Episode 23

Supreme Court rulings on the doctrine of equivalents include the Ball Spline case (Supreme Court ruling of February 24, 1998) and the Maxacalcitol case (Supreme Court ruling of March 24, 2017).
The doctrine of equivalents presented in the Ball Spline case typically assumes relief for patent holders when a new material with the same effect appears after filing, and the judgment of ease of substitution is also based on the time of infringement. In contrast, the Maxacalcitol case was a case in which the question of whether or not there was an infringement of equivalents occurred when a material with the same effect that already existed at the time of filing was used (Reference: Bessatsu Patent November 2021 issue, "Revisiting the Doctrine of Equivalents (Further Consideration of the Fifth Requirement of Equivalents)," by Ryoichi Mimura (https://jpaa-patent.info/patent/viewPdf/3830)).
In the original trial in the Maxacalcitol case (Intellectual Property High Court Grand Bench Judgment of March 25, 2016), the court ruled in determining the first requirement of equivalents (non-essential portions) that "given that the substantial value of a patented invention is determined according to the degree of contribution made by it in comparison with the prior art in its technical field, the essential portions of a patented invention should be determined from the claims and description of the specification, particularly a comparison with the prior art described in the specification; and, (i) if the degree of contribution made by the patented invention is evaluated as being greater than that of the prior art, then a portion of the claims will be recognized as a higher conceptualization, and (ii) if the degree of contribution made by the patented invention is evaluated as not being that great compared to the prior art, then it will be recognized almost the same as the description in the claims.
" Based on this premise, in determining the fifth requirement of equivalents (special circumstances), the court ruled that "when it is objectively and externally recognized that at the time of filing the application, another configuration outside the scope of the patent claim was recognized as a substitute for a different part of the configuration described in the claims, the fact that the applicant did not describe that other configuration in the claims can be said to be a 'special circumstance' under the fifth requirement."
The Supreme Court ruling in the Maxacalcitol case confirmed the above-mentioned ruling of the lower court. The Maxacalcitol case stipulated a set of methods for determining the first requirement of equivalents (non-essential parts) and the fifth requirement (special circumstances) so that infringement of equivalents could be applied even in cases where a material with the same effect that already existed at the time of filing was used.
The doctrine of equivalents was created in the Ball Spline case and fostered in the Maxacalcitol case.
Since the Maxacalcitol case, patent infringement litigation has entered a new stage, and literal infringement and infringement of equivalents have come to be examined together in patent infringement proceedings. In cases where the plaintiff does not claim infringement of equivalents, the courts have the practice of encouraging the plaintiff to claim infringement of equivalents. However, even if the court encourages the plaintiff to claim infringement of equivalents, it does not necessarily intend to recognize infringement of equivalents. This is to prevent the first instance court from pointing out the lack of fairness in its proceedings in the appeal court.

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".