Episode 14

Even if a trademark or design is not registered, it is possible to seek an injunction or damages for infringement under the Unfair Competition Prevention Act.
However, while the hurdle for proving the requirements for an injunction or damages under the Unfair Competition Prevention Act is high, the existence of a trademark right or design right, which requires registration with the Japan Patent Office, is proven by registration. Furthermore, in a claim for damages, intent or negligence is also presumed.
In a lawsuit (Tokyo District Court, 2018 (Wa) No. 26166, judgment dated November 30, 2020), in which a design right holder for a "prefabricated house" filed a lawsuit alleging that the defendant's actions constituted an infringement of the design right and a violation of the Unfair Competition Prevention Act, the violation of the Unfair Competition Prevention Act was not found, but the infringement of the design right was found.
In a lawsuit filed by the owner of the registered trademark "Bike Lifter" for the designated product "transport dolly for motorcycles" alleging that the defendant's actions constituted infringement of the trademark right and violation of the Unfair Competition Prevention Act (Osaka District Court, 2015 (Wa) No. 547, judgment dated January 19, 2017), the violation of the Unfair Competition Prevention Act was not found, but the infringement of the trademark right was acknowledged.
In order for a product to be considered an "indication of goods, etc." under Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act, 1) the shape of the product must have objectively distinctive features that are different from other similar products (particular distinctiveness), and 2) the shape must have been used exclusively by a specific business for a long period of time, or the product must have become well-known among consumers as an indication of the source of a specific business through extremely powerful advertising or explosive sales performance (well-knownness) (Intellectual Property High Court, 2012 (Ne) No. 10069, judgment dated December 26, 2012).
The Unfair Competition Prevention Act imposes a high hurdle for proving the existence of rights, so if you fail to register a trademark or design right, it may become difficult to exercise your rights.

Episode 13

There is a debate about whether or not applied art should be subject to overlapping application of design rights and copyright.
The conventional view was that for applied art to be protected as a work of authorship, it was not enough for the expression to be recognized as creative, but that it also needed to have a level of artistic appreciation that could be considered equivalent to pure art.
However, in the Intellectual Property High Court ruling of 2014 (Ne) No. 10063 on April 14, 2015, the court ruled that "applied art, like other works of expression, may be recognized as creative and copyrightable if the expression shows some individuality of the creator, but it is difficult to imagine that this would lead to restrictions on its use and distribution in the general public that would prevent the realization of practical or industrial purposes." and thus granted protection to applied art as a work of authorship.
The court also acknowledged the overlapping application of the Copyright Act and the Design Act, stating that "Copyright Act and Design Act have different aims and purposes (Copyright Act, Article 1; Design Act, Article 1), and there is no explicit relationship in which one of them applies exclusively or preferentially, and the application of the other is impossible or subordinate, and it is difficult to find any rational basis for such an interpretation."
This Intellectual Property High Court ruling is a precedent. A "precedent" is a ruling that contains a legal opinion that should be applied to other cases, and merely stating the reason for the sentence in the case in question is not a precedent (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). This is a Supreme Court precedent in a criminal case, but in a civil case, merely stating the reason for the amount of compensation is not a precedent.
Regarding the interpretation of Article 102, paragraphs 2 and 3 of the Patent Act (presumption of the amount of damages, etc.), there is the judgment of the Grand Council case of the Intellectual Property High Court, Case of 2018 (Ne) No. 10063 on June 7, 2019. In this judgment, the amount of profit received by the infringer is the amount of marginal profit obtained by deducting additional expenses required from the sales amount of the infringing product. Furthermore, the rate to be received for the implementation in this case was determined taking into consideration the statistical average royalty rates in recent years in the technical field of each patent in question. In other words, this judgment is a court case that merely indicates the reason for the amount of compensation, and is not a precedent. Nevertheless, it is abnormal that it is a Grand Council case. One year and four months after this Grand Bench judgment, the presiding judge (the Chief Justice of the Intellectual Property High Court) was promoted to the President of the Takamatsu High Court.

Episode 12

In Episode 11, we explained about designs based on functional beauty. In this case, if an item that is the subject of a design registration focuses on its function, it becomes the subject of a utility model registration.
In the United States, both designs and utility models are incorporated into the patent system and are protected as design patents and utility patents. The relationship between the two is explained by the United States Patent and Trademark Office as follows:
" In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.
While utility and design patents afford legally separate protection, the utility and ornamentality of an article may not be easily separable. Articles of manufacture may possess both functional and ornamental characteristics." (https://www.uspto.gov/web/offices/pac/mpep/s1502.html#d0e150263)
The above explanation also applies in Japan. If you create a design based on functional beauty, you should also apply for a utility model registration for that function. If you create an invention that is distinctive in its shape or configuration, you should also apply for a design registration for that shape or configuration.
If you obtain rights in both a design and a utility model, when you exercise your rights against an infringement, even if one is not recognized, there is a chance that the other will be recognized.