Episode 40

In this installment, I will discuss a lawsuit seeking the rescission of a JPO appeal decision regarding a design—a case that garnered attention this past March (Intellectual Property High Court, 2025 (Gyo-Ke) No. 10091; judgment rendered March 10, 2026).
The plaintiff filed a design registration application for an article identified as a "motorcycle" and submitted to the Japan Patent Office (JPO) a "certificate for the application of the exception to the loss of novelty for designs" (pursuant to Article 4, Paragraph 3 of the Design Act).
The 2023 amendment to the Design Act, which concerns Article 4, Paragraph 3, came into effect on January 1, 2024. Since the application in question was filed on August 31, 2023, the pre-amendment version of Article 4, Paragraph 3 of the Design Act applies. The provision states: "A person seeking the application of the provisions of Article 4, Paragraph 2 of the Design Act must submit a document to that effect to the Commissioner of the Japan Patent Office at the time of filing the design registration application, and must also submit, within 30 days from the date of the design registration application, a document certifying that the design—which has come to fall under the categories specified in Article 3, Paragraph 1, Item 1 or 2—is eligible for the application of the aforementioned exception."
Following the amendment, the following clause was added: "Provided, however, that if there have been two or more acts by the person entitled to obtain a design registration—acts which led to the design falling under the categories specified in Article 3, Paragraph 1, Item 1 or 2—it shall suffice to submit the certificate in relation to only the earliest of these acts."
The publicly disclosed design in this case is that of a motorcycle, which was exhibited at an exhibition mentioned in the aforementioned certificate. The initial notification of reasons for refusal regarding the present design application cited, as a reference design, photographs taken by a publisher’s editorial department of a motorcycle that had been publicly disclosed at an exhibition.
After the plaintiff submitted a written opinion, a new reason for refusal was issued. The reference design in this instance was a computer-generated (CG) image—created by the publisher’s editorial department—that appeared in an article on a website operated by the publisher.
The plaintiff submitted another written opinion but was subsequently issued a decision of refusal; the plaintiff then filed an appeal against this decision. In response, the Japan Patent Office (JPO) issued a trial decision stating that "the appeal is groundless."
The essence of this decision was as follows: The design for which registration is sought and the reference design relate to the same type of article and are similar in terms of shape and other features; therefore, they are considered similar. Furthermore, because the "predicted" CG image—published by the editorial department—cannot be deemed substantially identical to the design of the prototype actually exhibited, the exception to the loss of novelty does not apply. Consequently, the design falls under the category of designs precluded from registration pursuant to Article 3, Paragraph 1, Item 3 of the Design Act. Additionally, as there is no evidence to suggest that the reference design was an unauthorized creation or that its disclosure occurred against the applicant's will, the provisions of Article 4, Paragraph 1 of the Design Act are likewise inapplicable.
The plaintiff filed this lawsuit seeking the revocation of the JPO’s trial decision. The first ground for revocation concerns an alleged error in the application of the exception to the loss of novelty, while the second ground concerns an alleged error in the assessment of the similarity between the design for which registration is sought and the reference design.
In the litigation to revoke the trial decision, the plaintiff’s counsel argued that the decision was unlawful by citing the "Examination Guidelines for Designs"; however, the claim was dismissed. As previously explained—citing a Supreme Court precedent (Grand Bench judgment of October 4, 1978; Case No. 120 (Gyo-Tsu) of 1975; *Minshu* Vol. 32, No. 7, p. 1223)—examination guidelines do not possess the status of legal norms. The judgment in the present case also affirms this, stating that "design examination guidelines do not possess the status of legal norms." In a lawsuit seeking the rescission of an administrative decision (such as a trial decision by the Japan Patent Office), the subject of judicial review is not whether the decision conforms to the examination guidelines, but rather whether the authority exercised exceeded the scope of, or constituted an abuse of, the discretion granted by law (Article 30 of the Administrative Case Litigation Act).
Next, let us consider what kind of arguments should have been presented in the lawsuit to rescind the administrative decision in this case.
Returning to fundamental principles, it has been noted that "the law of intangible property is, in essence, intended to prohibit unfair competition" (*Basic Jurisprudence 3: Property*, p. 290; "Intangible Property Rights" by Nobuhiro Nakayama).
A motorcycle manufacturer and a publisher of a motorcycle magazine cannot be described as being in a competitive relationship; rather, they are in a "cooperative relationship."
When a motorcycle magazine publisher creates and publishes computer-generated (CG) imagery—predicting the design of a product likely to be sold—based on the design of a prototype exhibited by a motorcycle manufacturer, and if that predicted design closely resembles the actual final product, the publisher’s reputation among its readership is enhanced, which in turn contributes to increased magazine sales.
For the motorcycle manufacturer, the publisher’s efforts to generate buzz help boost sales of the new product.
In short, the motorcycle manufacturer and the motorcycle magazine publisher can be said to be in a "cooperative relationship" with one another. Even if a speculative CG image—made public by a business entity with which there is a collaborative relationship—is not identical in substance to the design of the prototype actually exhibited at a trade show, the disclosure of such a CG image can be equated to a disclosure resulting from the actions of the person entitled to obtain a design registration. This interpretation is also consistent with the legislative purpose of contributing to the development of industry (Article 1 of the Design Act).
Next, we shall examine whether the procedures stipulated in Article 4, Paragraph 3 of the Design Act are required in order for the disclosure of a speculative CG image—created by a business entity with which there is a collaborative relationship—to qualify for the application of Article 4, Paragraph 2 of the same Act.
Since the filing date of the present application is August 31, 2023, the provisions of Article 4, Paragraph 3 of the Design Act, as they stood prior to the 2023 amendment, shall apply. "Given that this provision is specifically established as a procedure for recognizing an exception to the loss of novelty, in cases where multiple disclosures have occurred as a result of the rights holder’s actions, it would generally be necessary to follow the prescribed procedures for each such disclosure. However, it is reasonable to interpret that if a disclosure is closely related to—and can be considered substantially identical to—a disclosure for which the required procedures have already been completed, the exception may be applied without the need for separate, additional procedures." (Judgment of the Intellectual Property High Court, June 12, 2023; Case No. 2023 (Gyo-Ke) 10008)
Furthermore, although this pertains to a patent-related case, the court held: "Given that Article 30, Paragraph 2 of the Patent Act is specifically established as a procedure for recognizing an exception to the loss of novelty, in cases where multiple disclosures of an invention have occurred as a result of the rights holder’s actions, it would generally be necessary to follow the prescribed procedures for each such disclosure. However, it is reasonable to interpret that if a disclosure is closely related to—and can be considered substantially identical to—a disclosure for which the required procedures have already been completed, the exception may be applied without the need for separate, additional procedures." (Judgment of the Osaka District Court, April 20, 2017; Case No. 2016 (Wa) 928)
Based on the above, it is reasonable to conclude that the procedures stipulated in Article 4, Paragraph 3 of the Design Act are not required in order to invoke the exception under Article 4, Paragraph 2 of the same Act, in relation to the disclosure of a "predictive CG" created by business entities in a collaborative relationship.
Note that for design registration applications filed on or after January 1, 2024, Article 4, Paragraph 3 of the Design Act (as amended in 2023) applies; therefore, it is no longer necessary to cite judicial precedents to support the application of the exception to the loss of novelty.
In light of the above, in this litigation seeking the rescission of the trial decision, it should be argued that the original trial decision runs counter to the legislative purpose (Article 1 of the Design Act) and constitutes an abuse of the discretionary power granted by law (Article 30 of the Administrative Case Litigation Act).
Even if the Intellectual Property High Court does not accept this argument, it would be worth appealing to the Supreme Court; should the Supreme Court rule in our favor, it would become a landmark precedent in the field of intellectual property law.