Episode 18

It is possible to apply for design registration for three-dimensional shapes, and it is also possible to apply for registration as a three-dimensional trademark.
Since design rights are creations resulting from human mental activity, registration requires novelty and creatability, and the term of the right is limited (25 years from the application date).
In contrast, trademark rights protect business reputation, so they require awareness through use, and the term of the right is semi-permanent through renewal registration.
The Intellectual Property High Court has ruled as follows on this matter.
"Given that trademark rights can be held semi-permanently by repeatedly renewing the duration of their validity, granting protection to three-dimensional shapes that were the subject of utility model rights or design rights through trademark rights could result in a specific person being granted exclusive rights semi-permanently beyond the duration of the rights under the Utility Model Law or Design Law, which would unfairly restrict fair competition between businesses. Therefore, unless there are special circumstances in which the three-dimensional shapes that were the subject of utility model rights or design rights have acquired distinctiveness unrelated to the monopoly of the rights, it cannot be deemed that they have acquired distinctiveness through use." (Intellectual Property High Court Case 2017 (Gyo-Ke) No. 10155, Judgment of January 15, 2018)
Recently, special circumstances in which "distinguishing power through use" has been recognized, a three-dimensional trademark for Shin Godzilla was approved.
Based on the "overwhelming recognition of the Godzilla character," the court ruled that "although the trademark in question falls under Article 3, Paragraph 1, Item 3 of the Trademark Act, the trademark in question falls under Article 3, Paragraph 2 of the Trademark Act because it can be recognized that the use of the trademark in question on the designated goods has led to general consumers being able to recognize that the goods are related to the plaintiff's business." (Intellectual Property High Court Case No. 10047 of 2024 (Gyo-Ke) of October 30, 2024)

Episode 17

Intangible property rights (intellectual property rights) include rights to creations that are the result of human mental activity and rights to goodwill (Basic Jurisprudence 3: Property, p. 281, "Intangible Property Rights" by Nakayama Nobuhiro).
 Creations that are the result of human mental activity include patent rights, utility model rights, and design rights. Rights to goodwill include trademark rights.
 Unlike patent rights, etc., infringers can avoid liability for damages by asserting and proving that no damages were caused as a defense against claims for damages from trademark holders based on Article 38, paragraph 2 of the Trademark Act (Supreme Court, 1994 (O) No. 1102, 3rd Petty Bench Judgment, March 11, 1997, Minshu Vol. 51, No. 3, p. 1055).
 In other words, trademark rights do not protect the trademark itself, but the goodwill embodied in the trademark, so even if a trademark is registered, that alone does not allow the rights to be exercised. The Supreme Court has the following commentary on this matter:
 "Rights such as patent rights and utility model rights must be considered differently from trademark rights. In other words, patent rights and utility model rights themselves have creative value, and the infringing goods utilize the patent rights in their performance, utility, etc., so a portion of the sales of the infringing goods necessarily corresponds to the value of the patent rights. Furthermore, the sale of an infringing product means that there is a demand for products that implement the patent rights, and the fact that infringing goods are being sold in the first place can be said to mean that there is a demand for the establishment of licenses to the patent rights.
 In contrast, trademark rights do not have creative value in themselves, and only have a certain value when linked to the business credit of the company or other entity from which the product originates. In other words, the fact that a product bearing a trademark is sold does not immediately mean that the trademark has contributed to sales, nor does the sale of a product mean that there is a demand for a license to use the trademark." (Same judgment, Supreme Court Case Commentary, Civil Cases, 1997 (Part 1) (Page 370)
Trademark rights cannot be exercised unless two requirements are met: the trademark is registered with the Patent Office, and the trademark is actually in use and has established goodwill in the business.

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.