table of contents
March [Legal] Newsletter
Trends in design registration applications for new objects of protection
On February 10th, the Japan Patent Office published on its website information on application trends for new subjects of protection under the revised Design Act (enforced April XNUMXst, XNUMX), so for the first time in a while we are publishing this information in this newsletter. According to this information, the number of applications for related designs filed after the issuance of the design bulletin for the principal design (up to the day before XNUMX years have passed since the application for the basic design) due to the expansion of the related design system, including the designs of "images," "architectures," and "interiors," which have become new subjects of protection, is as follows (excluding the Hague).
The previous article on "Trends in Design Registration Applications for New Subjects of Protection" was published in the May 10 issue, so this is the first article in XNUMX months. However, according to the Japan Patent Office website, many companies and others have shown great interest in the application status of these designs, so we would like to continue to publish this information in our firm's newsletter.
Number of design registration applications for new objects of protection
(The numbers in parentheses are the number of cases increased in 10 months)
| image | Building | Interior |
Number of design registration applications | 5,352 (1,246) | 1,469 (399) | 979 (203) |
(Only those available as of February 1, 2024) (From the Japan Patent Office website)
Number of registrations for new protected subjects
(The numbers in parentheses are the number of cases increased in 10 months)
| image | Building | Interior |
Number of registrations | 3,652 (1,302) | 1,008 (317) | 641 (209) |
(Only those available as of February 1, 2024) (From the Japan Patent Office website)
Above 1. The number of design registration applications includes those that are currently under examination, and the registration rate is not determined by the number of registrations listed above/the number of design registration applications listed above.
Number of design registration applications for related designs
(The number in parentheses is the number of cases that increased in 10 months) (From the Japan Patent Office website)
Application before publication of official design gazette | 12,613 (2,819) |
Application after publication of official design gazette | 3,102 (713) |
(Only those available as of February 1, 2024 / For applications filed before the publication of the design gazette, applications filed after April 2020 are counted.)
Update on the revision of trademark examination standards due to the introduction of the consent system
On February 36, XNUMX, at the XNUMXth Trademark Examination Standards Working Group of the Trademark System Subcommittee of the Intellectual Property Division of the Industrial Structure Council, a proposal for revising the Trademark Examination Standards based on the results of public comments was presented, and as a result of deliberations, it was approved that the standards be revised based on the proposed revision.
In the future, after going through the prescribed procedures within the agency, the Trademark Examination Guidelines will be revised and will come into effect on April 1, 2024.
This revised draft clarifies the requirements for registration to be approved under the consent system (newly established: Article 4, Paragraph 4 of the Trademark Law) introduced in the revised Trademark Law. Since it has a direct impact on trademark practice, I would like to introduce it here.
*This is based on information available as of February 6, 2024. Please note that the actual operations may differ.
Article 4, Paragraph 4 (Exception for registered trademarks of others related to earlier applications)
Application requirements and decision timing
Requirements | Judgment period |
A. Consent of others | At the time of assessment |
B.There is no risk of confusion | At the time of appraisal + in the future |
Reasons to consider whether or not it falls under “B. There is no risk of confusion”
The judgment will be made by comprehensively considering the specific circumstances regarding both trademarks, such as ① to ⑧ below. In principle, a trademark that is the same as a cited trademark and used for the same designated goods or designated services is considered to have a high risk of causing confusion.
① Degree of similarity between both trademarks
② Awareness of the trademark
③ Whether the trademark is made up of a coined word or has distinctive features in terms of composition.
④ Is the trademark a house mark?
⑤ Possibility of diversified management in companies
⑥ Relationship between products, services, or between products and services
⑦ Commonality of users of products, etc.
⑧ Trademark usage and other transaction realities
≫≫≫Specific examples of “⑧ Trademark usage and other transaction circumstances”
a. Structure of the trademark used
(Example) Always use figures and characters in the same positional relationship, always use specific colors and fonts
b. How to use the trademark
(Example) It must be used only in a specific position on the product's packaging, it must always be used in conjunction with other marks such as the company name and company emblem, and it must always be crossed out (products related to the business of a specific other party). etc.) is added.
c. Products used, etc.
(Example) Even for the same "computer program," the applicant and the prior trademark right holder are clearly in different industries (gaming and medical) and have different price ranges.
d. Sales and provision method
(Example) One company sells to an unspecified number of people at retail stores, etc., and the other company only manufactures to order through individual sales.
e. Season of sales and provision
(Example) One sells only in the spring, and the other only sells in the fall.
f. Sales and provision area
(Example) One is sold only at stores in Hokkaido, and the other is sold only at stores in Okinawa Prefecture.
g. Measures to be taken by the parties to prevent confusion
(Example) If you recognize that there is a risk of confusion between the two trademarks, notify the other party to that effect and, after consultation, take measures to prevent or eliminate confusion.
[reference]
https://www.jpo.go.jp/resources/shingikai/sangyo-kouzou/shousai/shohyo_wg/36-gijiyoushi.html
Call for opinions on the Agency for Cultural Affairs “Considerations regarding AI and copyright (draft)”
As we reported in last month's issue, the Agency for Cultural Affairs solicited opinions on the "Draft Guidelines for AI and Copyright" from January 23rd to February 12th, 2024.
Acts that are not intended for the enjoyment of the thoughts or feelings expressed in the work (non-enjoyment purposes) are generally considered not to harm the interests of the copyright holder, which the Copyright Act seeks to protect, and are subject to flexible rights restrictions. When the regulations were developed, rights were broadly subject to restrictions (Article 30-4). On the other hand, with regard to generative AI, concerns have been raised about the extent to which copyrighted works can be used for learning for AI development, and whether copyright infringement may occur due to AI products.
The draft is based on the current situation as a result of the Legal System Subcommittee of the Copyright Subcommittee of the Council for Cultural Affairs, taking into account the current situation where there is still a lack of precedents that directly deal with the relationship between AI and copyright. It organizes ideas and is divided into the following items.
In response to this call for opinions, a variety of opinions were submitted by various organizations and groups. The Japan Newspaper Association and the Japan Music Copyright Association (JASRAC), which submitted opinions, gave a certain amount of praise to the fact that the current copyright law has been clarified with a more in-depth interpretation than before, but they also believe that interpretation alone is insufficient to protect rights. Noting that there are limitations, he called for a full-scale review, including legislation, to be carried out quickly.
The Agency for Cultural Affairs aims to finalize the contents by the end of this fiscal year after soliciting opinions.
Reference URL:
https://www.bunka.go.jp/shinsei_boshu/public_comment/93997301.html
https://www.pressnet.or.jp/news/headline/240209_15318.html
https://www.jasrac.or.jp/release/24/02_3.html
Newsletter translated into English
Trends in Design Registration Applications for New Subjects of Protection
On February 8, the JPO published a report on application trends for new protected designs under the revised Design Law (enforced on April 1, 2020) on its website. According to this report, the number of applications for “graphic images,” “buildings ” and “interior” designs, which are newly protected, and the number of applications for related designs after the publication of the design gazette (before the expiration of 10 years from the filing of the basic design) due to the expansion of the related design system is as follows (excluding The Hague).
Since our last article on “Trends in Design Registration Applications for New Subjects of Protection” appeared in our newsletter of May 2023, this article is the first on this matter after 10 months. According to the JPO website, many companies and others have shown a high level of interest in the status of applications for these designs, and we will continue to publish related articles in our newsletters.
Number of applications for design registration for new subjects of protection
(Numbers in parentheses indicate the number of applications that increased in the past 10 months)
| Graphic Image | Building | Interior |
Number of applications for design registration | 5,352 (1,246) | 1,469 (399) | 979 (203) |
(Only those available as of February 1, 2024) (source: JPO website)
Number of registrations for new subjects of protection
(Numbers in parentheses indicate the number of applications that increased in the past 10 months)
| Graphic Image | Building | Interior |
Number of registrations | 3,652 (1,302) | 1,008 (317) | 641 (209) |
(Only those available as of February 1, 2024) (source; JPO website)
The numbers of applications for design registration in 1. above includes those currently under examination. Therefore, the number or design registrations divided by the number of applications for design registration does not result in the registration rate.
Number of design registration applications for related designs
(Figures in parentheses indicate the number of applications that increased in 10 months) (source: JPO website)
Applications filed to publication of the principle design in the Gazette | 12,613 (2,819) |
Applications filed after publication of the principle design in the Gazette | 3,102 (713) |
(Only those available as of February 1, 2006 / For applications filed before the publication of the principle design gazette, applications filed in April 2020 or later are counted.)
Revision of Trademark Examination Guidelines with the Introduction of the Consent System – Follow-up Report
On February 6, 2024, at the 36th meeting of the Working Group on Trademark Examination Standards, Subcommittee on Trademark System, Intellectual Property Committee of the Industrial Structure Council, a draft revision of the Trademark Examination Standards based on the results of public comments was presented , and after deliberation, it was agreed to revise the standards based on the draft revision.
Following the completion of the prescribed procedures at the Office the “Trademark Examination Guidelines” will be revised and come into effect on April 1, 2024.
The draft revision clarifies in detail the requirements for registration under the Consent System (newly established: Article 4(4) of the Trademark Law) to be introduced under the revised Trademark Law. Since it has a direct impact on trademark practice, we introduce it hereafter.
*This article is based on information as of February 6, 2024. Please note that the actual operation to be initiated may be different.
Article 4(4) (Exception for registered trademarks of others pertaining to prior applications)
Applicability requirements and timing of determination
Requirements | Time of decision |
A. Consent of another person | at the time of examiner's decision |
B. No likelihood of confusion | at time of examiner's decision + in the future |
Reasons to consider whether or not the trademark falls under “B. No likelihood of confusion”
The judgment will be made by comprehensively taking into consideration the specific circumstances of the two trademarks as described in (i) through (viii) below. In principle, a trademark that is identical to a cited trademark and that is used in connection with the same designated goods or designated services is considered to have a high likelihood if confusion.
(i) Degree of similarity between the two trademarks
(ii) Degree to which the trademark is well-known
(iii) Whether the trademark consists of a coined word or has a distinctive feature in its structure
(iv) Whether the trademark is a house mark
(v) The likelihood of diversified management in the company
(vi) Relationship between goods, between services, or between goods and services
(vii) Commonality of consumers of the goods, etc.
(viii) The manner in which the trademark is used and other actual conditions of transactions.
≫≫≫Specific examples of “(viii) the manner in which the trademark is used and other actual conditions of transactions”
a. Structure of the trademark to be used
(Example) Always using figurative elements and letters in the same positional relationship; always using a specific color or typeface.
b. How the trademark is used
(Example) Use of the trademark only in a specific position on the packaging of the goods; use of the trademark in combination with other marks such as company name, company emblem, etc.; use of a strike-through indication (an indication denying that the goods, etc. are connected to the business of a specific other person).
c. Goods, etc. used
(Example) The same “computer program” but the applicant and the prior holder of the trademark are clearly in different industries (eg, for games and for medical use), or in different price ranges.
d. Method of sale/provision
(Example) One sells to an unspecified number of people through retail stores, etc., while the other is only carries out made-to-order through individual sales.
e. Season of sale/provision
(Example) One sells only in the spring season, while the other sells only in the fall season.
f. Region of sale/supply
(Example) One sells only at stores in Hokkaido, while the other sells only at stores in Okinawa Prefecture.
g. Measures taken by the parties to prevent confusion
(Example) If a likelihood of confusion between the two trademarks is recognized, the other party is notified to that effect and, upon consultation, measures are taken to prevent or eliminate the confusion.
[See also]
https://www.jpo.go.jp/resources/shingikai/sangyo-kouzou/shousai/shohyo_wg/36-gijiyoushi.html
Agency for Cultural Affairs Invites Opinions on “Approach to AI and Copyright (Draft)”
As mentioned in last month's issue, the Agency for Cultural Affairs solicited opinions from January 23 to February 12, 2024, on its ” Approach to AI and Copyright (Draft)”.
It is considered that acts not for the purpose of enjoyment of thoughts or feelings expressed in a work (non-enjoyment purposes) do not usually harm the interests of copyright holders, which the Copyright Act is intended to protect. Thus such acts are widely considered to be subject to restriction of rights (Article 30(4)) when flexible restriction of rights is established. On the other hand, concerns have been raised about generative AI, such as to what extent copyrighted works can be used for learning in the development of AI, and whether AI products may infringe copyrights.
In light of the current lack of precedents directly dealing with the relationship between AI and copyright, the draft outlines the current approach of the Subcommittee on Legal System of the Copyright Committee of the Council for Cultural Affairs on the relationship between AI and copyright law, and is divided into the following items.
Various organizations and groups submitted a variety of opinions in response to this call for comments. The Japan Newspaper Publishers and Editors Association and the Japanese Society for Rights of Authors, Composers and Publishers (JASRAC), which submitted opinions, gave a certain amount of credit for clarifying a more in-depth interpretation of the current Copyright Act than in the past, but also stated that interpretation alone has limitations in protecting rights and urged an urgent full-scale study, including legislative discussions.
The Agency for Cultural Affairs aims to finalize the content by the end of this year after soliciting opinions.
Reference URL:
https://www.bunka.go.jp/shinsei_boshu/public_comment/93997301.html
https://www.pressnet.or.jp/news/headline/240209_15318.html
https://www.jasrac.or.jp/release/24/02_3.html