herein is not intended to be legal advice or a substitute for obtaining legal advice from a licensed attorney.
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Verisign Inc. is a leading provider of Internet trust services that conducts trusted and secure electronic commerce and communications over IP networks, and retains Thawte Consulting (Pty) Ltd. which was established in 1995 and is now well-known as the second largest commercial provider of SSL certificates in the world.
On 6 September 2006, Japan Intellectual Property Arbitration Center ruled on a conflict brought by Verisign Inc. (petitioner) against a person named Mr. Masayoshi Hotta (registrant), a resident of Tokyo and owner of the domain name "THAWTE.JP", for seeking a transfer of the domain name to the petitioner.
The petitioner owns a registered trademark "THAWTE" (filed by the petitioner to JPO on 13 September 2001, registered No. 4602873). The trademark "THAWTE" is now of course famous, but was already well-known when the domain name was registered on 31 October 2001 at the latest, also in Japan.
Japan Intellectual Property Arbitration Center ordered the registrant to transfer the domain name to the petitioner on the following grounds:
(1) Since the "JP" of the domain name represents a country code (Japan's country code), only the "THAWTE" functions as the recognizable domain name, which is obviously similar to the trademark "THAWTE".
(2) The registrant has no capital or business relationship with the petitioner, and registered the domain name without any prior permission from the petitioner. So the registrant does not have any right to have the domain name, or derive legitimate profit from it. Although the registrant is not using the domain name now, it does not mean that the registrant will not use it for uncommercial purposes nor will in a fair manner. And clearly, the use of the domain name by the registrant will cause misidentification and confusion between the two "THAWTEs".
(3) The "THAWTE" is a coined term and it is highly unlikely that the registrant created the term by chance. It is believed that the registrant had chosen the domain name to obstruct the use of the trademark "THAWTE" as a domain name by the petitioner, which leads to a conclusion that the registrant unfairly owns or uses the domain name.
On 29 November 2006, the Intellectual Property High Court ruled invalid the Japanese "three-dimensional" trademark registration No. 4704439 for chick-shaped Hiyoko cakes manufactured by the confectionary HIYOKO Co., Ltd. (hereinafter, referred to as HIYOKO).
This case had been originally filed by another confectionary Nikakudo Co., Ltd. (hereinafter, referred to as Nikakudo) to request invalidation of the above trademark registration to JPO. Since JPO rejected the request on 28 July 2005, Nikakudo again brought a suit against the decision. Nikakudo (plaintiff) has manufactured bird-shaped cakes called "Nikaku no Oyako" (the left side of the above picture, "Oyako" means a pair of parent and child) for 40 years, and Hiyoko (original defendant) has manufactured chick-shaped cakes called "Hiyoko" (the right side of the above picture, "Hiyoko" means chick) since Taisho period (1910s).
In Japan, registrations of "three-dimensional" trademarks have been allowed since 1996 under the revised Japanese Trademark Law. The "Colonel Sanders" of Kentucky Fried Chicken (a doll in front of each franchise in Japan) and four-pronged concrete "tetrapod" breakwater blocks are examples of such registered trademarks. JPO (defendant) had judged the Hiyoko registration valid because consumers and dealers can easily recognize the cake Hiyoko from its product sales and broad advertising that have been going on for years. However, according to the Intellectual Property High Court, HIYOKO has their shops only in local regions in Japan, and the sales and advertising for the cake Hiyoko are done through display of the character trademark "Hiyoko" to attract attention of consumers. Moreover, across the nation, there are 23 manufacturers who sell sweets having similar bird shapes. Furthermore, historically, a similar type of sweet had already been manufactured by Toraya Confectionery Co. in Edo period (1603-1867) (see below), which means the bird (chick) shape is a traditional and an extremely common shape for sweets in Japan. Even with consideration of the high product sales and frequent advertising of Hiyoko and the well-known logo "Hiyoko", the three-dimensional trademark for Hiyoko itself has not sufficiently acquired a nationwide publicity and distinctiveness to justify legal protection.
The sweet Uzuramochi by Toraya
Medrad concluded a distributorship agreement with SHEEN MAN CO., LTD. (hereinafter, referred to as SHEEN MAN) on 1 July 1997 for the sales of an injector, and its accessories including syringes, which is a medical device having a system for injecting a contrast media into a blood vessel, manufactured by MEDRAD INC. The agreement gave SHEEN MAN the right to exclusively sell the MEDRAD products in Japan until 30 June 2001, the expiration date of the agreement. Also, Medrad concluded another agreement with SHEEN MAN and Sugan Co., Ltd. (hereinafter, referred to as Sugan), which is an affiliated company of SHEEN MAN, on a sale route to admit the sales of the MEDRAD products in Japan by way of Sugan and SHEEN MAN.
However, before the expiration date, Yoshikawa Kasei CO., LTD. (hereinafter, referred to as Yoshikawa), which had manufactured tubes for syringes for SHEEN MAN, offered SHEEN MAN the manufacture of the syringes itself. In August 2000 when it was determined that the agreement would not be renewed, SHEEN MAN accepted the offer, and then Yoshikawa started the development of a similar syringe by themselves based on the MEDRAD syringe. As a result, Yoshikawa achieved an improved syringe having a more transparent material, a longer cap, and a lure lock which is not easily disengaged compared to the original syringe by MEDRAD. Yoshikawa filed an application for manufacturing approval on 26 April 2001, which was approved by the Ministry of Health, Labor and Welfare on 11 October 2001. It was January 2002 when SHEEN MAN started regular sales of the Yoshikawa syringes by way of Sugan.
Medrad sued SHEEN MAN, Sugan, and Yoshikawa for the development of the improved syringes before the expiration date of the agreement and for their market release, as a breach of the above agreement, and sought for damages.
The Osaka District Court partly accepted Medrad's appeal, and ordered SHEEN MAN to pay around seven million dollars to Medrad.
The distributorship agreement included Article 11 Paragraph 2 that prohibited all the activities for technological development on the existing MEDRAD products such as a change, an improvement, and the like by SHEEN MAN alone without prior written consent from Medrad. Although SHEEN MAN claimed that the "activities" should be construed as those for obtaining a patent right, and basically a selection or change of materials and shapes does not fall in the category of "development", the court denied the claim. However, Yoshikawa was a third party to the agreement, thereby is not accused of breach of the agreement.
It took about 14 months from the time of the request by SHEE MAN for the manufacture of the syringes to Yoshikawa, which was before the expiration date of the agreement, to the approval by the Ministry. If the request was made on the expiration date to fulfill the agreement, the approval should have been made in August 2002. That is, the eight months between January 2002 and August 2002 correspond to the period when Medrad owed SHEEN MAN for the damage, the amount of which can be calculated to be around seven million dollars.
GUCCI is one of the most famous brands in the world, and owns several registered trademark rights in the marks GUCCI, a combination G and G, and the combinations of these (including Japanese registered trademark Nos. 1856139, 2472177, 15455439, 19642539, 4458596, 2129746, and 3344025).
On 1 December 2005, Osaka District Court ordered a Japanese company, which had cashed in on the brand awareness for GUCCI in Japan, to pay about $600,000 for damages caused by the act of infringing upon the trademarks to GUCCI, the plaintiff.
The Japanese company is LEAD Ltd. (hereinafter, referred to as LEAD) and its affiliated subsidiary MARIA Ltd., which eventually merged into LEAD (hereinafter, referred to as MARIA), LEAD and MARIA actually being the defendant in this case. The defendant was originally a general dealer that sold miscellaneous goods to pachinko parlors. Since 2000, brand-name products have come into the shelves of pachinko parlors, and the defendant began to sell fake GUCCI products (e.g., purses, wallets, belts, key cases, and the like) by purchasing those from manufacturers in Japan. Although the defendant had been aware that the prices were extremely low as brand-name products, they continued their sales, and also they started their business through auctions on the Internet, which brought them a better profit than expected until the defendant expanded their business by employing workers. However, the defendant was deluged with complaints from purchasers, and finally the police disclosed their illegal business.
The point of this case is the amount necessary to compensate for the damage. As LEAD and MARIA purchased and sold the products based on a mixed accounting, the result obtained from examined documents of MARIA, the main company in the business, has an illogical aspect:
<BUYING for auction>
So the gross profit of the auction was calculated by taking an average of the above numbers with the auction sales, and the total profit amount was obtained by adding a gross profit ($755,074) of the sales of the pachinko parlors to the gross profit of the auction, resulting in $953,355. Because the defendant was supposed to have incurred business expenses such as communication via computers, employing workers, and product delivery, the total expense of $353,900 should be deducted. The remaining difference of about $600,000 plus certain delay damage is the total amount to be paid to GUCCI for the joint illegal act during the months the defendant's business was in operation.
On 18 October 2006, SEIKO EPSON CO. lost a suit against Ecorica Inc., a recycle company which collects, refills, and sells used printer ink tanks. SEIKO EPSON has a Japanese Patent No. 3257597 entitled "Ink Tank for Inkjet Printer", which is a divisional application of a Japanese Patent Application No. 4-32226 (original patent). Although SEIKO EPSON had appealed to the Tokyo District Court that Ecorica had infringed this patent, the court rejected the appeal.
In January 2006, on a similar subject, Canon Inc. won a judgment in the Intellectual Property High Court for an infringement of a Canon's patent right by a recycler (see below "Later Life Of An Ink Tank"). However, in this case for SEIKO EPSON, the court rejection was made from a different point of view.
That is, the court judged that the patent No. 3257597 itself had to be invalid because it did not satisfy the requirements for divisional application.
The original patent claims an ink tank which includes a thin film covering an ink discharging port and is featured by an outer edge of the ink discharging port which extends beyond the film. According to the original patent, the use of a film solves a problem in the prior art that would occur when a needle is inserted for discharging ink through a rubber cock at an ink discharging port. To get through the cock, the needle has to be sharp and has to have a rather large diameter, which may be dangerous and could also lead to ink leakage. The thin film helps to avoid this possibility. However, at the same time, it is also possible that the thin film may be torn during the insertion of the needle. So, in order to prevent this risk, the outer edge of the ink discharging port is extended to the outer area of the film. This is the only description of the structure of the ink tank claimed in the original patent, which means this structure is essential for the original patent.
However, in the divisional application No. 3257597 of this case, there is no description of the structure. As long as there is no common feature description between the two applications, the application which was filed later shall not be deemed as a divisional application, but as a new application. Furthermore, even as a new application, the patent No. 3257597 is anticipated for other prior art references. SEIKO EPSON cannot claim any infringement based on an invalid application.
In November 2004, TOSHIBA Corp. filed a lawsuit against Hynix Semiconductor Japan Inc., (hereinafter, referred to as Hynix) which have imported semiconductor memory devices from Korea and have sold them in Japan, for what Toshiba said was an infringement of Toshiba's patent on a semiconductor memory (so-called NAND-type flash memory chips that are now widely used in cell phones, digital cameras, and portable music players such as Apple's iPod nano).
On 24 March 2006, the Tokyo District court ruled that Hynix had infringed on the Toshiba's patent, and the products traded by Hynix violating the patent could no longer be sold in Japan. The ruling also required Hynix to pay Toshiba about $66,000 in damages.
The patent in question is Japanese Patent No. 3187121. The ruling by the court was made based on an element by element comparison between the claims of the Toshiba patent and structure of the product by Hynix. As seen from the following elements having corresponding reference numbers, the first structure of the Hynix product has elements which meet every element included in claim 1 of Japanese Patent No. 3187121. Similarly, the second and third structures of the Hynix product satisfy claim 2 and claim 3 of the patent respectively, which is one sufficient reason for the infringement.
<Claim 1 of Japanese Patent No. 3187121>
(1) A semiconductor memory device which includes (2) a plurality of memory cells arranged in a matrix, and (3) a plurality of data registers for temporarily storing data for each column, and has (4) a page read mode for storing page data at a selected row of the memory cells into the data registers and sequentially outputting the page data in the data registers to the outside,
(5) the semiconductor memory device being operable in (6) a first mode in which a change of a selected row causes content of the data registers to be sequentially output to the external from a first predetermined column, and in (7) a second mode in which a switch of a selected row causes content of the data registers to be sequentially output to the external from a second predetermined column.
<Structure of the Hynix product>
(1)' A semiconductor memory device which includes (2)' a plurality of memory cells arranged in a row column configuration, and (3)' a page buffer for temporarily storing data for each column, and has (4)' a sequential read mode for storing page data at a selected row of the memory cells into the page buffer and sequentially outputting the page data in the page buffer to the outside,
(5)' the semiconductor memory device being operable in (6)' a read A mode in which, when data at the last column of a selected row is read out, next row is selected so that the content of the page buffer is sequentially output from a column address 0 of the selected row to the external, and in (7)' a read C mode in which a switch of a selected row causes the content of the page buffer to be sequentially output from a column address 512 of the selected row to the external.
The Tokyo District Court rejected on July 11, 2006, a request by Paramount Pictures, a US film company, to stop DVD sales of movies such as "Roman Holiday" and "STALAG 17" by First Trading Corp., a Japanese DVD sales company, on grounds that First Trading violated Japanese Copyright Law.
The above movies are well known examples of films which were released in the US in 1953. First Trading started to sell DVDs of the said movies in Japan in October 2005 at deep discount prices compared to the prices in the US.
As for a term of copyright protection for movie films, Japanese Copyright Law was once revised, and a copyright of a movie film was defined to continue for 70 years after its release. Because the term had been defined as 50 years before the revision, the revised law extended the term of copyright protection by 20 years.
Now, the revised law became effective on January 1, 2004, and since the movies in question from Paramount Pictures had been released in 1953, the term of copyright protection for the movies was to expire at 24:00 p.m. of December 31, 2003 according to the old Japanese Copyright Law. However, 24:00 p.m. of 31 December 2003 and 0:00 a.m. of 1 January 2004 stick to each other, that is, these two are the same time point. Based on this view, Paramount Pictures insisted that the copyright protection for the said movies should be extended by 20 years under the revised law.
The Tokyo District Court, however, ruled that the term of copyright protection for the movies in question had already expired on 31 December 2003 and that movie films had entered the public domain: because a term of copyright protection is defined by a unit of year and the term expires on the last day of the term year; and also, a law becomes effective on the basis of duration of "date" and not "time".
There are two Japanese registered trademarks which look similar to each other, as can be seen from the pictures below.
Malta Corp., Ltd. (defendant) manufactures and sells clothing for soccer including shirts, coats, pants, spats, and stockings to which the newer trademark of No. 4178406 is provided under a royalty license agreement with Derbystar.
Green-mate Corp., Ltd (plaintiff) is the current owner of the older trademark No. 0907295 after a few transfers between companies. Green-mate thought that Malta had manufactured some clothes which could be deemed to be "clothing except clothes for sports" with the similar trademark, and brought an action for injunction and damages against the defendant to the Tokyo District Court.
The above two registration dates show that the trademarks were registered across a long time period. During this period, Japanese Trade Law had been revised a few times. The designated goods for the trademark of the plaintiff had belonged to "Class 17 = clothing except clothes for sports" at first, and at that time, the "clothes for sports" belonged to "Class 24". After the revisions of the law, these two classes were combined into "Class 25". That is, some boundaries for the "clothes for sports" and the "clothing except clothes for sports" are overlapping in the same class, which caused confusion such as this case. In addition, over a long period, boundaries between the "clothes for sports" and the "clothing except clothes for sports" have become unclear due to changes in people's life style and taste in fashion. For example, shirts for soccer games are often worn by soccer fans, and bench jackets for soccer games are often worn as casual overcoats. However, these fashion practices and preferences are not the deciding factors to put soccer uniforms into the category of "clothing except clothes for sports".
In consideration of such background, on 29 March in 2006, the Tokyo District Court partly accepted the appeal by the plaintiff concluding that some of the clothes by the defendant should be considered as "clothing except clothes for sports", and ordered the defendant to stop the manufacture and sales of the clothes which are not uniforms: coats, long pants, and half pants for practice with the above trademark of No. 4178406, and to make a payment corresponding to the sales of the clothes back to the plaintiff.
Toray Industries, Inc. (hereinafter, referred to as Toray) owns a Japanese Patent right on an invention entitled "Filter Substrate" (No. 3161245). This patent claims non-woven fabric for a filter substrate which satisfies the following relationship:
Y/X2 equals 0.03 or more, and X equals 120 or more, where X is a fabric areal weight (g/m2), and Y is stiffness (mgf).
Against the Toray patent, Unitika Ltd. requested a trial for invalidation of the registration on 16 April 2004. During an examination for the trial, Toray attempted to correct an error in the above claim, i.e., a correction of the value 0.03 to 0.035. However, JPO not only dismissed the correction, because the alteration of the numerical range limitation is outside the scope for correction in patent application, but also held the patent invalid on 21 December 2004. JPO pointed out the incomplete description: although a value of stiffness varies depending on loading for measurement, the patent does not have any description to define loading conditions, which does not determine a value of stiffness. Toray brought a suit for the cancellation of the JPO decision.
On 6 October 2005, the Intellectual Property High Court still dismissed the appeal by Toray. According to the description of the above patent, the stiffness (Y) of the invention should be measured by using a Gurley-type tester which is supposed to bring consistent measurements regardless of loading conditions. However, Gurley-type testers are based on an approach that a person reads scales for measurements. This inevitably leads to reading errors, and the errors appear in the three places of decimals of the measurement results such as 0.035 or 0.036. That is, the "Y/X2" defined in the patent claim can be meaningful only when accurate measurements to a thousandth decimal place are obtained. In order to determine if a fabric sample is within the scope of the invention from a measurement of "Y/X2", the definition of "Y/X2" in the claim has to specify three places of decimals of the value. So, the description of "Y/X2 equals 0.03 or more" must be rendered to be imprecise.
This is a case of an invention with numerical range limitation that could not be granted a patent due to its imprecise value with respect to measurement error margin. This case is comparable to the one below (see "Hazy Particle") with its uncertain parameter definition and unclear measurement method.
Left: Seirogan by Taiko, Right: Seirogan by IZUMI
On 27 July 2006, Osaka District Court decided on a case which Taiko Pharmaceutical Co., Ltd. (hereinafter, referred to as Taiko: plaintiff) had brought against IZUMI YAKUHIN KOUGYOU CO., LTD (hereinafter, referred to as IZUMI: defendant) concerning an antidiarrheal agent called "Seirogan".
"Seirogan" is an herbal medicine in the form of soft pellet which includes creosote (wood creosote) as its main ingredient. "Seirogan" originated from a medicine called "Creosote Pellet" made for Japanese soldiers during the Russo-Japanese War (1904-1905), after which the effectiveness of the said medicine was exaggerated among people. This made the medicine popular with the nickname "Seirogan" which was represented in Kanji, one of the Japanese writing scripts, meaning, "pellets for conquering Russia" (now mostly represented in different Kanji).
Taiko asserted a claim against IZUMI for the latter's unfair competition act and violation of the former's trademark rights (for example, No. 3198876) for Seirogan based on the following background:
Taiko has been manufacturing and selling their Seirogan in a package (see the picture above) with the trademarks for more than 30 years. Currently, the Seirogan by Taiko occupies around 80% of the domestic market share on the basis of sales proceeds, as a result of their dedicated advertisement. And consumers easily recognize the Seirogan by Taiko which is common as an over the counter medicine.
Meanwhile, there are actually more than ten companies, including IZUMI, that have also manufactured and sold Seirogans for more than 30 years in packages, which some resemble each other (see examples in the picture below), that is, a rectangular orange box with letters for Seirogan on the front and back surfaces thereof. The only distinguishable difference between these boxes is a figure on the front surface. The Seirogan box by Taiko has a trumpet, and the one by IZUMI has a gourd (see the picture above). This means Taiko has not exclusively used the aspect of package design for Seirogan. In addition, because the Seirogan by Taiko occupies much less than 80% of the market share (about 60%) on the basis of sales quantity, the Seirogans by other companies occupy considerable percentages in the market share. As a matter of fact, these Seirogans are displayed in line with the Seirogan by Taiko in drug stores but each one differs in price, thereby indicating that each Seirogan is a distinct product. Because the name "Seirogan" itself does not have any indication of the origin (e.g. Taiko) of the products, and can be considered to be a generic term used to refer to the kind of medicine, the Seirogan by Taiko can be identified only by the description of the company name and the figure of a trumpet on the box. In fact, Taiko has advertised the medicine by emphasizing the trumpet figure with the phrase, "our Seirogan with a symbol of a trumpet". IZUMI placed the figure of the gourd for identification at the position corresponding to that of the trumpet, whereby it shows that these two boxes are not similar to each other. The gourd and the trumpet are the two distinguishing marks that consumers use to avoid confusion between these two Seirogans.
It cannot be denied that IZUMI selected a design aspect for its Seirogan box that resembles that of Taiko except for the gourd figure. However, as far as design is concerned with the exception of the gourd, it does not have any function to identify either Seirogans, therefore the use of the design aspect by IZUMI is not an unfair competition act against Taiko. Furthermore, the Seirogan box by IZUMI has the product name written in normal letters thereon as a mark of the generic term; so the trademark rights owned by Taiko are not effective on the mark on the IZUMI Seirogan box.
Osaka District Court concluded to reject the claim by Taiko. Taiko promptly announced their intention to appeal once again.
This case had been decided upon by JPO and supported by the Intellectual Property High Court.
An International Patent Application No. PCT/JP08-532341, entitled "New Use of Pyrazolopyridine Compound" was filed by Fujisawa Pharmaceutical Co. (now, Astellas Pharma Inc. after merger with Yamanouchi Pharmaceutrical Co.) on 18 April 1996. The above application claimed as follows:
After receiving a decision of final rejection on the above application, Fujisawa Pharmaceutical Co. (plaintiff) appealed against it to JPO.
JPO, however, issued a decision to dismiss the appeal. For a use of invention of a pharmaceutical compound, a specification needs to be written including a description that supports the effectiveness of the claimed compound with pharmacological data or other description equivalent to the data. However, the above application did not include any data or the like to concretely explain an effective behaviour of the compound, which would allow no person having ordinary skill in the art to understand the technical significance of using the compound to treat hypotension during and/or after dialysis. In addition, at the time the application was filed, no person having ordinary skill in the art had adequate technical common sense to understand the effectiveness of the compound.
The plaintiff brought a suit to the Intellectual Property High Court, and was again dismissed on 30 August 2005. The plaintiff alleged that the following points had been well known at the time the application was filed: (1) a reduction in circulating plasma volume mainly causes the hypotension during and/or after dialysis; (2) an exsanguination shock model and an LPS (lippolysaccharide) shock model, as stated in the specification, can be used to evaluate the hypotension during and/or after dialysis; and (3) the compound of the application is effective for these models. In consideration of the above points, those having ordinary skill in the art could have easily recognized the function of the compound without any additional data. The Intellectual Property High Court concluded that none of the above points had been well known at the time of the application filing, and also indicated that no mechanism has been found out yet which theoretically identifies a main factor of the hypotension during and/or after dialysis.
Papa John's International Inc. (hereinafter, referred to as Papa John's) has the right to the above trademark for pizza: No. 3199279 filed on 13 January 1994 in Japan. A company X (plaintiff) filed a suit demanding for cancellation of the registered trademark on grounds of non-use because the trademark had not been used continuously by Papa John's for three years or more. However, the JPO dismissed the demand. Although Papa John's had not been using the trademark, they had been prepared to open up a franchise in Japan and the use of the trademark was in the offing, thereby there is a fair reason for the non-use.
The plaintiff brought a suit for cancellation of the decision by the JPO to the Intellectual Property High Court, for the decision was wrong. As a matter of fact, Papa John's conducted a tour of their company for several representatives of interested companies from Japan and provided them with some samples or stuff such as shirts and cups for sales promotion, and gave them brochures to explain Papa John's' strategy to develop franchise chains in Japan. Also, Papa John's said that they had advertised to look for franchisees on their web page through the internet and in magazines such as Newsweek. However, all of these activities were done in the United States. The web page was published through a server located in the United States and written in English; and the articles for the advertisement in the magazines were also written in English. Above all, no consumer in Japan has ever tried pizza from Papa John's because it has never produced and sold pizza in the country.
The above facts can be a valid reason to derive another decision from the Intellectual Property High Court, which accepted the plaintiff's demand for the cancellation by the JPO on 20 December 2005.
Papa John's argued that there was some evidence of abuse of right by the plaintiff because the latter had filed an application for the same trademark on the day they had brought a suit for cancellation, which caused a tremendous damage to the former and was also deemed as a "ride on Papa John's coattails". The plaintiff is a company that has been producing and selling cakes using the trademark "Papa Jon's" for more than twenty years, and is the owner of trademark rights for "Papa Jon's" (No. 4251306, No. 4324338, No. 4333124, and No. 4368033). Against the argument, the Intellectual Property High Court announced that it is not illegal to bring a suit for cancellation of a prior registered trademark in order to file an application for any trademark, and that since there has been no practical accomplishment on Papa John's side in producing or selling pizza in Japan, the "free riding" theory does not hold in this case.
TEIJIN Ltd. was granted a Japanese Patent No. 3238589 titled "Biaxially Stretched Laminated Polyester Film" (US equivalent patent: No. 5,656,356) on 5 October 2002.
Against the patent, one company (TORAY Industries Inc.) had filed an objection regarding incorrect claims and inaccuracies in the patent, and TEIJIN in turn demanded correction of the patent from JPO. JPO issued a decision to approve the correction and cancel claims 1 to 4, 6, and 9 to 12 of the patent. In response to the cancellation, TEIJIN filed a (first) suit for cancellation of the decision.
While the suit had remained pending, TEIJIN also had demanded a trial for correction of the patent, but JPO rejected the demand for trial because the correction included some contents which were not described in the original patent, and some contents which were not written in literally or technically explicit phrases. TEIJIN again brought a (second) suit to the court for cancellation of the rejection.
On 18 October 2005, the Tokyo District Court struck the second demand for cancellation. The correction included a phrase that read: "(a surface layer) having a surface roughness Ra of 3 to 25 nm and the fluctuation of the roughness Ra is 3%/500 mm or less in a width direction of the film", for example, as a part of the constituent features of the invention. However, there is no written definition for the "fluctuation of the roughness Ra" in the specification of the patent. TEIJIN affirmed that "a fluctuation of surface roughness" is a value obtained by dividing the difference between the maximum roughness value and the minimum roughness value by the average roughness value, and that this definition is commonly recognized by anyone skilled in the art. Indeed, some patent documents disclose fluctuations derived by formulas under similar definition; but also, some disclose other fluctuations such as those obtained by using standard deviation or dividing by twice the average value. That is, there is no absolute definition for "fluctuation", and it needs to be clearly indicated in every patent specification.
With respect to the first suit, on 13 February 2006, the Intellectual Property High Court accepted the demand after TEIJIN had filed for another trial for correction of the patent for the purpose of restriction of claims on 11 May 2005, which was approved on 20 December 2005.
Eisai Co., Ltd., a distributor of pharmaceutical products, filed a legal action on 24 March 2005 against Taiyo Yakuhin Co., Ltd. and other eleven companies who had been distributing generic products of Eisai's "Selbex capsule 50 mg" (generic name: teprenone, hereinafter referred to as "Selbex"). Selbex is manufactured and distributed for treatment of gastritis and gastric ulcer in the form of gray-green and paleorange capsules in a silver press- through package (PTP). Since the generic products distributed by the above companies extremely look like Selbex (see http://www.eisai.co.jp/news/pdf2005101.pdf: the left one is by Eisai), Eisai complained that such look-alike products caused confusion and misidentification between Selbex and the look-alike products, and sought an injunction of unfair competition acts and compensation for damages in line with the Unfair Competition Prevention Law.
On 13 January 2006, the Tokyo District Court dismissed the complaint on Taiyo Yakuhin Co., Ltd. Any individual is free to choose the colors for goods or products that one intends to produce and manufacture, and the colors or combination of colors of goods and products are not for the purpose of identification of manufacturers or distributors. A combination of colors with letters, figures, or symbols is the visual component of a trademark; and a combination of colors with shapes or patterns of an article is the visual component of a design. If some capsules in PTP are intentionally made with a certain combination of colors to have meaning to represent its manufacturer, then the colors should have an extremely different perceptual characteristic from others; and the capsules with distinct colors and packaging must be extremely well known due to a long time exclusive selling or explosive sales. However, there are many medication products available with similar color combination in similar PTP not only for gastritis and gastric ulcer (at least 16 kinds exist for this) but also for other diseases. Also, the generic products have been distributed for 8 years after the expiration of the patent of Eisai (No. 1495088) and Eisai could not exclusively hold the market for a long time. Though Eisai insisted that medical professionals and patients distinguish Selbex by its colors and that this similarity leads to a mistake in trading the medicines, if medical experts who are required to choose medicines with greatest care identify a medication product only by its colors, it will be a critical and inappropriate behavior. It is believed that medical experts identify medication products by their names. Also, patients are only allowed to obtain this kind of medication products on prescriptions, and do not have the right to choose them. Therefore, the capsules and PTP do not fall in the "container or package of goods" in Item 1, Article 2 of the Japanese Unfair Competition Prevention Law.
The wrenches distributed by Top Kogyo had similarities with the one by ENGINEER Inc., which included a wrench with a fixed jaw and a movable jaw that had thin tip portions. ENGINEER Inc. claimed infringement of the utility model by Top Kogyo, and made a suit for compensation for financial loss incurred due to the infringement.
On 28 July 2005, Osaka District Court rendered a decision, which admitted Top Kogyo to hold their prior user right to the wrenches. There are 3 main points for the admission:
(1) When ENGINEER Inc. filed the utility model application, Top Kogyo had already had drawings to manufacture the wrenches and completed manufacturing of the molds for the wrenches, and right after the forging trial manufactures, they ordered materials to manufacture the wrenches in volume. Top Kogyo actually began to distribute the wrenches on 10 July 1989, and ENGINEER Inc. pointed out that there had been a delay in the act of Top Kogyo, which the former interpreted as an intention of the latter not to immediately work out a commercial manufacturing. However, in fact, the cause of the slowness of manufacturing was due to one material that Top Kogyo had ordered but out of JIS standard, and it took three months for the material to be available. They also needed to develop operation activities. One impediment coming after another, these reasons should not be interpreted as a delay. So, as of 7 December 1987, Top Kogyo was ready to manufacture the wrenches.
(2) Top Kogyo slightly changed the wrench size in manufacturing, on the order of 1 mm, but basically has distributed their products according to the filed applications within the scope of their business purpose.
(3) Top Kogyo developed the wrenches by themselves and finished the developments without knowing the idea of ENGINEER Inc. It is rare but possible that different parties can independently and simultaneously reach similar ideas.
TOYO SHINYAKU Co., Ltd. filed a registration application for "FLAVAN", which also has another line of term for "flavan" represented in Katakana, one of the Japanese writing scripts, below it, on 11 April 2002. This application, however, was rejected by the examiner. TOYO SHINYAKU had demanded a trial, which JPO decided to be invalid on 7 September 2004.
The JPO denied the demand on the following grounds: flavan is a substance categorized as being in flavonoids which belong to polyphenol groups, which are common in plants and used in pigments, sunscreens, antimicrobials, and antioxidants among others. This means the term "FLAVAN" only represents a raw material or quality when it is used for products which contain polyphenol, and may mislead consumers when it is used for products which do not contain polyphenol. Because of the current health boom in Japan, catechin and isoflavone, both of which also belong to polyphenol groups, have become well known and added to various food products. Flavan is not generally recognized as an important element for health so far; however, it's highly possible that it will be spotlighted in the near future. Then, since the term "FLAVAN" also means the name of a raw material within itself, every one would want to use it on his/her products. Such a generic term should not be exclusively possessed by one person/company.
Dissatisfied with this, TOYO SHINYAKU had brought a suit for cancellation of the decision to the Intellectual Property High Court. TOYO SHINYAKU tried to refute the above grounds by showing descriptions available on the internet. The descriptions only give the chemical formula of flavan or the information that it has biological or pharmacological effectiveness. Because there is no description which says that flavan can be used as a raw material of food products, consumers would not recognize the term as a name of a raw material.
The Intellectual Property High Court turned down the appeal. It is not necessary that flavan is widely recognized right now, and the possibility to be well known in the near future is enough to approve the previous decision by the JPO.
The current health boom in Japan caused ripples in some industries. Black silica, a stone found only in a part of Hokkaido in Japan, is said to have therapeutic effects. It is used as small pieces in jewelry such as bracelet and necklace, and its large rocks for baths among others.
Suzuki Tsushin has a patent right No. 2602178 for "Resin", and agreed to give an exclusive license of the patent to a certain Mr. Takada (plaintiff). The plaintiff claimed infringement of the patent by some companies (defendants) including Laboratory Of Total Environment Co. Ltd. (hereinafter referred to as Laboratory). This is the official profile of this case.
There is, however, another key company, Venture Niich Co. Ltd. who plotted the whole story, hereinafter referred to as Venture. Venture wanted to have the mineral right for black silica to predominantly hold the health business using the said stone, and established a group with other members to develop the business. Suzuki Tsushin was one of the members who supported the group.
The mineral right for black silica had been pending in court between Venture and Laboratory. Then, Venture thought that they could use the above patent because Laboratory supplies black silica to other defendants who economically support the latter and sell jewelry having black silica therein. If the defendants are ordered to stop selling the black silica products due to a patent infringement, Laboratory would be crashed and Venture could have the mineral right for black silica. So Venture asked Suzuki Tsushin to give an exclusive license of the patent to Mr. Takada who had worked for Suzuki Tsushin for a few years, in order to make him the plaintiff instead of Venture to protect their interest. Mr. Takada filed a suit denying the above background, which the defendants had revealed.
Unexpectedly, the court decision was completely different from what Venture had originally envisioned. The Tokyo District court pointed out that the patent is invalid. Because the patent claims, "a resin blended with black silica which has a function to radiate far-infrared ray", but there is no description in the patent specification which indicates that any treatments or processings are performed to make black silica have the said function; that is, black silica naturally has the said function, and the "black silica which has a function to radiate far-infrared ray" is simply natural black silica itself. Also, the two references incited in the patent specification, which indicate the use of natural black silica with a thermoplastic resin and with a thermosetting resin, are eventually equal to the Suzuki patent description.
Achilles Corporation (plaintiff, hereinafter referred to as Achilles) has the above two trademark rights (left: No. 2636168, and right: No. 1487821). Achilles had been selling pipe joints in cooperation with two companies: Kyowa Kizai Corporation (hereinafter Kyowa, a company specialized in manufacturing and sales of piping equipment) and Corporation Kyodo (hereinafter Kyodo, a company specialized in sales of rubber products for industry) (both defendants) under written agreements. According to the agreements, Kyodo was supposed to receive materials from Achilles, manufacture joints added with the above trademarks, and return the joints to Achilles. The joints were sold to Kyowa, who in turn was supposed to sell the joints to distributors. However, it was found that Kyodo and Kyowa had purchased joints from a third company and put their own trademarks such as "Achilles Joint" and "Achilles" on the joints and sold them without routing through Achilles for several years since the "Achilles joints" became well known in the industry. Kyodo and Kyowa also had put the similar trademark on packages and brochures of the joints. Achilles brought an action for injunction and damages against the defendants including the President of Kyowa in the Tokyo District Court.
The court approved the demand from Achilles and ordered the defendants to indemnify Achilles in the total amount of about four million dollars. The decisive factors for the order include: the trademarks used by the defendants were similar to those of the plaintiff; because those three companies are competitors in the same industry, the use of such trademarks makes consumers confused about the source of products; and the amount of benefit the defendants gained with the similar trademarks corresponds to the amount of loss the plaintiff suffered.
On 14 July 2005, the Supreme Court quashed the original trial decision the Tokyo District Court had made to show a limit and effect of an amendment to a trademark application.
An application for trademark registration from eAccess Ltd. is the origin of this case.
The application was initially filed by eAccess Ltd. with respect to a trademark "eAccess" with an intention for use in four commercial service fields: Classes 35, 37, 38, and 42. Because the trademark itself was similar to other registered trademarks, and the service classes being mentioned were the same with or similar to other service classes, an Office Action was issued. Then eAccess Ltd. overcome the reason for rejection by striking out Class 35 from the application. However, JPO had rendered a decision of final rejection so a suit for revocation was brought by eAccess Ltd. into the Tokyo High Court. And then, eAccess Ltd. divided the application into further divisional applications with intention to use in a service field Class 42, and made an amendment to limit the service field of the original application into Class 37, on 11 March 2005. In the same year, eAccess Ltd. again filed a divisional application for use in part of Class 37 and Class 38, and made an amendment to limit the service field of the original application into only "General building construction works" of Class 37.
The Tokyo High Court accepted the suit, and JPO in turn appealed to the Supreme Court.
The Supreme Court quashed the decision of the Tokyo District Court for the following reasons: when an original application is divided into further divisional applications and an amendment is made to the original in accordance with Article 10(1) of the Trademark Law (see below) while a suit against a JPO trial decision of rejection is pending in court, the amendment does not fall in the scope of the provision in Article 68-40(1) of the Trademark Law, which allows an amendment only during the pendency of the case in the examination, opposition to registration, trial, or retrial so as to limit a period of time for an amendment, and the amendment cannot be effective retroactively at the time of the filing of the trademark application. The rejection to the original application by JPO can be judged as correct.
Article 10 of the Trademark Law: (1) An applicant for trademark registration may divide his/her application for trademark registration designating two or more items of goods or services in order to establish one or more new trademark applications while the original trademark application is pending in the examination, trial or retrial or a suit against the JPO trial decision to reject the original trademark application that is pending in court; (2) In the case of the preceding paragraph, the new trademark application shall be deemed to have been filed at the time of the filing of the original trademark application.
On 19 June, 2002, Sankyo Ltd. (plaintiff) demanded for invalidation of JP No. 3193028 which was granted to Shoei (defendant). JPO had dismissed this demand the following year and the plaintiff again filed a suit to demand for the invalidation to the Tokyo High Court.
The above patent titled "Medicine for External Application Containing Nitroimidazole Based Compound to Treat Atopic Dermatitis" was filed for an object to find a new and effective medicine for dermatitis without any side-effect because the long use of steroid-based therapeutic products, which have been widely used, is known to cause systemic side effects.
The plaintiff pointed out the problems of the patent as follows: the application does not disclose data to prove the clinical trials described in the application; there is no information on the doctors who worked for the clinical trials, even their names; the scores to show the results of the clinical trials are unnatural; the application says that "metronidazole was found to be effective for atopic dermatitis", but the experiments conducted by the defendant do not show any effectiveness of metronidazole alone, and the base material handed to doctors for the clinical trials and experiments is extremely doubtful if it contained steroid for better results, according to the verbal evidence of the doctors. The plaintiff claimed that these facts show the clinical trials described in the application were not practically achieved.
The Tokyo High Court granted the plaintiff's claim on 18 January, 2005. The court stated that generally, the results of experiments or tests in the application are evaluated based on the premise that they are actually conducted and the results are accurately and honestly described in the application. The original document (data) should be kept by the defendant to prove the verity of the description in their application in case it is referred to a court, but the defendant discarded the document. Moreover, the above problems pointed out by the plaintiff could not be proved to be invalid by the statement and experiments by doctors who have nothing to do with the suit. An application for a patent needs a description, which proves a technical effect to achieve the object of the application; and if there is no proof of the effect, the application is incomplete and should not be granted a patent for an invention.
TOYOBO Ltd. is a company devoted to the fields of textiles, films, highly-functional materials, and bio-medical businesses. JP Patent No. 3199160 titled "Linear Low-Density Polyethylene Composite Film" (JP Patent Publication (Kokai) No.10-086300) was granted to TOYOBO. However, an objection was filed against the patent (specifically, claims 1 to 3 thereof), and JPO issued a decision to revoke the patent on April 30, 2004. Dissatisfied with the decision, TOYOBO brought a suit to the Tokyo High Court.
The claims 1 to 3 of the above patent are described as follows:
A linear low density polyethylene composite film, comprising:
a layer A of linear low density polyethylene that contains 0.3 to 2% by weight of inert particles having an average diameter of 3 to 15 m in a density of 0.88 to 0.91 g/cm3, and has a weight average molecular weight/number average molecular weight of 1 to 3; and
a layer B of linear low density polyethylene that contains 0.3 to 1.5% by weight of inert particles having an average diameter of 2 to 7 m in a density of 0.905 g/cm3 and more, and comprises a linear low density polyethylene having a higher density than that comprised in the layer A.
The linear low density polyethylene composite film according to claim 1, wherein the thickness of ratio of the layer A to the layer B is 0.01 to 2.
The linear low density polyethylene composite film according to claim 1 or 2, wherein the inert particles contained in the A layer comprises cross-linked organic macromolecules.
As seen from the above, none of the claims specify a shape of the particles to use, the significance of the described average diameter, and a measuring method. Without information on them, there is no way of knowing which particles to choose to practice the invention for those who are skilled in the art. In fact, it has been generally found that an exemplary diameter of a particle depends on its shape and measuring method; and that there are a number of methods to calculate it.
On March 3, 2005, the Tokyo District Court supported the decision by JPO stating that, in addition to the reason above, the patent does not indicate any manufacturer or trade name of particles to use, which causes a necessity to find an appropriate particle by examining commercially available particles. Such an insufficient description does not deserve a patent.
On January 31, the Intellectual Property High Court made a judgment on the appeal by Canon Inc. under the system of the Grand Panel, and overruled the previous decision of the Tokyo District Court which supported RECYCLE・ASSIST CO., Ltd. (see the article below for more information).
The ink tank, protected by Canon's patent right No. 3278410, has its unique feature which consists of two members such as sponges inside it. The members actually play an important role in the ink tank, and also in the patent right. The members are pressed against each other in the ink tank to provide a capillary force between the interfaces of the members. This capillary force between the interfaces of the members is larger than other capillary forces in each member, and due to this force, an amount of ink is easily absorbed and contained in the members without any leak in spite of the positioning of the tank; and that is what the patent claims as its hard-core feature.
Because RECYCLE・ASSIST washes the two dried members after being used and discarded to recover their original absorptive capacity, and refills with the same amount of ink as refilled by Canon, this action corresponds to a renewal of the hard-core feature of the patent right; this means Canon may exercise its patent right on the modified ink tank.
RECYCLE・ASSIST CO. claimed that such patent right exercise would be a tremendous damage to the recycling market and limits the protection of consumers and international businesses. However, the Grand Panel rejected it as an irrelevant argument from the point of view of patent right, and made comments that this judgment does not mean the inhibition of all recycling activities.
An educational corporation called Jiyu Gakuen ("学校法人自由学園" in Japanese) was established in 1921 in Tokyo. Since then this educational corporation has been developed to have a unified school education system from kindergarten to college. "Jiyu Gakuen" ("自由学園") is the abbreviation for this educational corporation, and is used for their services. "Jiyu (自由)" means freedom in Japanese.
Another educational corporation, Soshi Educational Group, established a special training school called International Jiyu Gakuen ("国際自由学園" in Japanese) in 1986, and is the owner of the trademark right for "国際自由学園" (No. 4153893).
The educational corporation Jiyu Gakuen (plaintiff) requested a trial for cancellation of the trademark of International Jiyu Gakuen in 2003. However, JPO denied the request. After the denial the plaintiff appealed to the Tokyo High Court to be granted a trial but was again denied until the Supreme Court made a decision in July 2005 on this matter.
The Supreme Court overruled the decision of the Tokyo High Court and ordered to return the matter back to the original decision maker for the reasons as follows: abbreviations should be protected when they are widely accepted as names which indicate the originals; and because "Jiyu Gakuen(自由学園)" is well known among people, the main reason stated by the Tokyo High Court that "Jiyu Gakuen(自由学園)" is a part of the trademark "国際自由学園" and the part "Jiyu Gakuen(自由学園)" is not recognized enough by the students of the special training school as another school is wrong.
On 27 December in 2005, Intellectual Property High Court rendered a judgment stating that the abbreviation is famous enough and it is inappropriate to grant a trademark which includes it to the third party without admission by the plaintiff, and at last the educational corporation Jiyu Gakuen won the reversal of a decision by JPO.
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