【일본】 일본 IP 정보 (by 일본변리사 정원기)
AIDA & JUNG
PATENTS, TRADEMARKS and DESIGNS
The only Japanese patent office managed by a Korean
Japan IP Information (by Japanese Patent Attorney Won-Ki Jung)
I. Patent Case Law by Issue: Addition of New Matter
- Principle : The criterion is whether new technical matter is introduced, with explicit description + self-evident matter
(Solder Resist case, IP High Court Grand Panel, judgment of May 20, 2008 (Heisei 20) ) - Reference Case 1 : [Heating system for high-insulation, high-airtightness houses] 2009 (Heisei 21) (Gyo-Ke) No. 10175
Claim : [High-insulation, high-airtightness house]
Amended claim : [High-insulation, high-airtightness house with a heat loss coefficient of 1.0-1.5 kcal/m2.h.℃]
Conclusion : Not an addition of new matter.
Points to note
- Reversed at the IP High Court, Judge Iimura
- Divergence from the examination guidelines—there was no description in the specification.
- Amendment to the preamble of the claim
- A new logic: whether the added matter corresponds to matter having technical significance contributing to solving the problem of the invention; in other words, in this case, it cannot be said that, as before the amendment, the added matter includes technical matter relating to the problem to be solved and the means of solution of the present invention.
- Reference Case 2: [Mobile phone terminal] 2009 (Heisei 21) (Gyo-Ke) No. 10303
Claim : Multiple functions were made operable.
Amended claim : Multiple functions, including a clock function, an address book function, a function of converting voice into electrical signals by a microphone, and a function of converting electrical signals into voice by a speaker, were left operable as is.
Conclusion : Not an addition of new matter.
Points to note
- Dismissal of an amendment made after a request for an appeal against a refusal; reversed at the IP High Court, Judge Iimura
- "Microphone" and "speaker" were not described in the original specification. Subordinate concepts were added.
- Whether it falls under the [rectangular workpiece] type in the examination guidelines
- Was it not regarded as new matter from the perspective of overcoming the inventive-step ground for refusal?
- Reference Case 3 : [Coating apparatus] case — Listed in the Japanese examination guidelines. [Rectangular workpiece] type. The specification explicitly states that the coating target of the coating apparatus of the present invention is a [workpiece] such as a glass substrate or a wafer.
Example in the specification : Only nearly square workpieces. But, since a rectangle is the representative shape of a representative glass substrate, amendment to [rectangular workpiece] is OK!
II. Latest Trademark Case Law
- Agile [アジル] case (Tokyo District Court judgment, Feb 27, 2015) - Customer-attracting power of non-used goods
- Registered trademark: a mark with アジル and Agile written one above the other; designated goods: clothing, footwear, etc.; subject trademark: agile; goods used: footwear
- Issue : Not similarity, but the method of calculating damages
- Conclusion : Damages of 10.62 million yen (about 100 million) were claimed, and damages of 570,000 yen (about 5 million KRW) were recognized.
- Facts and mutual arguments : The designated goods footwear of the registered trademark were cancelled for non-use. Therefore the defendant argued that there is no customer-attracting power for footwear.
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Judgment
As long as the plaintiff's trademark is used on clothing, footwear also has a certain degree of customer-attracting power, contributing to some extent to the defendant's footwear sales.Determination of the royalty rate
According to a survey by Teikoku Databank (a private company), the royalty rates for 7 trademarks relating to clothing and footwear ranged from a maximum of 7.5% to a minimum of 0.5%, but the plaintiff's royalty rate was set at 0.3%, lower than the minimum.
The amount of damages was set at about 580,000 yen, which is 0.3% of the plaintiff's footwear sales of about 193.27 million yen.
As for litigation costs, 1/20 was to be borne by the defendant and 19/20 by the plaintiff.
- Comment
In fact the plaintiff lost, but it is considered a meaningful judgment in that it held that customer-attracting power remained even for goods whose registration had been cancelled for non-use, and the defendant must prove that its business was conducted solely through its own customer-attracting power.
- Indian Motorcycle case (Tokyo District Court judgment, Mar 27, 2015) - Abuse of rights
- Plaintiff's trademark
- Defendant's trademark
- Background : The plaintiff's trademark originally derived from a famous motorcycle brand, like the brand of harley-davidson in the US; after suspension of operations in 1953 and dissolution in 1959, it was revived as a Japanese trademark through various developments
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Judgment
After the well-known US trademark had been extinguished, it falls within the scope of free competition for the plaintiff and the defendant, who are unrelated to the US Indian company, to acquire the related trademark. Therefore there is no problem with the plaintiff registering the well-known US trademark as its own, and its exercise of rights is also legitimate.
However, at least with respect to the defendant, the court held that it constitutes an abuse of rights. In 1994, when the plaintiff filed the application, the defendant had taken over the business from the new Indian company and was developing its business, and this fact was fairly well known among motorcycle enthusiasts and consumers and traders interested in American casual fashion; the basis for the abuse-of-rights finding is that the plaintiff could not have been unaware of this series of acts by the defendant.
The trademark application in this case was made by taking advantage of the business development of the new Indian company and the defendant, with the aim of obstructing the defendant's business development, and the plaintiff's exercise of rights, at least with respect to the defendant, disrupts the fair order of competition and constitutes an abuse of rights that can no longer be said to fall within the scope of free competition.
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Comment
After the well-known US trademark had been extinguished, it falls within the scope of free competition for the plaintiff and the defendant, who are unrelated to the US Indian company, to acquire the related trademark. Therefore there is no problem with the plaintiff registering the well-known US trademark as its own, and its exercise of rights is also legitimate.
However, at least with respect to the defendant, the court held that it constitutes an abuse of rights. In 1994, when the plaintiff filed the application, the defendant had taken over the business from the new Indian company and was developing its business, and this fact was fairly well known among motorcycle enthusiasts and consumers and traders interested in American casual fashion; the basis for the abuse-of-rights finding is that the plaintiff could not have been unaware of this series of acts by the defendant.
It does not meet the requirements of a prior user's right, but it was judged to be an abuse of rights.
Whether it constitutes a ground for invalidation for violation of public order and morals: Since the restriction on the exercise of rights applies only with respect to the defendant, it is interpreted in a narrower sense than public order and morals.
- Plaintiff's trademark
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