Episode 29

This article explains cross-border infringement of industrial property rights. First, it is necessary to clearly distinguish between trademark infringement and patent infringement.

– Regarding trademark infringement:

① The Joint Recommendation states that the use of a mark on the Internet constitutes use in a member state only if it has a commercial effect in that member state (Article 2 of the Joint Recommendation) (Sushizanmai Case: Intellectual Property High Court Case No. 10031, October 30, 2014).

② While a trademark owner is not required to assert or prove the occurrence of damages, it is sufficient to assert and prove the fact of infringement and the amount of compensation that would normally be paid, it is reasonable to interpret this as meaning that an infringer can avoid liability for damages by asserting and proving the impossibility of damages as a defense. (Kozosushi Case: Supreme Court, 1994 (O) No. 1102, March 11, 1997, Third Petty Bench, Minshu Vol. 51, No. 3, p. 1055)

– Regarding patent infringement:

① The construction of the infringing system through the distribution service is considered to be a part of the information processing process for providing the infringing services in Japan. The system includes terminals located in Japan, and the effects of the infringing inventions are naturally realized on those terminals. Therefore, the location of the server outside of Japan is of no particular significance in relation to the realization of those effects. (Dwango vs. FC2 Case: Supreme Court, 2023 (Ju) No. 2028, March 3, 2025, Second Petty Bench)

② In the case of patents, utility models, etc., the infringing products themselves have creative value. Since the infringing products utilize the patents, etc. in their performance, utility, etc., a portion of the sales of the infringing products necessarily corresponds to the consideration for the patents, etc. Furthermore, the sale of infringing products means that there is a demand for products that implement the patent, etc., and the fact that infringing products are being sold in the first place can be said to mean that there is a demand for the establishment of a license to the patent, etc. (Supreme Court Commentary on the Kozosushi Case, Civil Case, 1997 (Vol. 1), p. 370).