Nishimura & Asahi updates

Similarity of device marks to be used as stitched ornamental marks
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • December 04 2017

A Japanese company recently claimed that a Chinese company's trademark should be invalidated due to its similarity with the plaintiff's trademarks and the likelihood of confusion as to the source of the designated goods. Although the Japanese Patent Office Trial and Appeal Board rejected the plaintiff's claims, the IP High Court overturned this decision. The conclusive factor in the case was the way in which the similarity of marks should be assessed when they are intended to be stitched on certain goods.

Fintech patent infringement litigation between venture businesses
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • November 13 2017

The Tokyo District Court recently rendered its judgment in a patent infringement case regarding fintech-related technologies. This case has been widely reported on in Japan because both parties are major venture businesses and leaders in the Japanese fintech market. This case is also notable as the defendant's cloud-based accounting system involved machine-learning technologies and disputes of this nature are expected to increase.

Can you register a parody trademark?
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • June 19 2017

The registrant in a recent case registered the trademark FRANCK MIURA in Japanese katakana and Chinese characters with regard to its lookalikes of Franck Muller's well-known luxury watches. However, while the watch designs resembled each other in their entirety, the design similarities were not at issue in this case. Rather, the case centred on the similarity of, and the likelihood of confusion between, the trademark and three prior FRANCK MULLER marks.

Trademark procedures and strategies
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • May 01 2017

The Trademark Law and its related regulations govern the registration and protection of trademarks in Japan. The Examination Guidelines for Trademarks also play an important role in the examination of trademark applications at the Japan Patent Office. Revisions to the examination guidelines are underway and additional revisions (eg, guidelines on judging the similarities between trademarks) are under discussion.

Package design protection in Japan
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • January 30 2017

When used consistently, package designs can act as brand symbols and identifiers. As such, they are increasingly valuable to brand owners. However, if a package design is used or imitated by third parties, its value to the brand will decrease and may even disappear. In order to prevent third-party use or imitation, brand owners should protect their package designs. The simplest way to do so is to obtain an industrial design or trademark registration.

Suntory and Asahi settle non-alcoholic beer patent litigation
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • October 31 2016

Suntory Holdings KK and Asahi Breweries, Ltd recently reached an amicable settlement based on the IP High Court's advice. Suntory, which owned the patent for a non-alcoholic beer-flavoured drink, had brought proceedings against Asahi, alleging that its manufacture and sale of the non-alcoholic beer Dry Zero constituted patent infringement. Although details of the settlement are confidential, it is believed to have been favourable to Asahi.

Inventing on the job; who holds the rights?
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • June 06 2016

Recent patent law amendments have made it easier for employers to retain exclusive rights to employee inventions. The amendments enable employers to abolish employees' patent rights to inventions created during the course of their employment. In addition, new government guidelines aim to reduce ambiguities concerning payments that should be made to employee inventors when abolishing these rights.

IP High Court refuses copyright protection for catchphrases
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • May 02 2016

The IP High Court has upheld a Tokyo District Court decision that denied legal protection of catchphrases used to promote the plaintiff's English language school. The court ruled that the catchphrases were "ordinary and common" expressions and thus not eligible for copyright protection; further, they could not be protected as indications of goods under the Unfair Competition Prevention Law or under general tort law pursuant to the Civil Code.

IP High Court rejects non-use cancellation action for EUROPEAN mark
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • February 29 2016

The IP High Court has upheld the Japan Patent Office decision that rejected the non-use cancellation action sought against the registration for the trademark EUROPEAN (in Japanese katakana) with respect to the designated goods "coffee and cocoa, coffee beans" in Class 30. However, the decision has been widely criticised, with many contending that the mark should have been cancelled for lack of distinctiveness.

Imitation of configurations under Unfair Competition Prevention Law
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • December 21 2015

The Tokyo District Court recently issued a decision under the Unfair Competition Prevention Law, holding that the defendant's sale of ladies' apparel with a similar configuration to that of the plaintiff constituted an act of unfair competition. The court ordered the defendant to pay compensation of damages, but refused to order the defendant to advertise an apology.

IP High Court rejects unfair use cancellation action for footwear trademark
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • October 26 2015

The IP High Court has upheld the Japan Patent Office (JPO) trial decision rejecting the unfair use cancellation action brought against the SENTCOMEX trademark used for footwear. The court ruled that the defendant's use of its SENT COMEX trademarks – which the plaintiff alleged to be similar to its own COMEX trademark used for mules and sandals – did not cause confusion with the plaintiff's goods.

IP High Court finds manufacturer and reseller jointly liable for patent infringement
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • August 03 2015

Many patent infringement cases involve several defendants, such as manufacturers and resellers of infringing goods. A recent case before the IP High Court illustrates the factors that must be considered in establishing joint tortfeasor liability in patent infringement suits. In particular, an objective – rather than subjective – connection among the tortfeasors must be proved to hold them jointly liable.

Tokyo District Court denies breeders' rights under Plant Variety Act
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • April 27 2015

A recent case clearly shows the difficulty faced by plaintiffs in substantiating infringement of breeders' rights under the Plant Variety Act. It also highlights the act's lack of a provision similar to Article 104-3(1) of the Patent Law, which provides that in patent infringement litigation, the patentee should not exercise its right against the other party where it is recognised that the patent should be invalidated.

IP High Court rules 'Mount Asama' cannot be registered as a beer name
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • November 03 2014

The IP High Court has upheld the Japan Patent Office's rejection of the trademark ASAMAYAMA ('Mount Asama' in Japanese) for beer. Notably, the court ruled that ASAMAYAMA was not a distinguishable mark, even though a previous registration existed for the mark ASAMAYAMA for similar designated goods.

Tokyo court admits repudiation of assumed damages under Patent Law
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • July 28 2014

Following an IP High Court decision which admitted assumed damages for patent infringement under Article 102(2) of the Patent Law, the Tokyo District Court likewise admitted the application of Article 102(2) in a recent case. However, the court also admitted a repudiation of the assumption under Article 102(2) and thus accepted a reduction in damages suffered by the patent owner.

IP High Court lacks HEART in cancelling mark for unfair use
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • April 07 2014

The IP High Court has upheld a Japan Patent Office decision cancelling the trademark NURSE®/HEART/NURSE HEART for unfair use for magazines. The court ruled that the trademark owner's subsequent use of the HEART and HEART® marks, which were similar to the petitioner's HEART NURSING trademarks, intentionally caused confusion with the petitioner's magazine.

IP High Court allows assumed damages under Article 102(2) of Patent Law
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • October 07 2013

There has long been disagreement among IP scholars and the courts as to whether Article 102(2) of the Patent Law applies in the determination of damages where the patent owner does not practise or work the patented invention in question. An IP High Court decision has provided welcome clarity on the matter, but has also raised further questions.

IP High Court upholds INTELGROW trademark
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • July 08 2013

The IP High Court recently upheld the Japan Patent Office's refusal to grant Intel Corporation's request to invalidate the registration for the INTELGROW trademark for construction-related goods and services. However, there has been much criticism of the court's decision, and it is believed that the court's reasoning would not withstand the further criticism of foreign observers of international trademarks.

IP High Court confirms cancellation of mark for unfair use
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • April 15 2013

The IP High Court has affirmed a Japan Patent Office trial decision that admitted a cancellation action for unfair use against the registration for the mark MULTIPROGREENS/ MULTIPROGREEN (in Japanese Katakana) for designated goods in Class 30. The court ruled that the use by the trademark owner of its mark was intentional and caused confusion with the goods handled by the petitioner.

TARZAN trademark invalidated by IP High Court
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • November 19 2012

The IP High Court recently reversed a Japan Patent Office trial decision that refused to invalidate the trademark registration for the mark TARZAN (in Japanese Katakana) for "plastic processing machines and apparatus, automatic extruding robot for plastic extruding machines and chuck (machine elements)" in Class 7. The court invalidated the mark for being liable to "contravene public order or morals".

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