A decision of rejection made by the JPO was affirmed by the Intellectual Property High Court on 20 July 2006.

The company who filed the appeal over the rejection is SAKATA SEED Co., a breeder of vegetable and flower seeds.

SAKATA filed a Japanese trademark application No. 2000-137808 consisting of four Japanese Katakana characters for "Andes". The designated good for the trademark belongs to a type of melon. "Andes" is the name of a greenhouse-type melon cultivar bred, and, the seeds of which are sold solely by SAKATA.

The JPO stated that "Andes" is now widely known and recognized only as one cultivar name of a melon by dealers and consumers, that is, it does not have distinctiveness. The exclusive use of "Andes" by SAKATA as a trademark is not appropriate because a huge number of people related to "Andes" from farmers to retail sellers use the mark "Andes". To the contrary, after selling the seeds, Sakata does not involve itself at all in the later processes such as time and amount of harvest, and supply to the market, therefore SAKATA does not have the right to control the name "Andes" by and for themselves.

The Intellectual Property High Court backed up the JPO decision for the same reason. The Court also dismissed SAKATA's appeal with respect to another point the latter had complained stating that the rejection by the examiner was based on Article 3, 1-i of the Japanese Trademark Law, and that the JPO made a decision on the ground of Article 3, 1-iii of the same law. Both the rejection and the decision were made substantially on the same basis of consideration, and the latter did not show another reason for the rejection.

Trademark Law

Article 3. (Requirements for trademark registration)

1. Any trademark to be used in connection with goods or services pertaining to the business of an applicant may be registered, unless the trademark:

(i) consists solely of a mark indicating, in a common manner, the common name of the goods or services;

(iii) consists solely of a mark indicating, in a common manner, in the case of goods, the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use, or, in the case of services, the location of provision, quality, articles to be used in such provision, efficacy, intended purpose, quantity, modes, price or method or time of provision.

This is a case where a JPO decision was cancelled.

SANDEN Co., Ltd. filed Japanese Patent Application No. 06-322201, entitled "Optical Detecting Section Of Sheet Discriminating Apparatus" on 26 December 1994. Upon a receipt of the final decision of refusal of the application from the examiner, SANDEN demanded a trial against the decision on 19 September 2003. The JPO had dismissed the demand, and SANDEN filed a suit for cancellation of the final decision.

The JPO listed the differences between the Application and the referenced documents as follows, but still stated that the invention of the SANDEN application is only a variation of conventional design and could be derived by the ordinary person skilled in the art from the known techniques:

<Claim 1 of the SANDEN application>

1. 　An optical detecting section of sheet discriminating apparatus^*(3), characterized in that it comprises:

Differences
*(1) No description can be found in the referenced documents about the direction which is not the same as the predetermined direction.
*(2) No description about the arrangement can be found in the referenced documents.
*(3) The referenced documents disclose an apparatus for detecting laminated state of sheets.

On 29 June 2006, the Intellectual Property High Court overruled the JPO decision. According to the specification of the SANDEN application, the invention was made based on an idea to use a pair of light emitting/receiving elements, that is a plurality of detection lines, to analyze a transmitted light to discriminate a sheet such as paper currency and ticket. The referenced documents do not disclose any technical idea that specifies the use of a plurality of detection lines, but an only one detection line. These inventions, which started from such different premises, should be considered to have different functions and effects, as a result. Although an apparatus for detecting laminated state of sheets and a sheet discriminating apparatus belong to technical fields that are close to each other, the difference is not negligible and there should be a strong motivation to switch the structure for counting the number of laminates of sheet to the structure to analyze the authenticity of sheet. Moreover, the idea of a plurality of detection lines is not necessary to an apparatus for detecting laminated state of sheets, but is significant to the SANDEN application.

In other words, the structure based on the idea of a plurality of detection lines and having the above three different configurations is not a simple variation of conventional design and was not obvious from the prior art.

Horphag Research Ltd. is a company in Switzerland that has researched and developed natural and nutritional product ingredients, and is the exclusive supplier of Pycnogenol brand, a French maritime pine bark extract. The registered trademarks for polyphenols of the French extract include Pycnogenol and Flavangenol, which contain OPC (Oligomeric Proanthocyanidin, a strong antioxidant) with different contents and compositions therein from each other. The latter's trademark is owned by Toyo Shinyaku Co., Ltd., a Japanese company.

Horphag demanded a trial for invalidation of Claims 1 and 2 of Japanese Patent No. 3533392 owned by Toyo Shinyaku in 2005, and JPO approved the demand for Claim 1 but dismissed the one for Claim 2. Horphag had further demanded cancellation of the decision for Claim 2, which was approved by the Intellectual Property High Court on 13 November 2007.

Claims of the Toyo Patent:

1. An external preparation for skin containing: proanthocyanidin; and
proteolytic peptide having a mean molecular weight of from 3000 to 7000,
the proanthocyanidin containing proanthocyanidin dimmer to tetramer of 1 part by weight or more relative to proanthocyanidin pentamer or more of 1 part by weight.

2. The external preparation for skin according to claim 1, wherein
the peptide is collagen-derived peptide.

The Toyo Patent No. 3533392 is an invention relating to an external preparation for skin containing proanthocyanidin, which may be from a plant extract. Since proanthocyanidin is likely to bind to protein and degrades the skin conditioning properties, the content of proanthocyanidin and the ratio of proanthocyanidin to peptide are the key point of the invention.

However, as Horphag argued, the examples described in the Toyo Patent partly use Flavangenol itself as a part of proanthocyanidin in an extract to be combined with collagen peptide, and the comparative examples also use some processed Flavangenol, which means the test conditions do not belong to the prior art. And also, each of the comparative examples uses a different amount of catechin which should be included as an element of the extract, which is not appropriate for the test condition to support the description of Claim 1. Moreover, the Toyo Patent referred to more than 20 documents providing the description, and detail examination of which showed that the invention could be readily appreciated based on some of the documents. Being the dependent claim of Claim 1, Claim 2 should be considered invalid.

The case Canon Inc. vs. Recycle Assist Co. Ltd. was concluded by the Supreme Court on 8 November 2007. The Supreme Court dismissed the appeal by Recycle Assist, and Canon won the patent lawsuit (see the previous related articles below: "Unstable Life Of An Ink Tank" and "Later Life Of An Ink Tank").

The Supreme Court made the decision based on the principle of patent exhaustion. The principle is not applied if:

(i) the product is reused or recycled after its durability period and reasonable given time of function; or

(ii) the essential elements of the patented invention are replaced or processed in whole or in part.

The Canon's product does not fall in the category (i) as indicated by the decision made by the Tokyo District Court. However, the Recycle Assist's act includes rinsing off the ink that is left inside the tank after use, and refilling of new ink. This process falls in the above category (ii).

The original ink tank does not have any opening for refilling ink to prevent degraded print quality and failure of a printer, but Recycle Assist opened a hole in a used tank to refill ink and closed the hole after the refilling, which is considered a modification of the tank. Moreover, the refilled ink allows the interfaces thereof in the tank to recover the function of preventing any leakage of the ink, which is essential to achieve the object of the Canon's patent. That is, Recycle Assist enabled the essential effect of the patent to be exerted in a new tank product which is not substantially the same as the original product manufactured by Canon.

Under the patent protection, the patent exhaustion principle was not applied to the case, and the Supreme Court allowed Canon to seek injunction against Recycle Assist's import and sales of the Canon ink tanks which were sold domestically and overseas.

Toko Pharmaceutical Industrial Co., Ltd. owns Japanese Registered Trademark No. 3260011 consisting of Japanese 5 letters (on the left below). The designated good for the trademark belongs to Class 5 (Pharmaceuticals, etc.). The trademark is used on a package of an analgesic antipyretic drug, accompanied by the mark "EVEPAIN", as seen in the picture on the right below, by a licensee company of the trademark. The mark "EVEPAIN" is a variation of the Toko's trademark as an English expression for the trademark, and both have the same pronunciation: the first two letters from the left are read and pronounced just like the word "EVE"; and the three remaining letters are read as "PAIN".

SSP CO., LTD. owns Japanese Registered Trademark Nos. 1598640 (on the left below), 3065022 (in the middle below), and 3065023 (on the right below), all of which belong to Class 5. The SSP's trademark, as seen in the picture on the right, is used for an analgesic antipyretic drug.

SSP had demanded a trial for cancellation of the Toko's trademark to avoid confusion in accordance with Article 53 (1) of the Trademark Law, but JPO decided that the demand could not be made because the mark "EVEPAIN" was one inseparably connected word and was not confusing with the SSP's trademarks. SSP brought a suit for cancellation of the decision to the Intellectual Property High Court.

On 28 February 2007, the Intellectual Property High Court cancelled the decision made by JPO. The SSP's drug product is well known and is distinct due to outstanding advertisements since 1986, and was already the No. 5 ranking product in terms of the domestic market sharing in 2004 before the filing of the Toko's trademark application. The mark "EVEPAIN" itself does not provide any concept, and is generally understood as being composed of two words "EVE" and "PAIN". The former reminds people of the SSP's drug product, and the latter represents the feature of the product, which means the mark "EVEPAIN" is not distinct by itself, and more similar to the SSP's trademark rather than different in its appearance and pronunciation, which may cause confusion among consumers and dealers. In addition, because Toko did not prove the fact that they had no knowledge that the use of the trademark and variation mark was unfair, and that they could not show they had exercised due care and good judgment about the trademark use, the SSP's claim for cancellation should be approved.

This case presents a contrasting result with that of previous article below entitled: "Birds Chirp Across the Nation".

On June 27, 2007, the Intellectual Property High Court recognized the product configuration of a Maglite flashlight of Mag Instrument, Inc. as a three-dimensional trademark, overruling the decision of JPO to refuse registration (application No. 2001-3358).

JPO refused the application for registration based on Article 3 (1) - 3 of the Japanese Trademark Law, that is: three-dimensional marks which are recognized as merely being within the scope of the shape of the designated goods cannot be registered as trademarks. The Maglite flashlight includes a head portion, a central barrel portion having a grooved surface which facilitates the light intensity adjustment and improves handling of the flashlight, and a tail portion with a hole for a hand strap. The provided features entirely relate to the functional and aesthetical aspect of the goods, but are not unique enough to be inherently distinctive. In addition, JPO denied its acquired distinctiveness because the word marks "MINI MAGLITE" and "MAG INSTRUMENT" appear on each Maglite flashlight.

However, the Intellectual Property High Court reversed the JPO decision stating that a product configuration, which is not indispensable to the functional and aesthetical aspect of the goods, should not be instantly denied on its registration for a three-dimensional trademark, and the use of such a product configuration may leave a strong impression on the consumers for an independently acquired distinctiveness. Based on this point of view, the court examined the Maglite flashlight, and found the following factors which proved the acquired distinctiveness to justify a registration of a three dimensional trademark:

(1) The shape of the Maglite flashlight has not been modified since it was first sold in 1984 in the United States;

(2) In Japan, the sales of the Maglite flashlight in the fiscal year period ending in March 2000 reached $5 million with 607,000 units sold, and in 2007, more than 2700 shops sell the Maglite flashlight;

(3) The configuration of the Maglite flashlight has been emphasized in advertising in numerous newspapers and magazines, including posters displayed in trains and the Internet, since 1985;

(4) The unique configuration was highly acclaimed, the design received awards in Japan and abroad, which attracted the attention of consumers;

(5) Advertisements of the Maglite flashlight emphasized the creativity of its design. The pictures of the Maglite flashlight on the advertisements left an impression on consumers;

(6) Mag Instrument has taken legal actions against companies that sell flashlights shaped like the Maglite flashlight, resulting in that any flashlight having a similar configuration has been excluded from the market;

(7) The words "MINI MAGLITE" followed by the words "MAG INSTRUMENT" appear on the Maglite flashlight, but the letters of the marks are printed lower case and in fine lines, and are positioned in a small portion around its face cap, which makes the words inconspicuous; and

(8) The mark "MAG INSTRUMENT" has not been displayed on advertising, and does not have an independent notability as a manufacturer of the Maglite flashlight.

This case presents an issue of inventiveness.

HORIBA, LTD. manufactures and sells various measuring instruments, and owns a Japanese Patent No. 3616490 entitled "Vehicle Driving Mode Display Apparatus". The apparatus is a so-called driver's aid for vehicle driving tests. When a test driver sends a start signal to a data processing unit such as a computer, the apparatus is operated by the unit to provide the driver with a desired vehicle speed vs. time trace, the actual vehicle speed, and the current position in the entire test course on the display screen thereof.

Ono Sokki Co. Ltd. is a company in the same line of industry, and sells another vehicle driving mode display apparatus.

HORIBA brought an action for injunction and damages against Ono Sokki, which was dismissed by Osaka District Court on 25 January 2007.

Osaka District Court did not consider the Ono Sokki's apparatus, but examined the HORIBA patent and pointed out lack of inventiveness on the part of the latter.

The HORIBA patent cited US patent No. 5531107 in the specification. Comparing the HORIBA patent to the US patent, the only material difference is that the actual speed is displayed as a change of the speed in a graph for the entire test course in the HORIBA patent, while it is not clear if the similar graph displayed in the US patent is for the entire test course or just a part of it. Whether the difference was non-obvious to a person skilled in the art should be the point to be considered. The HORIBA patent was made to solve a problem of a test driver who has concerns about the current position in an entire course, that is, about the travel distance the driver has completed and the remaining distance to be completed. However, many patents were made to remove such driver's concern including Japanese Utility Model No. 53-72301 which had been filed 21 years before the filing of the HORIBA patent. Since the above US patent was clearly made for the same purpose, no inventive step was necessary to display a graph of speed for an entire test course to indicate a driver the current position using the prior art, which confirms that the HORIBA patent could be made without involving inventiveness.

Udon is one kind of Japanese noodle sold in small packages in dried, frozen, raw, and boiled form. Dry udon (see the picture below) is boiled in water and served (see here, for example).

In Japan, each prefecture has its specialties, and "Himi Udon" is a specialty of Himi City in Toyama Prefecture, and is one of the well-known udon brands in Japan. Kaizuya Co. Ltd. (hereinafter, referred to as Kaizuya) is a company with a history selling Himi Udon in Toyama Pref. since 1975. Kaizuya has an affiliate limited company located in Toyama Pref. and manufactures Himi Udon for them.

Kaizuya brought a suit seeking injunction, elimination of copy on packages and the like, and monetary damage against Himi Udon Takaokaya Honpo Co. Ltd. which is a competitor of Kaizuya, and its president, Mr. Ikeda.

Takaokaya started business in 1997 and sold 12 kinds of udon that have "Himi" as a part of the names. However, the udon had been actually manufactured in Okayama Pref., which is about 200 miles away from Toyama Pref. till March in 2005. Moreover, Takaokaya displayed an advertising slogan stating, "This thin-type Himi Udon by Takaokaya, the original Himi Udon, has a long history since Edo period" for example, on their udon's packages, brochure, and HP on the Internet.

On 10 November 2006, the Toyama District Court determined, under The Unfair Competition Prevention Law, that Takaokaya's action was a display of false information on the origin of their product, and had misled consumers. Since "Himi" is a city name, the term "Himi Udon" would be perceived as udon originated and manufactured in Himi City. In addition, "Himi Udon" is not a general name like "satsuma-imo" ("imo" means sweet potato) and "tsukuda-ni" ("ni" means boiled food in soy sauce), both of which are named after the city they originated from (Satsuma and Tsukuda, respectively).

The Court didn't issue an injunction because Takaokaya had already stopped the manufacturing in Okayama Pref., but instead ordered Takaokaya and its president to pay a damage of more than $3.3 million to Kaizuya according to the following calculation:

Takaokaya had manufactured 8 kinds of Himi Udon out of 12 in Okayama Pref. from 1997 to 2005, and the total profit Takaokaya had yielded from them was found to be about $3.5 million. The market share of Kaizuya was considered to be 93 percent. That is, the amount of damage Kaizuya suffered is: $3.5 million × 0.93 = $3.3 million, which is unusually high for a case under the Unfair Competition Prevention Law.

On 21 December 2006, the Intellectual Property High Court dismissed a claim against the JPO by DAIO PAPER CORPORATION and Elleair Paper Tech. Co. Ltd. (both are the plaintiffs of this case). The plaintiffs are the owners of Japanese Patent No. 3473561 entitled "Nonwoven Fabric For Wet Tissue Paper", which the JPO decided to cancel the claims 1 to 4 of the patent when the plaintiffs demanded for correction. The plaintiffs appealed to the Intellectual Property High Court against the cancellation of the claims. The patent had the claim 1 as follows:

1. A nonwoven fabric for wet tissue paper, comprising:

a first hydrophilic fiber; and

a second heat fusible fiber which three-dimensionally interlaces with and is bonded to the first fibers by fusion, and

the nonwoven fabric including:

a plurality of convex portions which have a relatively higher density and are formed in a linear shape; and

a plurality of concave portions which have a relatively lower density and are formed in a linear shape (as shown in Fig. 2 below), with a height difference of 50 to 300 µm between the convex portions and the concave portions,

each of the concave portions being alternately arranged with each of the convex portions to form a linear design, with the linear design crossing with another linear design formed by other concave portions and convex portions, and forming a herringbone pattern (as shown in Fig. 1 below),

the nonwoven fabric being provided with 3 to 9 lines of the linear design formed by the concave portions and the convex portions per one centimeter.

The JPO and the Intellectual Property High Court picked up the part "3 to 9 lines …per one centimeter" as a question of patent scope because no definition of the line had been provided in the claim. Since the convex portion and the concave portion are individually formed in a linear shape, each portion can be considered as a line, whereas the alternate arrangement of a pair of a convex portion and a concave portion forms a three-dimensional configuration and, likewise, the convex portion of the pair can be considered as a line. In addition, no description is provided about the criteria for measuring the number of the lines. The resulting number of the lines changes depending on a direction of measuring. For example, the measurement can be performed in the perpendicular direction to the linear design to obtain the maximum number of lines, or in any other direction including the transverse direction to the V-shaped design.

As long as the definition of the lines and the criteria for measuring the number of the lines are not naturally determined by any technical knowledge, the claim is not clear or detailed enough for the person skilled in the art to practice the patent.

Major League Baseball Properties, Inc. ("MLBP") was involved in a trademark dispute with JPO.

MLBP appealed the JPO decision to the Intellectual Property High Court upon receipt of the JPO decision of final rejection on a trademark application for the logo mark of the Chicago Cubs on 18 October 2006.

JPO rendered the decision stating that the logo mark includes a ring having a certain width, another ring having the same width and a notch, and the letters U, B, and S on the edge of the notch. The only recognizable part of the figure at one glance is the three letters, which leads to a designation of "UBS". The American major leagues are getting popular in Japan now, but are not sufficiently recognizable by people to distinguish the goods bearing the mark as that of the Chicago Cubs. Also, the logo mark is similar to the trademarks cited by JPO which are Japanese Trademark Nos. 1951134, 4339840, 4364718, 4515606 (see below), and 4623586 - all happened to be the trademarks of Union Bank of Switzerland , and also bear the letters UBS.

MLBP claimed that the letters cannot be separable from the outside ring because they represent a part of the team name "Cubs" which is now well known in Japan due to the season-opening game played between the Chicago Cubs and the Mets in Tokyo in the year 2000. Furthermore, Sammy Sosa, who is a famous home run batter, belonged to the team, and adding to that the 13 Japanese players who played in the Major League in 2006 including Ichiro Suzuki and Hideki Matsui. Incidentally, in 2006, the number of the Chicago Cubs goods sold in Japan was the fourth highest in the world.

On 8 August 2007, the Intellectual Property High Court overruled the JPO decision and supported MLBP. As baseball games of the American Major Leagues are regularly broadcasted on TV and the number of Japanese players who belong to the Leagues is increasing, the Chicago Cubs is now familiar in Japan as one of the Major League baseball teams. The trademark MLBP filed has the same figure as that of the logo mark of the Chicago Cubs, which appears in various images on players' uniforms. Furthermore, the goods relating to the Chicago Cubs, including game software, are sold in Japan via a number of Japanese companies now, which means the trademark filed by MLBP naturally leads to the designation of Cubs, and cannot be confused with the trademarks of Union Bank of Switzerland.

The Procter & Gamble Co., Ltd. filed a patent application entitled "A Cleaning Implement Having High Absorbent Capacity", and in response to a rejection of the patent application, requested a trial against the rejection and also submitted an amendment on 23 January 2004.

The application included the first claim as follows (the added amendment is indicated by the underlines):

1. A cleaning implement, comprising:
   1. a handle; and
   2. a removable cleaning pad comprising:
      1. a scrubbing layer; and
      2. an absorbent layer in direct fluid communication with the scrubbing layer;
         characterized in that the cleaning pad has a t1200 absorbent capacity of at least 10 g of deionized water per g of the cleaning pad, and has a squeeze-out value of 40% or less under a pressure of 1.5 kPa or less.

The JPO, however, denied the request, and The P&G appealed to the Intellectual Property High Court, which was dismissed On 7 November 2006.

The application recited two patents, US Patent 5419015 ("Mop with removable interchangeable work pads") and JP Laid-Open No. 59-229322 ("Absorbent Sheet"). While the recited patents do not limit any values of absorbent capacity and squeeze-out, the application by The P&G specifies them. Also, the element to which a cleaning pad is removably attached is different between the patents and the application. In spite of these differences, the Intellectual Property High Court stated the invention made by The P&G was obvious from the patents. The P&G claimed that in cleaning floor surfaces, it was the common sense, at that time, that the cleaning using a scrubbing layer and the absorbing a fluid cleaning composition into an absorbent layer were conducted in separate and subsequent steps and that the application provided a new configuration which allows the steps to be achieved in a simultaneous step. But there is no dispute on the fact that the pads of the US patent and the application by The P&G have "an absorbent layer in direct fluid communication with the scrubbing layer", and the combination of the configurations disclosed in the above two patents easily enabled the skilled person in the art to realize the configuration disclosed in the application. In addition, the "t1200 absorbent capacity" only shows the value measured after cleaning a hard surface for 20 minutes which is a typical period of time for house cleaning. Moreover, in the application, there is no description which supports the detailed values of the "at least 10 g", the "squeeze-out value of 40%", and the "pressure of 1.5 kPa".

One heated fight between two drug manufacturers over a patent infringement issue was settled down before a hot summer comes in Japan in 2007. The companies are Earth Chemical CO., Ltd., and DAINIHON JOCHUGIKU CO., Ltd.. The patent in issue is JP No. 3802196 registered on 12 May 2006 and granted to the former. The patent technology is embodied by Earth as a household insecticide product called "No-Mat" series (the left picture below), which includes a cartridge and a fan, and a substance in the cartridge is dispersed by rotating the fan using batteries.

Based on the patent, Earth served a notice to DAINIHON in July 2006 requesting to stop the manufacturing and sales of "Katoris" series (the two pictures on the right below), a mosquito repellent by DAINIHON which also uses batteries to rotate a cartridge for volatizing and dispersing a substance therein. Also, Earth made documents stating that the Katoris clearly infringed the Earth's patent, and distributed the documents to their clients.

DAINIHON (plaintiff) brought an action in August 2006, claiming that Earth (defendant) did not have a right to seek injunction because none of the Katoris series infringed JP No. 3802196, and that the Earth's action was illegal because they spread false information. Earth counterclaimed for an injunction against the manufacturing and sales of the Katoris series by DAINIHON.

On 23 March 2007, the Tokyo District Court found that the patent No. 3802196 should be invalidated at trial and dismissed the counterclaim on the ground that some patents had been published before the filing of the application for the above patent, and already had described technologies about a pest control apparatus for dispersing a substance by driving a fan using batteries. Specifically, given the combination of the technologies of WO96/04786, and JP Nos. 5-68459 and 7-111850, the one skilled in the art should be able to achieve the idea disclosed in the patent in issue, including the details about the current consumption of a motor, the weight of a fan, and the air volume at the outlet port of the fan.

At the same time, the Tokyo District Court dismissed the claim by DAINIHON. Earth cannot use the patent right as described above, and in addition, before the distribution of the document by Earth, the articles about the DAINIHON's action for a declaratory judgment had already appeared in newspapers, which means the document did not make people objectively believe the infringement.

This is a case about Japan Intellectual Property Arbitration Center (only written in Japanese) awarding the transfer of a domain name under the rule 15(a) of Rules for Uniform Domain Name Dispute Resolution Policy.

Young Nails Inc., an American company that provides services for attaching artificial nails and sales of nail care products, owns trademark rights in the US and Japan (US registered trademark No. 2294279, and Japanese registered trademark Nos. 4862416 and 4953933) for similar marks that consist of a design bearing the letter "Y" and the expression "young nails", as seen from the left picture (No. 4862416). Young Nails also registered the domain name "youngnails.com" for their website.

Young Nails entered in a non-exclusive sales agreement with a person in Japan, Christina Ikeda, for providing the services and sales of Young Nails in the country. Although Ms. Ikeda had no right to register a domain name which includes the words of the above trademark, she registered the domain name "youngnails.jp" and created a website of her own without permission from Young Nails. In spite of requests by Young Nails for assignment of the domain name, and the cancellation of the agreement between the two in 2004, Ms. Ikeda still continued to use the domain name. Moreover, she sent a letter to Young Nails to propose the sale of the name for 100 million US dollars.

Young Nails asserted that the domain name "youngnails.jp" is confusingly similar to the trademarks and the domain name they own, and the use of the domain name by Ms. Ikeda also results in misleading consumers of Million Oaks, another company that accepted an agreement with Young Nails as a non-exclusive sales representative, and their sales activity in Japan.

Young Nails filed a motion for transfer of the domain name against PCC Corporation, a Japanese company, which was the registrant of the domain name at that time, Christina Ikeda, the person who actually used the domain name, and another company which was the prior registrant of the domain name.

On 8 December 2006, the panel of Japan Intellectual Property Arbitration Center ruled on the motion for transfer according to JP Domain Name Dispute Resolution Policy and Rules for JP Domain Name Dispute Resolution Policy, as follows:

(i) the main part of the domain name "youngnails.jp" is the word "youngnails", which is recognized to be extremely similar to the trademark of Young Nails;

(ii) the current registrant stated in their response that the company had registered the domain name by a request from a client, and they do not assert the right to the domain name, which means they admitted that they have no rights or legitimate interests with respect to the domain name; and

(iii) the domain name had been clearly registered and used in bad faith, in view of the fact and history according to which the domain name was used.

The famous drawings of "The Tale of Peter Rabbit" by Beatrix Potter are now in public domain because the copyright of the work expired on 21 May 2004.

Familiar Co. Ltd., had a plan to sell their Peter Rabbit products such as Peter Rabbit Towels. However, Copyright Japan, a company which manages the copyright of "The Tale of Peter Rabbit", kept the mark "©" printed on the work as the copyright notice. The mark is used to show that the work bearing it is protected by a copyright. The printed mark inflicted damage on Familiar: their customers shied away from dealing with them to avoid troublesome copyright situation.

Familiar sued Copyright Japan based on two issues:

i) declaratory judgment of invalidity, unenforceability, and non-infringement of the copyright; and

ii) injunction of the use of the mark "©" by Copyright Japan, and their goods and services provided in connection with the use of the mark "©".

On 30 January 2007, the Osaka District court cited to support the former issue and rejected the latter.

The presence or absence of the mark "©" legally does not influence the protection state of the work bearing it in Japan. Even a work protected by a copyright may not have the mark, also, the mark does not always mean that the work bearing it is protected by a copyright. However, actually, the mark has an aspect to express in a positive manner that a copyright protects the work, and to warn consumers that unauthorized use of the work may be an infringement. It is only natural that customers of Familiar would feel hesitant to deal with them, and that Familiar would have legal concerns and uneasy feelings about their sales of Peter Rabbit products. To remove these negative effects, the declaratory judgment is necessary. To the contrary, as for the injunction, although the mark may mislead consumers into believing that the copyright is still valid, the action to put the mark on a product does not produce any erroneous assumption about the content or quality of the product.

This case relates to the articles below ("An Unfair Use of "Peter Rabbit" Trademark")

ASAHI BREWERIES, Ltd. is one of the most prominent brands in beer market in Japan, and recently has attracted public attention with two topics.

First, ASAHI lost their trademark registration suit for the mark "Hon-Nama" (consisting of two Japanese characters as shown on the left, Japanese Trademark Application No. 2000-135077). The designated good for the trademark belongs to low-malt alcohol beverages, so-called Happoshu, which have a taste similar to beer.

Since JPO ruled invalid the trademark application, ASAHI brought a suit for cancellation of the judgment JPO had made.

On 28 March 2007, the Intellectual Property High Court supported the JPO decision on the same ground as that JPO had stated. The term "Hon-Nama" is not a term found in standard dictionaries, and consists of two Kanji characters: the one on the left means "real, genuine, or authentic", and the one on the right means "unprocessed, or incomplete". The combination of these two characters makes the term "Hon-Nama" have a meaning of "the authentic without heat sterilization". However, the combination of two characters is actually used in many descriptions of beverages and other products in Japan. In addition, the mark "Hon-Nama" in the application filed by ASAHI does not have any distinct feature that provides visual impression to people. Furthermore, ASAHI consistently used the mark "Hon-Nama" with one of their house marks "Asahi" in their displays, propagandas, TV commercials, and brochures to sell the beverage bearing the mark. And ASAHI used the mark by explaining the meaning of each character for the advertisement of their beverage. This means that no traders and consumers recognize the ASAHI beverage only by the mark "Hon-Nama" although one billion beverages bearing the mark have been sold so far.

Second, another ASAHI trademark application (No. 2006-19029) for the mark "INA BAUER" was rejected by JPO in May 2007. The so-called Ina Bauer is one movement in the field of figure skating that a German skater, Ina Bauer, invented. This technique became famous in Japan when Shizuka Arakawa, a Japanese female skater, won the gold medal at the 2006 Winter Olympics. ASAHI filed the application without any particular idea which alcohol beverage would bear the mark. The application was denied because the technique was named after the inventor, and an exclusive use of the name by taking advantage of the fame of the technique may disturb the order of trade market.

This case relates to the articles below ("Massage Chair Increased Tension" (Part I and II)).

The Intellectual Property High Court revised the decision the Tokyo District Court had made, and considerably reduced the calculated amount of damage from about US $13 million to $95 thousand on 25 September 2006.

In this case, Family Co. Ltd. is the appellant, while Toshiba Tec is the respondent.

Out of the Toshiba's five patents, Japanese Patent No. 3121727 is the only one left valid after the revision of judgments to invalidate the other four patents.

Regarding the point whether the four types of Family's massage chairs belong to the technical scope of JP No. 3121727 or not, two types of the chairs belong to it, and the other two do not literally infringe the patent but belong to it as an equivalent.

However, the essential feature of JP No. 3121727 is a stretching or massage effect which is obtained by different timings of air bag expansions for hips and legs, and (i) the effect can be attained through a mode which only a few of the chairs have such feature, (ii) the effect is only incidental to the massage chairs, (iii) the effect is not described in any brochures published by the appellant or the respondent, (iv) at the time of the patent registration, the market share of the Toshiba's chairs amounted only to a few percentage points, and there were strong competitors in the market, (v) Family's massage chairs provide a function to massage by using both balls and bags, and another function to automatically detect points to be pressed by using a photo sensor, which are different features from that of JP No. 3121727, and consumers selected the Family's chairs because of these features, (vi) Toshiba's chairs that provide massage by using air bags neither have a strong market competitiveness nor a strong sales force.

Therefore, the quantity of chairs Toshiba could have sold is reasonably calculated as one percent of the quantity of each of Toshiba's chairs assigned by Family, as follows:

Assigned Quantity: 68,979 chairs
Quantity Toshiba Could Have Sold (1%): 690 chairs
Profit per Chair: $138
Total Damage Amount to be Paid: 690 x 138 = $95,220

On 1 March 2007, the Intellectual Property High Court supported a JPO decision declaring a patent invalid. The patent is Japanese Patent No. 2848760, entitled "Anticancer Agent Containing Taxol As Effective Ingredient" owned by Bristol-Myers Squibb Company.

JPO made a decision on 28 July 2005 that the claims 1 to 3 of the JP were invalid upon the request of JCR Pharmaceuticals Co., Ltd. Bristol-Myers Squibb Company filed a suit to demand the cancellation of the decision.

Taxol is a chemotherapy drug that is given as a treatment for some types of cancers, and at the time the JP was filed, Taxol was administered by a 24-hour IV infusion. The claims 1 to 3 of the JP include the following descriptions (after the correction):

1. A medical agent, comprising Taxol for treating a patient who is suffering from solid cancer, leukemia or ovarian cancer and is pretreated to reduce or minimize fatal anaphylactic-like reactions, the medical agent being packaged for parenteral administration to the patient so that Taxol is administered at about 135 mg/m² to about 175 mg/m² over a period of about three hours.

2. The patient is suffering from solid tumor or leukemia, and the amount of administered Taxol is above 175 mg/m² and less than 275 mg/m².

3. The patient is suffering from ovarian cancer, and the amount of administered Taxol is above 175 mg/m² and less than 275 mg/m².

However, JPO and the Intellectual Property High Court later detected that these claims have the same contents as those described in five papers including Annals of Oncology, Vol. 3, No. S1 (1992), and Contemporary Oncology (1992). In these papers, tests for administrating Taxol were carried out to compare the results under different condition patterns for infusion at 135 mg/m² or 175 mg/m² for 3 hours, or 24 hours to patients having ovarian cancers, following patient pretreatments with steroids, antihistamines, and antagonists sufficient to prevent fatal anaphylactic-like reactions. Other three papers including Seventy-sixth annual meeting of the American Association for Cancer Research, Vol. 26 (1985) describe the results at different amounts of Taxol which cover the range above 175 mg/m² and less than 275 mg/m² for 3 or 6 hours, for example.

Moreover, the specification of the JP includes no specific data that supports the effectiveness or safety of the 3- hour infusion of Taxol above 175 mg/m², but only includes an example at 135 mg/m² and 175 mg/m² for 3 hours for patients having ovarian cancer. No data is shown for the patient who has solid cancer or leukemia. Generally, the effectiveness of any medical agent cannot be determined based only on the name of its chemical structure, required amount, or administration method. Thereby, specific pharmacological data is essential to support the claimed effectiveness of an ingredient used in an invention of a medical agent.

The case in which the court upheld an infringement of a database for the first time in Japan will be described below.

Nippon Telegraph and Telephone Corp. (hereinafter, referred to as NTT) is the biggest telephone operating company in Japan, and generated a database called Town Page Database and an occupationally classified telephone directory "Town Page", the largest yellow pages on a WWW server in Japan). NTT owns a database copyright and a compilation copyright for these data respectively.

Daikei Kabushiki-gaisha (hereinafter, referred to as Daikei) generates another classified database based on Town Page Database and distributes it on demand (hereinafter, referred to as Classified Data). Every time NTT revised the database, Daikei acquired it and revised their database exactly in the same way.

NTT sued Daikei seeking damages and an injunction against the actions by the latter on the claim that their actions infringed both of the NTT copyrights.

The main issues in the case included the following questions:

1. Does Town Page Database qualify as a database work?
2. Do Classified Data infringe the database copyright in Town Paper Database?
3. Does Town Page qualify as a compilation?
4. Do Classified Data infringe the compilation copyright in Town Page?

On 17 March 2000, the Tokyo District Court addressed the above questions, ordered Daikei to pay NTT's total loss which amounted to about 280 thousands dollars, and stated four points as follows:

1. Town Page Database qualifies as a database work having a systematic structure.

The occupational classification system of Town Paper Database comprehensively covers the occupations in Japan, which were compiled by NTT's efforts to classify individual occupations into a hierarchical database for customers' convenience in searching. The used occupational classification is based on classes, which are considerably different from the Japan Standard Industrial Classification, and there is not an occupational class that falls in a particular class in the Japan Standard Industrial Classification. In addition, there is no other similar database.

2. The generation and distribution of Classified Data constitutes an infringement of the copyright in Town Page Database.

Classified Data was generated by using the occupational classification and the telephone number information in Town Page Database, and includes (i) the same information as that in Town Page Database, (ii) the information on occupational class of which only the name is changed from that in Town Page Database, and (iii) the combined information in a class which were in the plural classes in Town Page Database, and Daikei never used their original classification.

3. Town Page qualifies as a compilation having creativity in arrangement of the information materials.

Since the contents of Town Page Database and Town Page are the same, the telephone number information in Town Page, which is classified based on an original occupationally classified system for each region in Japan, should be a compilation for the region.

4. The production and distribution of the Classified Data do not constitute an infringement of the compilation copyright in Town Page.

Classified Data is generated based on Town Page Database, and it includes a lot of descriptions different from Town Page such as subscribers' names, which means that Classified Data is not derived from Town Page.

This case is about a decision of rejection JPO had made, which was supported by the Intellectual Property High Court on 28 February 2006.

Bridgestone Sports Co., Ltd. (hereinafter, referred to as Bridgestone) filed a patent application entitled "Two-Piece Solid Golf Ball" on 1 March 1996, but the Examiner issued a final rejection. Although Bridgestone had demanded a trial on the issue, and had made an amendment at the same time, JPO rejected both the demand and the amendment stating that the invention with or without the amendment was readily apparent to those skilled in the art based on Japanese Patent Application Laid-Open No. 6-98949. Bridgestone brought a suit, but again their claim was rejected.

The underlined part - whereon the amendment was made - of claim 1 of Bridgestone's application is shown below:

1. A two-piece solid golf ball, comprising:

a solid core having a diameter of 37 to 41 mm, the solid core having a hardness distribution with a surface hardness of 85 degrees or less, a center hardness lower than the surface hardness by 10 to 17 degrees, and the hardness at a position 5 mm or less from the surface which is lower than the surface hardness by 8 degrees or less, as measured by a JIS-C scale hardness meter; and

a cover which has 360 to 450 dimples formed on its surface and covers the core, the cover having a hardness of 77 to 86 degrees so that the hardness is higher than the surface hardness of the core by 2 to 5 degrees, and having a thickness of 1.5 to 1.95 mm.

Bridgestone's claim was different from the No. 6-98949 in the part "the cover having a hardness of 77 to 86 degrees so that the hardness is higher than the surface hardness of the core by 2 to 5 degrees" (before the amendment, the underlined part was stated as "1 to 15 degrees", and No. 6-98949 did not include any specific numbers for the cover hardness).

According to the specification of Bridgestone's application, the cover hardness was set to 77 to 86 degrees because a hardness less than 75 degrees lowers the resilience of the ball, and a hardness over 90 degrees makes the shot feeling heavy. That is, the hardness range of 77 to 86 degrees is not critical to provide a specific effect. Moreover, referring to other publications including Japanese Patent Application Laid-Open Nos. 6-319830, 8-767, and 7-238193, it is obvious that a cover material having a hardness of 80 to 85 degrees was already known at the time of the filing of the Bridgestone's application. Also, it has been a known technique to maintain the cover hardness between 87 and 90 degrees to obtain an excellent shot feeling and control of the ball. Varied degrees of hardness that are below the said ideal range are also known to be useful if made with an appropriate material.

The amended part "higher than the surface hardness of the core by 2 to 5 degrees" is not critical either, because the range of 2 to 5 degrees was selected to avoid the difference of less than 1 degree which lowers the resilience of the ball, and the difference of over 10 degrees which makes the shot feeling sluggish.

Furthermore, the cover hardness has no particular relationship with the difference between the cover hardness and the core surface hardness, according to the specification. As a result, Bridgestone's application does not define a unique technical or critical feature, and is not patentable.

SUKOYAKA KOBO Co., Ltd, a health food company (hereinafter, SUKOYAKA KOBO) owned Japanese trademark No. 4788761 (registered on 23 July 2004) consisting of 5 letters on the yellow circle of its package, as seen in the picture on the left. The three letters on the lower line mean "turmeric" which belongs to Zingiberacear (Ginger) family and is used as a spice for curry, for example. The designated good for the trademark belongs to Class 29 (processed food in powder, capsule, tablet, and liquid form, comprising turmeric as main ingredient).

Meanwhile, Tanabe Seiyaku Co., Ltd., a pharmaceutical company (hereinafter, Tanabe) owned Japanese trademark No. 4371626 (registered on 31 March 2000) consisting of also 5 letters, as seen in the right inscription, belongs to Class 5 (Nutritional additives for medical purposes, medicinal tonics and substitutes thereof).

The two letters common in the above two trademarks are pronounced "Gen-ki" in Japanese.

Due to the similarity between the two trademarks, JPO made a decision on 21 September 2005 that SUKOYAKA KOBO's No. 4788761 was invalid upon the request of Tanabe. SUKOYAKA KOBO filed a suit to demand the cancellation of the decision two days after JPO decided the invalidation of the former's trademark.

SUKOYAKA KOBO argued with the decision stating that the two-line name can be smoothly pronounced "Gen-ki Ukon" as a united name, which was apparently different from Tanabe's trademark. Also, since the trademarks belonged to different classes, there's no possibility that consumers will be confused with the two trademarks.

However, on 27 April 2006, the Intellectual Property High Court completely supported the JPO decision.

As for the two common Kanji characters in the trademarks, which is one of the Japanese writing scripts, the one on the left means a "source", and the one on the right represents the concept of vitality and life essence: "qi" in Oriental medicine. That is, the combination of the two Kanjis resulted to a coined word that reads: "source of vitality". And because turmeric was already known as a plant name and a spice commonly used for food at the time of the registration of SUKOYAKA KOBO's trademark, when consumers see the term "turmeric" in the trademark, they will only consider it as a common noun and a generic ingredient of the product. As a result, in spite of differences in the appearances, the two trademarks are generally similar based on the common idea implies by the phrase "source of vitality" and the commonly pronounced name "Gen-ki". Moreover, at the time of the registration, as the interest of consumers toward health foods increased, a number of pharmaceutical companies have started to manufacture health foods. The resulting sale routes, the stores, and the ingredients and applications of the goods manufactured by health food companies and pharmaceutical companies were similar, which make the boundary between the classes blurred and raise the possibilities that could mislead consumers.

Sumitomo Heavy Industries, Ltd. (hereinafter referred to as Sumitomo) was once granted registration of Japanese Patent No. 3231708, entitled "Method for Marking Transparent Material" after an amendment of the claims.

1. A marking method, comprising the steps of:
   providing an object to mark; and marking an inside of the object ….
2. The marking method according to claim 1, wherein the object is formed of glass or PMMA.
3. The marking method …, wherein in the marking step, the distance between the object surface and the focal point of the laser is controlled so that ….
4. The marking method …, wherein the object has a plate-like shape, and….

1. A marking method, comprising the steps of:
   providing a plate-shaped object to mark which has a thickness of 2 mm or less; and marking an inside of the object ….
2. A marking method, comprising the steps of:
   providing a plate- shaped object to mark which has a thickness of 2 mm or less; and marking an inside of the object ….
   (Claim 2 includes different descriptions from those in claim 1 which will not be explained here)
3. The marking method according to claim 1, wherein the object has a thickness of 1 mm or more.
4. The marking method according to claim 2, wherein the object has a thickness of 1 mm or more.

On 1 March 2005, FUJI ELECTRIC SYSTEMS Co., Ltd. filed a suit demanding for cancellation of the registration, and on 17 August 2005, JPO approved the demand, stating that the amendment was made to include specifications which were not described in the patent specification.

Sumitomo brought a suit to the Intellectual Property High Court, which was denied again on 27 April 2006. Sumitomo claimed: a crack of 500 µm in a thickness direction of a glass substrate after marking was described in the specification as a problem to solve, which meant an object to mark should have a thickness of from 1 mm (a value over 500 µm) to 2 mm (a value for a substrate in which a crack of 500 µm can be easily formed), for the ordinary person in the art. Also, another problem to solve was listed in which a glass substrate having a thickness of 1 - 2 mm showed a crack on its surface after a marking in a conventional manner. Moreover, there were also an explanation of the difficulty in marking a substrate which had a thickness of 2.3 mm, and an example with a 10 mm quartz substrate, and a 2 mm PMMA substrate which showed no cracks on the surfaces thereof. However, such a list of descriptions was useless to the court decision, because the example with a 2 mm PMMA only defined the lower limit of a thickness, and to begin with, there was no description in the specification at all that stated any possibility to mark a material having a thickness of 1 - 2 mm without a crack on its surface, or any preference to use a material having a thickness of 1 - 2 mm for marking.

This is a case between Sullivan Entertainment International Inc., a film distributor (hereinafter referred to as Sullivan), and the provincial government of Prince Edward Island in Canada (hereinafter referred to as PEI) for a trademark of "Anne of Green Gables".

The "Anne of Green Gables" is the title of the famous book written by L. M. Montgomery. PEI has a nickname "the Home of Anne" because the story of "Anne of Green Gables" was set there, and established facilities with respect to the said literary work as the heart of their tourism. PEI also registered the "Anne of Green Gables" as an official mark in Canada.

On 20 June 2000, Sullivan filed a trademark application for "Anne of Green Gables" in Japan. The application was registered as Japanese trademark No. 4470684 on 27 April 2001. The designated good for the trademark belonged to Class 9 (such as glasses, electrical machines, video discs and tapes, toys for TV games for home use) and Class 14 (such as precious metals, goods made of precious metals, jewelry, clocks and watches).

PEI demanded a trial for invalidation of the trademark registration on Class 9, saying that the integrity and overall image of the literary work would be damaged. The JPO approved the appeal on 13 July 2004.

Sullivan brought a suit for cancellation of the judgment JPO had made, claiming that any one can freely select the title "Anne of Green Gables" for an application of trademark because similar trademarks for "Anne of Green Gables" are owned by PEI, THE ANNE OF GREEN GABLES Licensing Authority Inc. (AGGLA), and other companies in other countries. Also, a lot of other trademarks based on different famous titles and character names such as "Hamlet" and "DONQUIXOTE" have been registered in Japan.

However, the Intellectual Property High Court acknowledged the JPO decision for the nullification of the trademark on Class 9. Recent rapid changes of locomotion and communication means influence the consciousness of people and actual markets, and the trademarks registered in the past from well-known titles and literary characters cannot be a decisive example of this case. Since the literary work "Anne of Green Gables" is one of the cultural assets in Canada, the application filed by Sullivan without prior agreement of AGGLA was against the doctrine of good faith. Moreover, an exclusive use of the title by one company, which has no relationship with the literary work whatsoever, is not appropriate; and the registration of the trademark in Japan might harm the cordial relation between the two countries.

Mr. Seiji Yonezawa had worked for Hitachi Ltd. for 28 years since 1969, and as an engineer, he made 308 inventions in service. These include three inventions with respect to an optical mechanism for recording and reproducing information on and from a recording medium such as CD by using laser beam, the exclusive rights of which to obtain patents had been assigned to Hitachi by Mr. Yonezawa through a contract, which is a typical form of business relationship between a company and an employee in Japan. Hitachi obtained patent rights covering the inventions in Japan and six foreign countries including USA, France, and Holland. Hitachi earned profits up to a thousand million dollars under cross-license agreements with a plurality of companies based on the patents rights, and Mr. Yonezawa received about $20000 award for the three inventions from Hitachi.

Mr. Yonezawa claimed for more reasonable consideration, and on 29 December 2002, the Tokyo District Court ordered Hitachi to pay Mr. Yonezawa about $300000. A company (employer) has a duty to give an award to an employee who made an invention while in service according to Japanese Patent law. However, in the lower court decision, this law was not applied to the patent rights which had been granted to Hitachi in the aforementioned foreign countries therefore the award money was given based on the patent rights granted only to Hitachi in Japan. Both Mr. Yonezawa and Hitachi brought appeals to the Tokyo High Court.

On 29 January 2004, the Tokyo High Court showed their support for Mr. Yonezawa by ordering Hitachi to pay about $1.4 million to the former on the grounds that a reasonable consideration should be calculated and paid by taking into account the patent right which is granted based on an invention while in service and is registered not only in Japan but also in a foreign country. In this case, the percentage point Mr. Yonezawa had contributed to the three inventions as an individual was calculated to be 14% in total of the profit Hitachi earned.

Although Hitachi again brought an appeal to the Supreme Court, the final decision also supported and settled the previous decision, saying both Japanese patents and foreign patents based on an invention while in service are within the scope of an object of Japanese Patent law to protect an employee who makes the invention, and encourage his/her contribution to the development of an industry.