Episode 22

When a company is trying to build a brand image, it may be considered effective to be able to protect the background pattern on the surface of the product or the background pattern on the wrapping paper as a right.
Regarding this, the Trademark Examination Guidelines of the Japan Patent Office, regarding the application of Article 3, Paragraph 1, Item 6 of the Trademark Act (a trademark that cannot be recognized by consumers as a product or service related to a certain business), which is a requirement for trademark registration, state that "Regarding trademarks consisting of background patterns," "If a trademark is recognized as simply a background pattern because it is composed of figures, etc. that are repeated continuously in a pattern, it will be determined that it falls under this item. However, even if it is recognized as a background pattern, if there are circumstances such as a distinctive form being found in its composition, it will be taken into consideration in determining whether it falls under this item." In other words, background patterns cannot be registered in principle, but if they are particularly distinctive, they may be registered.
In an appeal against a decision of refusal, it was found that a trademark consisting of an ellipse figure with arabesque patterns combined in the center of the ellipse outline, with the pattern part colored gold and the background part colored light green, fell under Article 3, Paragraph 1, Item 6 of the Trademark Law and could not be registered (Appeal Case No. 6195 of 1971).
In response, in a lawsuit to set aside the appeal decision, the court found that the flowers and arabesque patterns that make up the figurative trademark are merely structural elements, and that even if the individual elements are commonplace, it is easily seen that it is possible for the mark to have a distinctive character as a whole through its arrangement, combination, coloring, etc. (Tokyo High Court Case 1974 (Gyo-ke) No. 7, Judgment of September 18, 1974).
In order to register a background pattern on the surface of a product or a background pattern on wrapping paper as a trademark, it is necessary for the pattern to have a distinctive character. Therefore, even if the pattern continues to be used, if another company uses a similar pattern in the meantime, it will not have a distinctive character.
First, the background pattern is registered as a design. Design registration requires novelty (Article 3, Paragraph 1 of the Design Act) and non-ease of creation (Article 3, Paragraph 2). In other words, new background patterns are easier to register. Design rights have a protection period of 25 years from the date of application for design registration (Article 21, Paragraph 1 of the Design Act), so if the design acquires the ability to distinguish its products from others through use during that period, then after the design right expires, the background pattern can be used permanently by registering it as a trademark.

Episode 21

When a company formulates a brand strategy, the trade name and trademark are at the heart of it.
A company's name is its trade name (Article 6, Paragraph 1 of the Companies Act).
A trademark is a character, figure, symbol, etc. that is used in connection with goods or services (Article 2, Paragraph 1 of the Trademark Act).
Building a valuable brand is not something that can be done overnight, but requires constant effort over a long period of time. Here are some examples that show the importance of trade names and trademarks in brand strategies.
・Case 1 (Trade name): Renown was once a major apparel company with the highest sales in Japan, but went bankrupt in 2020. Oggi International took over its main business and changed the company name to "Renown."
・Case 2 (Trademark): Japan Airlines' symbol mark is a crane and circle and has been used for a long time. In 2002, when the company merged with Japan Air System, it switched to a new design and temporarily disappeared. However, after the company went bankrupt in January 2010, Kazuo Inamori (Chairman of Kyocera), who was entrusted with restructuring the company, brought back the crane and circle with the intention of returning to the company's roots.
・Case 3 (Trademark): DUNLOP is a rubber and tire brand that originated in the UK. In Japan, Sumitomo Rubber Industries holds the trademark rights. Sumitomo Rubber Industries announced that it would acquire the DUNLOP trademark rights for four-wheel tires in Europe, North America, and Oceania from Goodyear for 526 million US dollars (82.6 billion yen). With the acquisition of this trademark right, Sumitomo Rubber Industries will be able to develop its tire business under the DUNLOP brand globally, except for some regions and products.
・Case 4 (Trademark): In Scotland, there is a single malt whiskey named after a distillery. Suntory's whiskey "Yamazaki" is the first domestically produced single malt whiskey made only from malt whiskey from the company's Yamazaki distillery. Because this name is a general surname, no trademark was applied for when it was first released. The application was filed in 1994, after the company had already built up a track record of sales. After a trial on the decision to reject the application, the trademark was granted registration in 1999 under Article 3, Paragraph 2 of the Trademark Law (acquisition of distinctiveness through use). It was important to register the product name bearing the distillery's name as a trademark in order to assert the individuality of single malt whisky and to establish a brand image.
In recent years, there have been cases where large, long-established companies have changed their names to new names consisting of just a few letters of the alphabet. In such cases, people may not know what the company is by looking at the new name, but may recognize the company by looking at the old one. Some of these companies have even aired extensive television commercials with their new names.
There is a famous book called "The Fall of Advertising & the Rise of PR" (co-authored by Al Ries and Laura Ries, 2002). In it, they point out that "the fundamental problem is the issue of credibility in advertising. No matter how creative the work is, no matter how appropriate the medium, advertising will run into the wall of a lack of credibility". They further point out that "as far as brand building is concerned, advertising has become obsolete. Now it is the information disseminated by the media that builds brands".

Episode 20

In recent years, the number of AI-related patent applications has increased, and the rate of patent grants has also risen (https://www.jpo.go.jp/system/patent/gaiyo/sesaku/ai/document/ai_shutsugan_chosa/hokoku.pdf).
The Japan Patent Office has published a total of 25 AI-related cases in Annexes A and B of the Patent and Utility Model Examination Handbook (https://www.jpo.go.jp/system/laws/rule/guideline/patent/document/ai_jirei/jirei.pdf).
By the way, AI-related inventions are one type of software-related invention. In order to prepare a specification that can be used to effectively enforce your rights, you must first accurately grasp the technical content of the invention and prepare it in accordance with the basics of preparing specifications for software-related inventions (see "Historical Background of the 'Examination Standards for Software'" stored in the reference materials (https://sophia-ip.jp/en/reference-materials/)).
If you enforce your rights with an insufficiently written specification, the patent will be dismissed in a patent infringement lawsuit on the grounds that it is invalid (Article 104-3, Paragraph 1 of the Patent Act). It is particularly important to meet the support requirement (Article 36, Paragraph 6, Item 1 of the same Act).
Regarding this support requirement, the Intellectual Property High Court has ruled that "Whether the statement of the claims meets the support requirement of the specification should be determined by comparing the statement of the claims with the statement of the detailed description of the invention, and by examining whether the invention stated in the claims is the invention stated in the detailed description of the invention, and whether it is within a scope that a person skilled in the art would recognize from the statement of the detailed description of the invention that the problem of the invention can be solved, and whether it is within a scope that a person skilled in the art would recognize that the problem of the invention can be solved in light of the common general technical knowledge at the time of filing, even without that statement or suggestion. It is reasonable to interpret that the burden of proof for the existence of the support requirement of the specification lies with the patent applicant or patent holder." (Intellectual Property High Court Grand Panel Decision, Case No. 10042 of 2005 (Gyo-Ke), November 11, 2005).
In the case of software-related inventions, what is protected by patent law is the software algorithm (https://sophia-ip.jp/en/features-of-our-office/). The algorithm is expressed as a flowchart.
However, some patent applications for software-related inventions do not include a flowchart. This is likely because the writer of the specification does not understand the technical content of the invention or does not understand the basics of writing specifications for software-related inventions.
Since what is protected by patent law is the software algorithm, a flowchart should be selected as the [selected figures] in the abstract. However, there are many patent applications in which drawings other than a flowchart are selected.
By checking whether a flowchart is selected as the [selected figures] in the abstract, you can easily distinguish the quality of a patent specification for software-related inventions, including AI-related inventions.