Sekisui Chemical Co., Ltd. was denied three times on a patent application.

Sekisui filed a patent application, "Construction Method For Fire-Resistant Structure And Fire-Resistant Wall" (JP Patent Publication (Kokai) No.10-183816), on 21 October 1997, and made an amendment on the claims on 2 December 2002. The amended claims were rejected in the office action, which was the first denial. Sekisui was dissatisfied with the rejection and made another amendment on the claims on 29 August 2003. The Japanese Patent Office dismissed the second amendment again on the ground that it included matter beyond the scope of the application as originally filed. This is the second denial issued to Sekisui.

In the latter amendment, Sekisui changed the structure of the claims from the original as follows: the original claims 2 and 3 were combined to make a new claim which became claim 1, which substantially omitted the 2 original claims; and the matter in the original claim 1 was developed into new claims which became claims 2 - 5. This means 2 other claims were added to the application.

Sekisui (plaintiff) brought a suit to the Intellectual Property High Court. The plaintiff appealed that they know that amendments should be made for the purposes of restriction of claims, correction of minor errors, and explanation of unclear portions. They further argued that it was not clearly stated that the number of claims must not be increased therefore JPO cannot dismiss the second amendment because of the number of added claims.

The third denial took place when the Intellectual Property High Court rejected the appeal on 25 April 2005. The court explained that the claims after amendment are supposed to limit the claims before the amendment and the claims before and after amendment should have the same and related problems. This is premised on the understanding that each of the claims after amendment corresponds to each of the claims before the amendment respectively to compare the claims and be able to better judge their effectiveness. To add additional claims does not follow the rule, nor correspond to an amendment for restriction of claims.

● "Horiemon" is the nickname of Takafumi Horie, president of Livedoor Co. , a leading IT company in Japan. The said nickname was taken after the name of a horse Mr. Horie owns and the name of the blue cat character in the popular cartoon "Doraemon" . This year Mr. Horie sprang up to capture the public attention after he had unsuccessfully tried to buy a professional baseball team, planned to have some control over the management of Fuji Television Network Inc., and ran for a seat in the House of Representatives. His business style is unique and often generates headlines in Japan.

Some companies tried to capitalize on his popularity, and filed several applications with the Japan Patent Office to register "Horiemon" trademark in Japanese characters. The first application is No. 2005-021074 filed on February 28, 2005 by FUKUSAN KOGYO Co., Ltd. , while the similar application from Livedoor Co. is No. 2005-24418 on March 22, 2005.

Usually, trademark rights are obtained through registration on a first-to-file basis. But at the beginning of December 2005, the applications other than that from Livedoor Co. were found to have already been rejected by JPO. Because "Horiemon" is a nickname of Mr. Horie, who is considered a famous person, his approval is indispensable to acquire the trademark. So far, no company has appealed against the rejection.

●● The above ornament is used as a cell phone strap decoration. A company named Aritomi has the right for this design: No.1201825 filed on May 22, 2003.

Fore-front Co., Ltd. also manufactures and sells the almost same ornament. Aritomi requested the said company to stop selling their cell phone straps which constitutes an infringement on the latter's design right. Against the request, Fore-front Co., Ltd. (plaintiff) claimed that Aritomi (defendant) does not have a right to demand injunction for the following reasons:　1) The defendant displayed a design with all the basic and concrete structural aspects of the above design on their online homepage by themselves at least on February 27, 2003, which is earlier than the filing date. This fact is proved by the INTERNET ARCHIVE Wayback Machine, an internet library that provides online data since 1996. 2) The defendant also had sold the goods to police officials before February 27, 2003. This means the ornament had been well known before the filing date.

On 23 February 2005, the Tokyo District Court admitted the validity of the reasons and also recognized that the US website data is reliable enough as a source of information for Japanese design/patent rights.

The Chiba Lotte Marines, a baseball team, won the pennant this year in Japan. But LOTTE Co., Ltd. has already made a big hit in the chewing gum world with this product: "XYLITOL".

Since "XYLITOL Gum+2" was certified as a specified health food in 2001, the XYLITOL series has gained the largest share in the market. This series is accepted widely because xylitol is a natural sweetener, which is proven to be a cavity fighter and teeth can be recalcified by chewing them.

EZAKI GLICO CO., Ltd. is also one of the largest confectionary companies in Japan. In 2003, EZAKI started to distribute a chewing gum called "POsCAM" with the advertising slogan: "POsCAM gives 5 times greater effect than general xylitol gums".

LOTTE reacted to this advertising comparison and brought an action to the court. LOTTE pointed out that the phrase "general xylitol gums" means XYLITOL series, and threw a question on the way to yield a result. EZAKI disclosed that POsCAM had achieved a recalcification rate of 31.6% in a 4 day experiment against that of 5.9% of the general xylitol gums. However, this result is based on the degrees of decalcification, which should not be the only parameter to evaluate recalcification. Internationally, the level of mineral loss or gain is the accepted main parameter. Also, EZAKI put cow teeth instead of teeth from humans in test tubes with human saliva stimulated by chewing for their in vitro experiments, but they did not reveal it in their advertising.

On October 20, 2004, the Tokyo District Court made a decision to dismiss the appeal. The court said that decalcification also plays an important role to evaluate recalcification, and standard methods usually use cow teeth in dental experiments. EZAKI repeated the same experiment with "POsCAM" and "XYLITOL Gum+2" after LOTTE had demanded to show the same results. The method and results of the experiment are scientifically reasonable.

The POsCAM includes phosphoryl oligosaccharides of calcium (POsCa) while the XYLITOL Gum+2 includes Fukuronori extract (furanon) and dibasic calcium phosphate as the "+2" other than xylitol. These components are believed to derive different results.

How do you take care of a printer's empty ink tank? Do you put it into the dust box in your room, or bring it to a recycle box? The route an empty ink tank takes is a big deal for manufacturers.

Canon Inc. is a company with technologies in the fields of precision machinery and equipment, and some of their products can be reused, recycled, or recovered. Their ink tank, protected by a patent right (No. 3278410), is one of such products.

RECYCLE・ASSIST CO., Ltd. was charged by Canon with infringement on the patent right 3278410. The said company (defendant) imported the ink tanks manufactured by Canon originally, by way of third companies in China wherein they were collected and refilled. Then the defendant sold the tanks as recycled articles in Japan. Canon claimed that the defendant's act was another production process which should be deemed to be an infringement.

On December 8, 2004, the Tokyo District Court denied the Canon's claim. The principle of patent right exhaustion by first sale is applied to this case though the right to manufacture the patented product is effective. An ink tank has a longer service life than ink, and even after emptied and discarded, it remains in its original shape and form without any change in features or functionality. This means they are reusable enough as ink containers. In this case, the third company modified the discarded ink tanks in the way that they can be refilled with ink through a new opening on each tank. However, in spite of this modification, the recycled articles still include the features recited in the independent claims of the patent. More significantly, to recycle products and reduce wastes is very useful for the environment, and these are the facts that should be considered as a background of the judgment that the defendant's act is not another production process. Soon after the judgment, Canon appealed to a higher court.

Then on October 4, 2005, the Intellectual Property High Court announced that this case will be tried under the system of the Grand Panel consisting of five judges, because recycling is a matter of public concern and a unified judgment is expected to be issued on patent rights to recycled articles. Attention is now focused on the next judgment.

The figure on the left below shows a monkey-like animal with its right hand up rearwardly, riding on an unidentified four-legged thing. This is a registered trademark of Polo Grand Japan Ltd. (No. 3699985). The figure on the right below is a well-known logo of The Polo/Lauren Company: a polo player on a horse with a mallet being swung up. You can find differences between these two figures. But can you if these are embroidered as a small mark on a sweater or sock?

The Polo/Lauren Company Limited Partnership had demanded a trial for invalidity of the trademark on the left, but the Japanese Patent Office dismissed the demand on 29 June 2004.

The Polo/Lauren Company Limited Partnership (plaintiff) again requested for cancellation of the registered trademark in use. They claimed that the trial was based on an improper interpretation of the similarity between the two figures and the actual market conditions.

On 13 April 2005, the Intellectual Property High Court accepted their claim. Trademarks should be judged on its likeliness to cause confusion pertaining to the origin of goods on the basis of the attention paid normally by marketers and consumers in the light of the actual market. The figure on the left (the defendant's trademark) consists of two imaginary animals, one of which a monkey-like figure with its right hand raised in an unnatural position, which does not give any idea what it represents. However, the overall outline is almost the same with that of the plaintiff's logo. Moreover, when figures as such are used as relatively small distinguishing marks on clothes, the similarity raises suspicion that the defendant had the intention to use it as a similar mark, since the plaintiff's logo is very familiar in Japan. The plaintiff is highly evaluated as one of the fashion leaders and their goods are so popular in Japan that counterfeit clothing has appeared with the "Polo" trademark. In view of the well-known distinction of the plaintiff's logo, it is uncertain if consumers from teenagers to seniors can identify correctly the origin or manufacturer of goods that have the defendant's animal-like figure printed on them. This means the defendant's logo should be regarded as liable to cause confusion.

Kadokawa Holdings Inc. is a company which manages Kadokawa Shoten Publishing Co., Ltd., one of the major book stores in Japan. Kadokawa Holdings had a trademark registration as "NPO" with newspapers and magazines as its designated goods, at least until the point of final decision for registration (No. 4665822) on February 25, 2003.

Several NPOs (nonprofit organizations) stood as a party in opposition to the "NPO" trademark registration of Kadokawa Holdings to request the cancellation of the said trademark. The party consisted of Japan NPO Center, OSAKA VOLUNTARY ACTION CENTER, and four other organizations.

They claimed that:

(1) "NPO" as a specified newspaper or magazine title indicates only the content and does not have any distinctive character to distinguish the newspaper or magazine from others;

(2) since the publishing company' s trademark "NPO" has become well known to the public, it does not allow consumers to identify the source of the publications;

(3) "NPO" is a familiar term as "corporation";

(4) NPO is the famous abbreviation for "nonprofit organization";

(5) if the trademark "NPO" is obtained by someone, social contribution activities will be limited, which contravenes public order or morality and creates an environment against public welfare; and

(6) because many NPOs in Japan publish magazines and newspapers with titles that include the letters "NPO", the newspaper or magazine that has nothing to do with nonprofit organizations but only uses "NPO" as a trademark is misleading and causes misunderstandings that they are also published by such organizations.

Kadokawa Holdings disagreed with the claims pointing out that the trademark "NPO" is granted as being with distinctiveness based on the criteria for examination. It is used only for designated newspapers and magazines, and also as book titles, and not to be recognized as a trademark; the "NPO" letters can be used freely in titles without infringement. That means Kadokawa Holdings can own the right of the trademark "NPO" without causing any obstacle for NPO development.

In spite of the struggle by Kadokawa Holdings, the Japanese Patent Office made a decision on cancellation of the trademark right on May 10, 2005. The office took into consideration the fact that "NPO" is used in so many papers and books, and it is improper if possessed exclusively by someone for business benefit. The office concluded that even if "NPO" is used only for a specified newspaper or magazine, it does not allow consumers to identify the source of the publications, and whether this three-letter abbreviation is a trademark.

A judgment was made on patent statements in the field of construction.

KAJIMA CORPORATION received a warning letter from Maruyama Industry CO., LTD which said that the method and the device KAJIMA CORPORATION had been practicing and using to improve soft ground infringed a patent (JP3270968: "Method and Device for Soft Ground Improvement") licensed to Maruyama Industry.

KAJIMA CORPORATION (plaintiff) brought a suit to the Tokyo District Court for confirmation that Maruyama Industry (defendant) does not have a right to demand injunction based on the patent right. This is because the plaintiff found that there is a difference between their method and device and those of the defendant's: the former uses a strip of a water permeable material which consists of a bag-shaped fiber sheet and a plastic mould plate with uneven textures. On the contrary, the defendant's patent states the use of a strip of a water permeable material which consists of a net and a fiber sheet attached to a surface of the net. The plaintiff claimed that the elements of their device and that of the defendant's vary and do not meet each other.

There is a background on the defendant's patent: the defendant received an Office Action about the water permeable material after filing an application for its patent. Due to this, they changed its description from "a water permeable material" into "a strip of a water permeable material which consists of a net and a fiber sheet attached to a surface of the net". By this amendment, the reason for rejection specified in the Office Action was overcome. At that time, "a bag-shaped fiber sheet and a plastic mould plate with uneven textures for a water permeable material" was well known for using to improve soft ground. But the defendant knowingly excluded it and instead included a new material in their filing.

This amendment led the judgment by the Tokyo District Court to favor the plaintiff on June 23, 2004. The Court did not find replaceability between the two elements, nor did admit infringement under the doctrine of equivalents.

fig.1

fig.2

fig.3

POLA, a cosmetic company, filed an application (A) for a design registration with the above drawings as a partial design of a compact (indicated in solid lines) (application number: 2001-7968), and another application (B) with other drawings as a related design to (A) on the same day, March 22, 2003.

In both applications, the compacts include transparent lids having a front surface and a back surface, and both surfaces are provided with multiple low profile disc-like projections which are of the same size and adjacent to each other in a matrix. But these applications are different from each other on the following points:

(1) The outer frame shape of (A) is circular as shown in Fig. 1, and rectangular in (B).

(2) The lid of (A) is convex as shown in Fig. 2, and flat in (B).

(3) On the front surface of the lid in (A), 5 × 5 projections (5 in a row and 5 in a column) are formed as shown in Fig. 1. The projections have slight convex top surfaces, and those on the outer edge of the lid are cut out to fit its circular shape. In (B), 2 × 9 projections are formed with flat top surfaces.

(4) On the back surface of the lid in (A), 4 projections are united into a single pattern which distinctly manifests on the top and bottom sections as shown in Fig. 3 in red lines. Also, each projection in red lines has a slightly concave appearance. The lid of (B) has 2 × 10 projections of the same shape with those on the front surface.

(5) The projections of (A) on the back surface are only offset laterally by a radius from those on the front surface as shown in Fig. 3 while the projections of (B) are offset laterally and vertically by a radius.

Considering these features, the Japanese Patent Office denied the similarity between the two designs in a trial decision. POLA sought review of the decision claiming that the designs have a common concept for a compact, and further argued that the patent office put too much emphasis on the other parts (shown in dotted lines) for a judgment of similarity.

However, on April 13, 2005, the Intellectual Property High Court held that the decision was correct because a design as well as a partial design comprise the combination of shape, pattern, and color(s), and show integrity when observed visually. Even if the abstract concepts of the designs are common, the judgment of similarity should be made based on concrete and accurate configurations including the parts which are not to be registered so long as such parts contribute to produce different aesthetic impressions on the partial designs to be registered.

People sometimes have trouble with their hair falling out, but one hair-care company had trouble with their employees walking out.

Artnature is a company established in 1967, which had expanded and eventually merged with its affiliated subsidiaries in 2001. They manufacture and sell hair products as well as provide advice on hair restoring and hairdressing for men and women alike all over Japan.

In 2003, Artnature sued four former employees of their subsidiaries. According to the claim, the defendants founded a new company which also provides hair products and hair maintenance services based on methods and/or information they had gained and obtained from Artnature. The claim also stated the fact that the defendants had started the same type of company immediately after leaving Artnature, with whom they constitute an infringement on a duty not to compete for a period of two years after they sever their ties with the latter. In this industry, to find new customers is difficult and costs a lot of money. If employees of the plaintiff with product knowledge and business know-how are allowed to establish a new company that provides the same kind of services immediately after severance, it will be devastating to the business management of the plaintiff.

The defendants knew about the dissatisfaction of many customers of the plaintiff and their complaints of lack of maintenance services, high charges for maintenance or solicitations for new wigs, all of which were the starting point of establishing a new company. The defendants also waged a large propaganda campaign through flyers, posters, coupons, newspaper advertisements, and other forms of advertisements in the Tohoku region where the company exists.

The defendants pointed out that they had never unfairly obtained information from Artnature sources such as confidential customer list and claimed that they had acquired new customers through their campaign although some customers previously belonged to the plaintiff. Also, they insisted that they turned in a pledge card on the "duty not to compete for two years" to the affiliated subsidiaries but not to Artnature, and that the expression "duty not to compete for two years" imposes a limitation on their freedom to choose an occupation.

The Tokyo District Court ruled in favor of the defendants. According to the decision, first, the claim itself is a misfeasance because the plaintiff cannot specify when, where, and how the defendants obtained and used the information, and what types of information were in question. Second, the defendants owe a duty based on the pledge, which was handed down from the affiliated subsidiaries to Artnature. But the expression "duty not to compete for two years" should be applied to a minimum range so as not to infringe the freedom to choose occupations. This then applies to a case such as businesses performed with former employer's specific skills and business information, but not with general knowledge or experiences on typical services, which the defendants used to provide hair product maintenance and hairdressing with their new company, hence they cannot be accused of infringement.

When two retailers each have a product to sell and the product is exactly the same, the price is the most important factor for consumers when selecting a retailer to buy it.

Yamada Denki Co. and Kojima Co. are chain store retailers of home appliances. As their stores are located in common areas, they have developed a long history of rivalry in terms of price. Kojima Co. started to use comparative-pricing slogans for their advertisement in October 2002. They put out flyers and painted the walls of their stores with the following phrases:

(1) "Our prices are lower than Yamada Denki!"
(2) "We'll make our prices lower than Yamada Denki!"
(3) "If you find any of our products with price higher than Yamada Denki, please let us know, we're willing to make it lower."
(4) Note: "products for clearance, limited products, and below-cost products have the lowest price marks."

Yamada Denki Co.:
Kojima Co.:

Yamada Denki started a legal battle claiming that the Kojima advertisement had given customers the false impression that the latter had been offering customers discount greater than the former could offer, which has caused them enormous damage, and sought approx. U.S. $1.75 million (196 million yen) in compensation and a public apology.

But Maebashi District Court dismissed the claim on May 7, 2004 on the ground that there was no misleading representation or defamation in the advertising strategy of Kojima Co. because consumers are aware that the two retailers have been rivals to provide products at lower prices. Such phrases didn't make consumers believe that Kojima was selling products at much lower prices than Yamada Denki, or Yamada Denki was selling products at unreasonably high prices.

Yamada Denki appealed against the decision with additional claims that they had found out Kojima Co. has several products with higher price marks than the same ones in Yamada Denki. They also admitted that they had sent some of their representatives pretending to be customers (spies) to Kojima stores to negotiate prices with Kojima employees, but the employees did not accept the proposed prices of Yamada Denki 'spies'. In spite of this appeal made by Yamada Denki, the Tokyo High Court sided again with Kojima Co. on Oct 19, 2004.

The conclusion of the Court was based on the following points: the phrases (1) - (4) in the advertisement did not mislead consumers that Kojima was much more advantageous than Yamada; because consumers generally read the words of an advertisement with knowledge that any advertisement includes exaggerations, and that it is only one way a retailer uses to inform consumers that they provide products at lower prices. More specifically, the aforementioned phrases (1) and (2) do not include the expression of "in all products" nor are they attached to every product. Also, the number of the higher-priced products that Yamada Denki found in Kojima Co. is much smaller compared to the other several thousands of products in the latter's store. Both the aforementioned phrase (3) and the salesmanship of Kojima employees show their willingness to negotiate prices with their customers, although they did not accept the proposed prices of Yamada Denki 'spies' (they might have been aware that they were spies of their rival store). The aforementioned phrase (4), although it doesn't clearly specify which particular products can be purchased at a discounted price, shows that there is a limit for price negotiation of other products, since the aforementioned phrases (1)- (3) do not mention specific products either but only vaguely referred to them, which is understandable to customers.

Popular characters or designs on products, such as an animation hero printed on a shirt, have the power to attract customers. But the manner in which they are used depends on the intellectual property laws under which such characters and designs are protected. Then, how about a horse name?

Two software companies (appellees) produced and distributed game software using the names of famous racehorses without permission of the owners of the racehorses; Tecmo Ltd. uses Gallop Racer (click "PS2" at http://www.tecmoinc.com/), and ASCII CORPORATION uses Derby Stallion (http://ps2.gamespy.com/playstation-2/derby-stallion-04/).

The owners (appellant) then claimed that the company violated the publicity rights in the names of their racehorses and sought an injunction.

"The publicity right" has developed out of privacy rights in the U.S., and is a property right held by a person for exclusive control of his or her persona.

The Supreme Court gave judgments for both cases on Feb 13, 2004, and held that the owners cannot seek injunction against the companies, and quashed the decisions of the Nagoya District Court and the Tokyo High Court which recognized the publicity rights in the names of the racehorses.

The Supreme Court decision is based on two points: the right of ownership covers exclusively only the corporeal property, not incorporeal such as names, so if a third party uses a racehorse name to attract customers, the use does not infringe the right of ownership; the use of a racehorse name ought not to be limited without any statute defining exclusive rights to use the name which is one embodiment of incorporeal properties, and any infringement cannot take place where the scope of illegal acts of using a racehorse name is not clearly set forth in statutes, including Trademark Law, Copyright Law and Unfair Competition Prevention Law. Moreover, publicity rights basically concern human or personal dignity, which means only personal names have exclusive rights, not racehorse names or any other non-personal names for that matter.

Since there publicity rights to objects is recognized by the law especially to the names of objects in order to compete economically, the Supreme Court decision is significant in that it disposes of one unsettled aspect of publicity rights.

Full text of the judgment of for "Gallop Racer"

Under the previous version of Article 35 of the Japanese Patent Law, an employer is required to pay "reasonable remuneration" to employees who assign their patent rights to the employer. Until recently, there has been virtually no guidance from Japanese courts as to the meaning of the term "reasonable". However, in January 2004, the Tokyo District Court in Nakamura v Nichia Corp held that a "reasonable remuneration" owed by defendant Nichia Corporation to Shuji Nakamura, the inventor of the blue light-emitting diode (LED), was a whopping 20 billion yen (approx. $190 million) plus interest.

Nakamura had invented the blue LED while employed at Nichia, and received a bonus of 20,000 yen (approx. $190) for his efforts. After it became clear that this invention would be extraordinarily profitable for Nichia, Nakamura sued Nichia under Article 35 of the Japanese Patent Law, and alleged that he was owed a "reasonable remuneration" of 20 billion yen. At trial, the district court judge held that Nichia's projected profit from the blue LED would be ?121 billion ($1.15 billion), and held that a "reasonable remuneration" should be half that amount. However, because Nakamura only asked for ?20 billion in compensation, that is the amount that the district court awarded him. Nichia appealed this decision to the Tokyo High Court.

While this appeal was pending before the Tokyo High Court, Nakamura and Nichia entered into settlement agreement under heavy pressure from the court to do so. In the settlement agreement, Nakamura's total remuneration was drastically reduced to 843 million yen (600 million yen for transfer of the patent, plus interest of 243 million yen). The terms of the settlement agreement are confidential, but due to the high profile nature of this case, the Tokyo High Court published an opinion in this case which provided a method for determining what a "reasonable remuneration" is under Article 35. In essence, the court held that a "reasonable remuneration" for an invention should be an amount that would both encourage employees to innovate and allow the employer to outperform competitors in the field. More particularly, a "reasonable remuneration" should not have an undue impact on the employer's ability to conduct research and development, and should not be the same amount that a business owner would receive due to the fact that the employee assumes no business risk.

This decision caused a great deal of concern in the Japanese business community, and spurred the government to introduce new legislation to revise Article 35. This revision was approved by the Diet, and took effect on April 1, 2005. Under the revised version of Article 35, the amount that a company remunerates an inventor can be determined based on an employment contract, rules of employment, or any other stipulation, except when a court holds that the remuneration is "unreasonable". According to Article 35, remuneration will be considered "reasonable" when there is voluntary agreement between an employer and an employee regarding compensation for an invention. Article 35 also spells out the factors to be considered in calculating the amount of remuneration, such as any burdens borne and contributions made by the employer, the benefits received by the employee from the employer during his or her employment, and the profit the employer earned from the invention.

It is important to note, however, that the new Article 35 applies only to inventions that are assigned by an employee inventor to an employer after April 1, 2005. Thus, the previous version of Article 35 will still govern inventions that were assigned to an employer before April 1, 2005.