About Intellectual Property IP Training Respect for IP IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgments IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships AI Tools & Services The Organization Working at WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets Future of IP WIPO Academy Workshops & Seminars IP Enforcement WIPO ALERT Raising Awareness World IP Day WIPO Magazine Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Youth Examiners Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Finance Intangible Assets Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Frontier Technologies Mobile Applications Sports Tourism Music PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Webcast WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO Translate Speech-to-Text Classification Assistant Member States Observers Director General Activities by Unit External Offices Staff Positions Non-staff Positions Procurement Results & Budget Financial Reporting Oversight
Arabic English Spanish French Russian Chinese
Laws Treaties Judgments Browse By Jurisdiction

Japan

JP077-j

1973(Gyo-Tsu)82, Shumin No.114, at 287"

Machine translation
close
tranlsation detector

Date of Judgment: 28.02.1975

 

Issuing Authority: Supreme Court

 

Level of the Issuing Authority: Final Instance

 

Type of Procedure: Judicial (Administrative)

 

Subject Matter: Industrial Designs

 

Main text of the judgment (decision):

1. The final appeal of the present case shall be dismissed.

2. The costs of the final appeal shall be borne by the appellant.

 

Reasons:

Reasons for the petition for final appeal made by the attorney for the final appeal, MATSUDA Takashi.

It is believed that Article 3, paragraph (1), item (iii) of the Design Act (hereinafter referred to as "Act") provides, as a requirement for registration of a design, that a design shall not be similar to the design listed in item (i) or (ii) of the same paragraph (publicly known design), in which case the point at issue is the similarity in terms of aesthetic impressions, as observed from the standpoint of general consumers, between the designs having identical or similar goods. To the contrary, the registration requirement according to paragraph (2) of the same Article is based on the shape, patterns, or colors, or any combination thereof, as widely known in Japan to constitute an abstract motif that is irrelevant to goods (well-known motif), and the same provision provides that a design shall not be something that can be easily created by those skilled in the art. As such, in paragraph (2) of Article 3, the restriction that the goods must be identical or similar is removed, and the point at issue is based on the well-known motif above and concerns the newness or uniqueness in the conception of the design, as observed from the standpoint of those skilled in the art. Accordingly, the similarity according to item (iii) of paragraph (1) of Article 3 and the easiness to create according to paragraph (2) of the same Article are different in the basis of the respective ideas, and thus it must be said that the judgment of the court of prior instance, based on the interpretation that the meaning of similarity according to item (iii) of paragraph (1) of the same Article is the same as the easiness in creation, to the effect that item (iii) of paragraph (1) of the same Article provides for refusal of registration concerning a design that can be easily created from the design listed in item (i) or (ii) of paragraph (1) of the same Article, is erroneous (Supreme Court Decision of 1970 (Gyo-Tsu) 45; judgment rendered on March 19, 1974, by the Third Petty Bench; refer to Minshu [Notes on Civil Cases], vol. 28, no. 2, page 308).

According to the decisions made in the court of prior instance, (1) the back side of 2 the Design, which is at issue in the present case, should be ignored because of its function, and (2) the entire shape of the Design is common, and (3) upon comparison between the Design and the Cited Design, whether or not the surface of the main body is divided into eight equal parts or six equal parts, whether or not the width of the brim (or flange) is uniform, whether or not there is a ribbon or a binding part thereof, and whether or not there is a black design on the surface of the main body are minor differences, none of which is enough to attract observers' eyes in the entirety. As such, the above judgment can be approved in light of the constituent parts of the two designs. Next, the combination of colors as pointed out as a difference between the two designs in the court of prior instance (black and yellow in the Design, dark red and orange in the Cited Design) is, in short, merely a combination of two colors even by taking into consideration the difference in lightness and hue, which were pointed out in the court of prior instance. Furthermore, as determined in the court of prior instance, the bicolor combination of the Design is very common, and thus it is difficult to say that the difference in the color combination of the two designs is necessarily noticeable. In that case, it is unavoidable to consider that the two designs are similar based on the comparison of the Design and the Cited Design upon observation of the two designs in the entirety, and it is reasonable to interpret that the Design falls under Article 3, paragraph (1), item (iii) of the Act in terms of its relationship with the Cited Design, which is a publicly known design.

Given the foregoing, the judgment of the court of prior instance to maintain the claim that the Design cannot be registered due to its applicability to item (iii) of paragraph (1) of the same Article is justifiable in its conclusion in spite of lacking the proper process in reaching the decision.

Consequently, the arguments made by the appellant cannot be accepted.

Therefore, the court unanimously renders the judgment as per the main text pursuant to Article 7 of the Administrative Case Litigation Act, and Articles 401, 95, 89, and 93 of the Code of Civil Procedure.

(This translation is provisional and subject to revision.)