Nishimura & Asahi updates

Expanded protection for graphic images under revised Design Act
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • 16 December 2019

The Ministry of Economy, Trade and Industry recently announced on its website that on 1 November 2019 a Cabinet order declared that the reformed Design Act would come into force on 1 April 2020. Under the revised act, the scope of what constitutes a protectable design is expanded; however, protection will be limited to commercial activities and not expanded to using graphic images registered as designs for private activities.

New law aims to facilitate offshore renewable projects
Nishimura & Asahi
  • Energy & Natural Resources
  • Japan
  • 11 November 2019

Although Japan has significant offshore renewable energy output potential, a number of issues – both systemic and technological – have hindered efforts to develop its offshore renewable market. With the introduction of the Act on Promoting the Use of Marine Areas for the Development of Marine Renewable Energy Generation Facilities, the government aims to develop such offshore renewable energy capacity and encourage and facilitate the development of offshore renewable projects in Japan.

Patent Act revisions: new evidence collection system and damages calculation methodology
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • 14 October 2019

Japan's patent litigation system has often been said to offer insufficient protection to patentees. As such, recent amendments to the Patent Act aim to improve the effectiveness of the patent litigation system and make it more favourable to patentees (especially small and medium-sized enterprises and start-ups) by introducing a new evidence collection system and a new methodology for calculating damages.

TOP-SIDER case: improper use and cancellation of trademark registration
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • 24 June 2019

A recent IP High Court case concerned the cancellation of a trademark registration due to a non-exclusive licensee's improper use of the registered mark. Cases regarding cancellation based on Article 53 of the Trademark Act are rare, and cases in which requests to cancel a trademark registration on this basis are granted are even more so. As such, this case is an interesting example of how the IP High Court determines improper use of a registered trademark.

Bill introduced to reform Design Act
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • 29 April 2019

The Ministry of Economy, Trade and Industry recently announced that the Cabinet has approved the Bill for the Reform of the Patent and Design Acts, which will now be submitted to the Diet. This article provides a summary of the reformed Design Act, which has – among other things – expanded the scope of protected designs, improved the related design system and increased the duration of design rights.

Overview of IP rights border measures
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • 24 December 2018

In Japan, Customs can seize goods during export or import where they infringe various IP rights. If Customs suspects that certain goods infringe IP rights, it will initiate an identification procedure and notify both the importer and the IP rights holder. If the goods are found to infringe IP rights and no voluntary disposal measures were taken during the protest period, Customs may confiscate and destroy the infringing goods.

Revisions to Copyright Act and Unfair Competition Prevention Act
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • 05 November 2018

Collecting, analysing, combining and processing large amounts of information is critical to the development of the information industry, as exemplified by the Internet of Things, Big Data analytics and artificial intelligence. However, since information often includes copyrighted works, its use can constitute copyright infringement even where there is no harm to the copyright owner. To resolve these problems, acts amending the Copyright Act and the Unfair Competition Prevention Act were recently enacted.

RED BULL trademarks: determining well-known status and recognising fame
Nishimura & Asahi
  • Intellectual Property
  • Japan
  • 19 March 2018

In a recent case, Red Bull AG claimed that a trademark registered by Korean company Bullsone Co, Ltd should be invalidated due to the likelihood of confusion as to the source of the designated goods. A notable point in this case was the difference in position taken by the Japan Patent Office Trial and Appeal Board and the IP High Court with regard to the relevant trademarks and the evidence to be considered when determining the well-known status of the cited mark.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Current search

Refine search

Work area