December issue [Legal Affairs] Newsletter

Trends in design registration applications for new objects of protection

On February 2th, the Japan Patent Office website published the application trends for new objects of protection based on the revised Design Law (enforced on April 8, 2), so this newsletter will be posting them for the first time in a while. According to this, designs for "images," "buildings," and "interior interiors" that have become newly subject to protection, as well as designs that have been newly protected after the issuance of the design gazette (4 years from the filing of the basic design) due to the expansion of the related design system. The number of applications for related designs (up to the expiration date) is as follows (excluding The Hague).
The previous article “Trends in design registration applications for new objects of protection” was in the May 2023 issue, so this is the first article in 5 months, but according to the Japan Patent Office website, the trends in design registration applications for new objects of protection We have heard that many companies have shown a high degree of interest in the application status, so we would like to continue posting information about it in our newsletter.

Number of design registration applications for new objects of protection

(The numbers in parentheses are the number of cases increased in 10 months)

(Only those that can be obtained as of February 6, 2) (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)

(Only those that can be obtained as of February 6, 2) (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)

(Only those that can be obtained as of February 6, 2/For applications filed before publication of the official design gazette, applications filed after April 1 are included.)

Update on the revision of trademark examination standards due to the introduction of the consent system

On February 2024, 2, at the 6th Trademark Examination Standards Working Group of the Trademark System Subcommittee of the Industrial Structure Council Intellectual Property Subcommittee, a draft revision of the trademark examination standards was presented based on the results of public comments, and the draft was submitted for deliberation. As a result, it was approved to revise the proposal based on the revised proposal.
Going forward, after going through the prescribed procedures within the Office, the "Trademark Examination Standards" will be revised and will be applied from April 6, 4.

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.
*Created based on information as of February 2024, 2. Please note that actual operations may differ.

Article 4, Paragraph 4 (Exception for registered trademarks of others related to earlier applications)

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 introduced in last month's issue, the Agency for Cultural Affairs conducted a solicitation of opinions regarding the ``Considerations regarding AI and copyright (draft)'' from January 23, 2020 to February 12, 2021.

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)

(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)

(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)

(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)