Episode 36

This time, I will explain the concept of similarity in designs.
Design similarity arises in two contexts: the examination stage (Article 3, Paragraph 1, Item 3 of the Design Act) and the post-registration stage (Articles 23 and 24, Paragraph 2 of the same Act).
According to a Supreme Court judgment (Supreme Court Judgment, March 19, 1974, Third Petty Bench, Case No. 45 (Gyo-Tsu) of 1970; *Minshu* Vol. 28, No. 2, p. 308):
1. A design similar to a registered design (Article 23 of the Design Act) refers to a design that, when applied to an article identical or similar to the article associated with the registered design, evokes an aesthetic impression in general consumers similar to that of the registered design.
2. Based on the above, the similarity referred to in Article 3, Paragraph 1, Item 3 of the Design Act concerns the similarity of aesthetic impressions regarding the design of an article, viewed from the perspective of general consumers.
3. Article 3, Paragraph 2 of the Design Act removes the restriction regarding the identity or similarity of articles; instead, it focuses on the novelty or originality of the design's concept—viewed from the perspective of a person skilled in the art—based on motifs that are widely known in society.
In this Supreme Court judgment, the Court rejected the "creation by a person skilled in the art" theory regarding design similarity and adopted the "confusion by general consumers" theory.
However, it was pointed out that some court precedents and practices evaluated design similarity from the perspective of persons skilled in the art (such as designers). This coexistence of differing judgment methods—diverging from the Supreme Court precedent—led to a lack of clarity regarding how design similarity is determined (as noted in the explanatory materials for the 2006 amendment).
Consequently, Article 24, Paragraph 2 was added to the Design Act during the 2006 amendment, stipulating that "the determination of whether a registered design and another design are similar shall be made based on the aesthetic impression evoked through the visual perception of consumers." Taking into account the numerous court precedents that adopt the perspectives of traders and consumers when determining the similarity of designs, the law was stipulated to base such determinations on the presence or absence of a common aesthetic impression evoked in "consumers"—rather than "general consumers" (Commentary on Industrial Property Laws).
So, who exactly constitutes a "consumer"? The "Roof Tile Case" (Intellectual Property High Court Judgment, June 12, 2023; 2023 (Gyo-Ke) No. 10008) serves as a useful reference here. This lawsuit sought the rescission of a trial decision (Invalidation Trial No. 2021-880006) regarding the invalidation of a design registration under Article 48, Paragraph 1, Item 1 of the Design Act (on the grounds of violating Article 3, Paragraph 1, Item 3).
In that judgment, the court held: "While the determination of whether a registered design and another design are similar is based on the aesthetic impression evoked through the visual perception of consumers (Article 24, Paragraph 2 of the Design Act), the article pertaining to the design in question—roof tiles—involves not only the construction contractors who install them as consumers but also the clients (property owners) who order the roofing work and become the owners of the finished product; these clients are also significant consumers. Furthermore, even construction contractors must ultimately prioritize the aesthetic perspective of the client following installation. Therefore, the assessment of aesthetic impression—a key factor in determining similarity for the design in question—should be conducted from the perspective of the aesthetic values ​​prioritized by the client after installation, rather than solely from that of the construction contractor."
However, there is a logical leap in this lawsuit: the court based its similarity determination on Article 24, Paragraph 2 of the Design Act, even though the issue at hand concerned similarity under Article 3, Paragraph 1, Item 3. Ideally, the determination should have been grounded in Supreme Court precedent (Supreme Court Third Petty Bench Judgment, March 19, 1974; 1970 (Gyo-Tsu) No. 45; *Minshu* Vol. 28, No. 2, p. 308). When assessing similarity based on the aforementioned Supreme Court precedent—which focuses on "similarity of aesthetic appeal from the perspective of ordinary consumers"—the determination must be based on the aesthetic appeal as perceived by the client (the party ordering and ultimately owning the roof) rather than by the construction contractor performing the work. While the conclusion remains the same, the underlying reasoning differs.
On the other hand, in infringement litigation, similarity at the time of infringement is assessed based on Articles 23 and 24(2) of the Design Act. If a defense of invalidity is raised in such litigation, similarity at the time of the examination decision is assessed based on Article 3(1)(iii) of the Design Act. Although both assessments rely on "aesthetic similarity from the perspective of general consumers," this perception can change over time.
In recent years, the spread of social media and similar platforms has shown that the values ​​held by general consumers can shift rapidly. Consequently, a design might be deemed dissimilar at the time of infringement but similar at the time of the examination decision, or vice versa.
If, in future infringement litigation, a party can demonstrate that "aesthetic similarity from the perspective of general consumers" has changed over time, it is possible that court rulings will emerge where the determination of similarity differs between the time of infringement and the time of the examination decision.

Episode 35

In a lawsuit filed by ZOOM Corporation, a Japanese audio equipment manufacturer, against Zoom Video Communications, Inc. (hereinafter referred to as Zoom Inc.) and its Japanese distributor, alleging that the logo for the online meeting system "Zoom" was similar to ZOOM's own logo and infringed its trademark rights, the Tokyo District Court ruled on April 24th that Zoom Inc. must pay approximately 166.2 million yen and the distributor approximately 16.1 million yen. The court did not grant the order to cease using the logo. Note that this ruling, although more than a month has passed since the judgment, has not been published on the Supreme Court's case law search site; therefore, this explanation is based on media reports.
ZOOM Corporation is a company that develops and sells electronic and audio equipment. In 2005, it applied for a trademark for its logo, a stylized version of the four letters "ZOOM," which was registered the following year.
Meanwhile, Zoom Inc. was established in the United States in 2011 and displays the "Zoom" logo, representing its service name, on its software screens and web pages.
The plaintiff had previously stated on its website that, due to the defendant's actions, its customer support phone and email lines were inundated with inquiries regarding video conferencing services starting around October 2019. Furthermore, in June 2020, following ZVC's earnings announcement, the company's stock price hit the upper limit for two consecutive days due to name confusion, before plummeting. This not only disrupted the plaintiff's business operations but also caused damage to innocent third-party investors. The plaintiff had previously published this information on its website, but it has since been removed.
The judgment pointed out that both companies use stylized "ZOOM" or "Zoom" lettering, and that the pronunciation and meaning of "zoom" are the same. The court concluded that, "overall, the logos of both companies are somewhat similar," and therefore found Zoom's logo to have infringed ZOOM's trademark rights.
However, as a result of the widespread adoption of Zoom's online conferencing services following the COVID-19 pandemic, the court determined that there was no longer a risk of general users confusing the two companies after July 2020. Therefore, while ordering Zoom Inc. to pay an amount equivalent to the license fees for past trademark infringements, it did not order Zoom Inc. to cease using the logo.
Incidentally, the object of trademark protection is not the trademark itself, but the business goodwill embodied in the trademark (Trademark Law Article 1). In this regard, the investigator's commentary in the Kozosushi case (Supreme Court Judgment of March 11, 1997, Case No. 1102 (O) of 1994, Third Petty Bench, Minshu Vol. 51, No. 3, p. 1055) is relevant.
"Different considerations are necessary when dealing with rights such as patents and utility model rights compared to trademark rights. Specifically, in the case of patents and utility model rights, they possess creative value in themselves, and infringing products utilize these rights in their performance, effectiveness, etc. Therefore, a portion of the sales of infringing products inevitably corresponds to the consideration for the patent rights. Furthermore, the sale of infringing products signifies the existence of demand for products that embody the said patent rights, and the very fact that infringing products are being sold indicates the existence of demand for the granting of licenses for said patent rights.
In contrast, trademark rights do not possess creative value in themselves; they only acquire a certain value when linked to the business reputation of the company or other entity that produces the goods. That is, the sale of goods bearing a trademark does not immediately mean that the trademark contributed to sales, nor does the sale of goods necessarily mean that there is demand for licenses to use that trademark." (Same judgment, Supreme Court Case Commentary, Civil Cases, 1997 (Part 1)) (Page 370)
In this lawsuit, the defendant, Zoom, Inc., is a corporation established in the United States, and the "Zoom" logo attached to its online meeting system quickly became a well-known trademark. Zoom, Inc. has no incentive to obtain a license for ZOOM Corporation's trademark in Japan.
However, it is also true that ZOOM Corporation suffered damages due to consumer confusion and misidentification of the two logos.
Therefore, ZOOM Corporation should have requested Zoom, Inc. to include a misleading/confusion prevention notice when inquiries about its video conferencing service were received, and Zoom, Inc. should have indicated on its software screens and web pages that it is unrelated to ZOOM Corporation.
If ZOOM Corporation did not request Zoom, Inc. to include a misleading/confusion prevention notice, then the consumer confusion and misidentification are ZOOM Corporation's responsibility.
If ZOOM Corporation requested Zoom Inc. to implement a misleading or confusing trademark indication, and Zoom Inc. failed to comply, this would constitute "infringement of another person's rights or legally protected interests through intent or negligence" (Article 709 of the Civil Code), thus establishing a general tort.
This case should not be handled under trademark law, particularly regarding license fees (Article 38, Paragraph 3 of the Trademark Law), but rather under general tort law (Article 709 of the Civil Code). The judgment in this case suggests a lack of competence on the part of the judge.

Episode 34

On April 24th, in an appeal trial (Supreme Court Judgment of April 24, 2026, Second Petty Bench, Case No. 356 (Ju) of 2025) concerning copyright infringement of a children's chair (TRIPP TRAPP) between a Norwegian company and a Japanese company, the Supreme Court ruled that copyright infringement of mass-produced practical goods is only recognized in exceptional cases, and dismissed the Norwegian company's claim.
According to the judgment, if the shape, etc., of the whole or part of a mass-produced practical goods can be conceptually understood as a creative expression of thought or feeling, separate from the configuration derived from its function, then the whole or part of said mass-produced practical goods falls under the category of works within the realm of art as defined in Article 2, Paragraph 1, Item 1 of the Copyright Act.
Applying this to the present case, the shape, etc., of the whole or part of the chair in question can only be understood as a configuration derived from its function as a children's chair, and cannot be understood separately as a creative expression of thought or feeling. Therefore, the chair in question cannot be considered a copyrighted work.
Based on the above, the lower court's judgment regarding the points raised by the appellant can be affirmed as correct and does not conflict with the precedent cited by the appellant, and the appeal was dismissed.
"When the appeal is found to be without merit based on the appeal brief, statement of grounds for appeal, answer, and other documents, the appeal may be dismissed by judgment without oral arguments" (Article 319 of the Code of Civil Procedure). Therefore, in this case, a judgment of dismissal should have been possible without oral arguments.
The Intellectual Property High Court has issued judgments regarding copyright infringement of the chair in question, including one recognizing its copyrightability (Intellectual Property High Court, Case No. 10063 (Ne) of 2014, April 14, 2015) and another denying it (Original court: Case No. 10111 (Ne) of 2023, September 25, 2024), but both concluded with dismissal of the claim.
Since the Supreme Court is a court of law, if there is an error in the factual findings, it will, in principle, rule on the method of determining the facts, and remand the case to the lower court for the actual factual findings (Article 325 of the Code of Civil Procedure).
Looking at the reasoning of the judgment in this appeal, it can be inferred that the Supreme Court research officer intended to remand the case to have the lower court re-evaluate the copyrightability of the chair in question, changing the lower court's statement that "copyrightability is recognized for the creative expression of the shape, etc., of a practical product like the plaintiff's product only when it includes a part that is an object of independent aesthetic appreciation separate from its practical function, or when the practical product is deemed to have been produced solely for the purpose of aesthetic appreciation" to "copyrightability is recognized when the shape, etc., of the whole or part of a mass-produced practical product can be grasped conceptually as a creative expression of thought or feeling, separate from the configuration derived from function." In the judgment regarding the copyright infringement of the chair in question (Intellectual Property High Court, Case No. 10063 (Ne) of 2014, April 14, 2015), which recognized copyright protection for the chair in question, copyright infringement was not recognized because the chair was not similar to the appellee's chair, even though copyright protection was recognized for the chair in question.
In contrast, the chair of the respondent in this appeal is highly similar to the chair in question, and if copyright protection is recognized for the chair in question, the probability of copyright infringement being established increases.
Lower courts (district and high courts) only need to focus on the conclusion of the case when writing their judgments, but the Supreme Court may consider the impact of the judgment on society and make decisions from a political perspective.
In this case, a foreign company sued a Japanese company based on the copyright of its product. Even if the Japanese company wins the case, the legal fees and time required for litigation will be a significant burden. For small and medium-sized enterprises, this could even lead to bankruptcy.
If copyright protection for mass-produced, practical goods is recognized, similar lawsuits by foreign companies may become frequent in the future. To protect Japanese companies from such lawsuits, it is considered preferable from an industrial policy perspective to deny copyright protection for mass-produced, practical goods and dismiss such cases outright.
Therefore, it is natural to assume that the decision was changed just before the judgment to dismiss the case without recognizing copyright protection.
The investigating officer was forced to write a judgment reasoning different from the original plan, resulting in an unsatisfactory judgment. It is thought that Judge Akira Ojima added a supplementary opinion to compensate for this.
Judge Akira Ojima, given his career (Supreme Court Investigator → Cabinet Legislation Bureau Counselor → Senior Investigator → Chief Investigator), is the only Supreme Court justice currently capable of writing judgments himself.
In recent years, the High Courts and the Supreme Court seem to have adopted a system where, when distributing cases to the appropriate department, they do not distribute them mechanically, but rather distribute them to the department (panel) appropriate to the content of each case.
The case in question, in which an appeal has been filed, is considered to have had a significant impact on society due to the potential for its conclusion to be deleted. Therefore, it was assigned to the Second Petty Bench, to which Justice Akira Ojima, the only Supreme Court justice currently capable of writing his own judgments, belongs.
Unlike district and high courts, the Supreme Court's presiding judge is the chief judge (the judge who prepares the judgment). However, in this case, Justice Akira Ojima is effectively the chief judge.
In his supplementary opinion, Justice Akira Ojima argues that even mass-produced or practical items, such as prints (which are mass-produced), are explicitly considered works of art under Article 10, Paragraph 1, Item 4 of the Copyright Law. Furthermore, practical items like tea ceremony utensils and tableware can also be considered works of art. Therefore, the mere fact that something is a mass-produced practical item does not automatically negate its copyrightability. Artworks and crafts are considered works of art under Article 2, Paragraph 2 of the Copyright Law. Typical examples include craftworks that are individually produced and practical items. However, there is no provision in the law that definitively defines this, and it cannot be definitively said that there are no mass-produced practical items that fall under this category.
While the scope of what constitutes an artwork or craft is not necessarily clear, it is clear that the chair in question is not an artwork or craft, and therefore, the requirements for such classification do not need to be considered in this case.
The Supreme Court judgment in this case does not provide general requirements for determining whether a mass-produced practical item constitutes an artwork, but rather provides a specific judgment that the chair in question is not an artwork or craft. Therefore, it is a judicial precedent, not a case law. A "case law" is a judgment that includes legal views applicable to other cases; merely stating the reasons in a particular case does not constitute a case law (Supreme Court, Case No. 3474 of 1951 (A), Decision of the First Petty Bench of February 12, 1953, Criminal Collection, Vol. 7, No. 2, p. 211). Therefore, it is not possible to file a petition for acceptance of appeal based on this Supreme Court judgment (Article 318, Paragraph 1 of the Code of Civil Procedure).