- Reiwa 5 (Gyoke) No. 10071 Case of Request for Cancellation of Trial Decision (December 2023, 12) -
(Plaintiff) Rainbow Shake Co., Ltd. / (Defendant) Japan Patent Office
table of contents
Judgment summary
Overview
A case where it was disputed whether the exception to lack of novelty in Article 4, Paragraph 2 of the Design Act should be applied to a cited design.
The plaintiff claims that the cited design was published based on the publication of the design stated in the "certificate for application of exceptions to loss of novelty of design" (design stated in the certificate), and the design stated in the certificate was published. However, the court argued that the two designs were not considered to be substantially the same because there were differences in the shape of the article that affected the aesthetic appearance, and the plaintiff's The claim was dismissed.
The cited design was published on August 2021, 9, before the filing date of the subject design (September 3, 2021).
Application of exception to loss of novelty (court opinion)
- In order for the plaintiff to apply Article 4, Paragraph 2 of the Design Act to the Cited Design, it is a prerequisite that the Plaintiff has submitted the certificate prescribed in Article 4, Paragraph 3 of the Design Act for the Cited Design.
・Article 4, Paragraph 3 of the Design Act is stipulated as a special requirement for applying the exception to lack of novelty in Article 4, Paragraph 2 of the Design Act, as an exception to Article 3, Paragraph 1 of the Act. As a general rule, due to the act of a person who has the right to receive a design registration before filing an application for design registration.For each design publishedA certificate regarding the consented design should be submitted, therefore,It is understood that the design stated in the certificate and the cited design must be the same.
The design stated in the certificate ② and the cited design ③ were not recognized as the same design.
Common feature of both designs: The shape of the top front side and three sides of the storage section
Differences between both designs: Number and arrangement of studs on the front side
➡The difference between the two designs is that the studs are fully visible to the naked eye and function as a decorative component of the design on the front of the bag. The structure is different between the one with three pieces arranged with a slightly longer interval from the second to the third one and the one with four pieces arranged at approximately equal intervals.
➡In relation to the shape of the top front side and three sides of the storage section, which are common features of both designs, the design stated in the certificate has the same number of three studs arranged on the three peaks of the left and right sides. The second stud is located on the line connecting the tops of the peaks in the center of the left and right sides with a straight line, while the stud design has four studs, one more than the three peaks on the left and right sides. The second stud is located at the bottom of the valley between the peaks at the upper left and right corners and the peaks at the center of the left and right sides, and the third stud from the top Because they are located slightly above the center of the valley between the peaks at the center of the left and right sides and the peaks at the lower left and right corners, each can be said to have a different aesthetic appearance.
Comment
- Since the cited design is presumed to be public information related to the applicant, a certificate should have been submitted for the published design that was cited as the cited design. In addition, under the revised Design Act that came into effect on January 6, 1, for applications filed after the enforcement date, Article 1, Paragraph XNUMX of the Design Act states that for [same or similar designs] the earliest By proving a public act, the application of Article XNUMX, Paragraph XNUMX is excluded.
・Under the revised law, although there is a possibility that the application of Article 3, Paragraph 1 will be excluded in cases like this case as similar designs, similar relationships between the design stated in the certificate and the subsequently published design or applied design may be excluded. It is necessary to consider whether or not it is necessary to submit a certificate.