Episode 16

It has been pointed out that the Stockinette Knitting Machine Case (Supreme Court, Grand Court Decision, Case No. 28, 1967 (Gyo-Tsu), March 10, 1976; Minshu Vol. 30, No. 2, p. 79) and the Chetwa Case (Supreme Court, Third Petty Court Decision, Case No. 37, 1988 (Gyo-Tsu), April 23, 1991; Minshu Vol. 45, No. 4, p. 538) are in contradiction. If they are in contradiction, it is a question of which is the principle and which is the exception.
The Supreme Court's previous ruling was that "since the original trial is a trial of facts, it is not illegal for the parties to newly assert in the lawsuit facts that were not asserted at the time of the trial or facts that the trial court did not use as the basis for its decision" (Supreme Court, Second Petty Court Decision, Case No. 745, 1951 (O), October 16, 1963; Shumin No. 10, p. 189).
"As far as the issues in this trial are concerned, even at the litigation stage, new factual allegations are not unacceptable as a method of attack or defense." (Supreme Court, 1958 (O) No. 567, Dec. 20, 1960, Third Petty Court, Minshu Vol. 14, No. 14, p. 3103)
"In a lawsuit to set aside a decision in an invalidation trial for a registration, it is not possible to argue for reasons for invalidating the registration that are separate from the violation of the provisions in dispute, but...it is not appropriate to limit the scope of the trial to the determination of specific matters on which the decision was based or whether there was any illegality in the process of making that determination." (Supreme Court, 1964 (Gyo-Tsu) No. 62, Apr. 4, 1968, First Petty Court, Minshu Vol. 22, No. 4, p. 816)
In the Stockinette Knitting Machine case, the above precedents were changed for the following reasons.
In an action to set aside a decision in a trial for invalidation of a patent, the assertion of invalidity in comparison with a specific publicly known fact and the assertion of invalidity in comparison with other publicly known facts are considered to be separate litigation matters. Furthermore, the scope of the effect of the prima facie case (Article 167 of the Patent Law) of a final trial decision is limited to requests for trial based on the same facts and the same evidence, which is considered to give the final trial decision the effect of prima facie case against the world on the matters actually determined therein, so it is appropriate to limit the scope of the trial to the specific matters actually determined in the trial decision. (Reference: Supreme Court Case Commentary, Civil Cases, 1976, p. 37)
In contrast, in the Chetowa case, the fact of use of the registered trademark in an action to set aside a trial decision for non-use cancellation is a matter of the timing of the proof for the same litigation matter, and as a principle, it is permitted up until the conclusion of oral argument in the trial on facts. (Reference: Supreme Court Case Commentary, Civil Cases, 1991, p. 253)
From the above, the Chetowa case is the principle, and the Stockinette Knitting Machine case is the exception.