- Reiwa 5 (Gyoke) No. 10008 Case of Request for Cancellation of Trial Decision (June 2023, 6) -
[Plaintiff] Taisei Corporation, Kengo Kuma Architects and Urban Design Office
[Defendant: Owner of the design in question] Kobayashi Kawara Kogyo Co., Ltd., Hekinan Ceramics Co., Ltd., Kaminaka Co., Ltd.
table of contents
Judgment summary
Overview
A case in which the design (Design Registration No. 2021) whose registration was maintained in an invalidation trial (invalidation 880006-1663938) was revoked because it was similar to the design of a patterned tile described in the "pamphlet, etc."
prerequisite fact
Defendant Kobayashi Kawara and Plaintiff Design Office began to have a relationship with regard to the construction of roof tiles around August 2016, after Plaintiff Design Office received an order to design the construction work for Ishigaki City's new government building.
Defendant Kobayashi Kawara contacted the plaintiff design firm on February 2017, prior to the basic design briefing session for the new government building (February 2, 19), which is a public disclosure fact stated in the certificate of exception to loss of novelty related to the design application. We have issued ``brochures, etc.'' (*Reference) to.
The design in question: Reference perspective view viewed from the front
*Reference: Design of patterned tiles quoted from the attached document of the related judgment (Reiwa 5 (Gyoke) 10007)
Regarding the similarity between the two designs, the invalidation trial (invalidation 2021-880006) identified the consumer as a construction company that performs roofing work or the owner of the roofing work. In contrast to the evaluation of the shape of each part of the tile seen from all directions, as well as the form seen from the front, this judgment also recognizes the owner as an important consumer and takes into account the aesthetic aspect that the owner places importance on after construction. The decision was made.
On top of that, the ``specific structure that differs most between the design in question and the design of the patterned tile in question is the part [where the U-shaped line pattern part is slightly raised in a step-like manner from the other part of the surface of the male tile]''. When looking at the tile as a whole, the difference due to the upheaval is very small, and especially after the tile roof is constructed, the degree of upheaval is relatively small when looking at the whole roof, so the U-shaped line pattern is Although consumers should be careful, it is difficult to recognize that the extent of the protrusions warrants attention,'' and the two designs were deemed to be similar.
Another issue at issue was whether the pamphlet, etc. sent by the defendant Kobayashi Kawara to the plaintiff design firm before the application was filed constituted confidential information.
Regarding confidentiality obligations
Even if a certain design is known to another person, if that person is deemed to have an obligation to keep it confidential, it will be considered "publicly known" under Article 3, Paragraph 1, Item 1 of the Design Act. I can't, butIn order to be able to say that there is an obligation to maintain confidentiality, it does not necessarily have to be based on an explicit contract, but it is required to keep it confidential based on social convention, taking into account the relationship between the parties and the nature and content of the subject matter. If the circumstances are such that the parties are aware of this, it can be said that there is a duty of confidentiality.
Judgment in this case
・This pamphlet can be said to be a general pamphlet for advertising and sales, and it is not possible for the recipient to realize that it is an internal pamphlet and has an obligation to keep it confidential without explicit explanation. I should say it was difficult.
Defendant Kobayashi Kawara argued that the issuance of the pamphlet, etc. in this case and the act of publication stated in the certificate are closely related and are essentially the same act, but this judgment recognizes them as different acts.
Based on the above, the pamphlet, etc. in question does not fall under confidential information and therefore falls under a publicly known design. Therefore, in this judgment, the design of the patterned tiles described in the pamphlet, etc. in this case was considered a publicly known design, and a determination was made as to whether or not it was similar to the design in this case.
Our comment
About similarity judgment
When determining whether designs are similar or not, consideration should be given to the fact that there are cases in which aesthetic viewpoints differ depending on how consumers are perceived, and this may have a significant impact on the similarity determination.
Regarding confidentiality obligations
When disclosing information about a prototype product under development to a business partner before applying for design registration, it is desirable to conclude a confidentiality agreement in advance, but if this is difficult, consider writing a statement that requires confidentiality. Should.
Summary
In line with the partial revision of the Unfair Competition Prevention Act in 5, Article XNUMX of the Design Act was amended, and based on the certificate of the earliest public disclosure, those who have the right to receive design registration thereafter. The same or similar designs that were published as a result of an act are now eligible for exceptions to the loss of novelty, but in cases where there is a design that was published before the publication date stated in the certificate. It is important to note that designs that have been published first are treated as publicly known designs.