Japan Fair Trade Commission published the result of an actual condition survey on exploitation of intellectual property and know-how of Japanese makers.
According to the survey, in 726 cases among about 16,000 answers, makers answered that their IP, know-how, client list, etc. had been exploited by big companies which had abused their superior conditions to the makers.
Japan Fair Trade Commission announced that it would take strict measures against such cases which violate the Act on Prohibition of Private Monopolization and Maintenance of Fair Trade or the Subcontract Act.
The Ground Panel has rendered a judgment.
This judgment clarifies the criteria for deciding the amount of damage
An English translation of the judgment will be soon published.
Claim for damages for unfair competition
[Key issue] “Unfair competition” pursuant to Article 2, paragraph (1), item (ii) of the Unfair Competition Prevention Act.
Court stated in the decision “…Article 2, paragraph (1), item (ii) of the Unfair Competition Prevention Act does not require an act of unfair competition to be the ‘creation of confusion with another person’s goods or business.’ This is because the purport of item (ii) of the same paragraph is in preventing free riding by use of the customer attracting power of a famous indication of goods, etc., as well as in preventing the source-identifying function and the quality guarantee function from being harmed due to dilution. As such, if an indication which is identical or similar to another person’s famous indication of goods, etc. is used in a manner that accomplishes the functions of indicating the source of goods and of distinguishing said goods from the goods of other persons, such use is acknowledged as the use as an indication of goods, etc., and whether or not confusion is created among consumers as to the source shown by said indication does not directly affect this point.”Source IPHC
|Trademark at issue||Cited Trademark (three-dimensional trademark)|
[Key issue] “Well known” and “unfair purposes” of Article 4, paragraph (1), item (xix) of the Trademark Act.
Court judged that the three-dimensional form (Cited Trademark) of the Defendant’s Product was well-known and famous among consumers as an indicator of the Defendant’s Product, the filing by the plaintiff of the application for registration of the Trademark was based on the purpose of hindering the defendant’s business operation for the Defendant’s Product, and thus the trademark held by the plaintiff falls under Article 4, paragraph (1), item (xix) of the Trademark Act.Source IPHC
[Title of the patent] “IMMUNOCHROMATOGRAPHY TEST DEVICE AND KIT FOR MYCOPLASMA PNEUMONIAE DETECTION”
[Key issue] “Invention described in a publication” (Article 29, paragraph (1), item (iii) of the Patent Act)
Court stated in the decision “…the patent invention is an invention of a product, and thus a comparison is made with an invention of a product described in a publication in considering the inventive step. Here, it is necessary for a person skilled in the art to be able to make a product on the basis of the description of the publication and the common general knowledge as of the filing of the Patent in order to find that an invention of a product is described in the publication.”Source IPHC
[Title of the patent] “CONSTRUCTIONAL BOARD”
[Key issue] “Finding of the differences between the Invention and the cited invention” (Article 29, paragraph (2) of the Patent Act)
Court stated in the decision “…when a difference between the Invention and the primarily cited invention is to be found, it is reasonable to find the difference between them as a collective structure as a unit from a viewpoint of a solution to the technical problem of the invention. It is inappropriate to find the differences by particularly finely segmenting them and to determine whether each of the differences could have been easily conceived of without considering the above viewpoint, since the invention for which the inventive step should have been found could not be properly determined and the inventive step could be denied as a result.”Source IPHC
Injunction against copyright infringement, etc.
[Key issue] “Defense of quotation” and “fair practices” (Article 32, paragraph (1) of the Copyright Act)
A case in which, concerning file footage for the press over which a news agency has copyright, the court held that the act of quoting and using the same in a documentary film without indicating the source is not lawful quotation.Source IPHC