Japan: IP High Court Found That Plaintiff's Configuration Of Goods Is Not Qualified As "An Indication Of Goods" Under The Unfair Competition Prevention Act Due To The Lack Of "Noticeable Feature" (Intellectual Property High Court, July 27, 2016)
In this case, Intellectual Property High Court (the
"IPHC") ruled that a configuration of goods would be
qualified as "an indication of goods" stipulated in
Article 2, Paragraph 1, item1 of the Unfair Competition Prevention
Act (the "Act") if: (i) such configuration of goods has a
noticeable feature compared to other goods of the same kind (the
"Noticeable Feature"); and (ii) such configuration of
goods is well-known among consumers as an indication of the origin
of the goods (the "Well-Known Indication").
The factual background of this case is as follows:
Plaintiff sells chopsticks named
"Edison's Chopsticks" for little children to teach
them how to use chopsticks. The chopsticks have the following
features (the "Plaintiff's Configuration"):
A pair of chopsticks is bound and
connected at upper end or upper side;
One of the chopsticks has two rings
on a first finger and a second finger; and
The other chopstick has a ring on a
KJC Corporation, a third party in
this case, manufactured and sold "Edison's
Chopsticks" and Plaintiff had been a distributor of the goods,
and sells around 50% of all of "Edison's Chopsticks"
Defendant sold chopsticks named
"Deluxe Training Chopsticks" (the "Defendant's
Plaintiff sought an injunction to
prevent the production and distribution of the Defendant's
Products, an order for disposal of Defendant's Products and a
claim for damages on the ground that the Plaintiff's
Configuration is qualified as "an indication of goods"
stipulated in Article 2, Paragraph 1, item 1 of the Act, which is
recognized as an indication of Plaintiff's goods, and Defendant
used the Plaintiff's Configuration in the Defendant's
Products, so that the indication causes confusion as to the
As to the Plaintiff's assertion above, Tokyo District Court
ruled that the Plaintiff's Configuration is not qualified as
"an indication of goods" for the following reasons:
Although a configuration of goods
does not intrinsically have a purpose to indicate the origin of the
goods, a configuration of goods would be qualified as "an
indication of goods" stipulated in Article 2, Paragraph 1,
item 1 of the Act if (i) it has the "Noticeable Feature"
and (ii) the "Well-Known Indication";
However, if a configuration which
inevitably derives from a function of goods were protected as
"an indication of goods," this would impede fair
competition, and therefore, such a configuration is not qualified
as "an indication of goods";
The Plaintiff's configuration, on
a whole, derives from an indispensable form to achieve the function
to fix fingers at a proper position by the rings; and
Configuration is not qualified as "an indication of
Plaintiff appealed to the IP High Court. The IP High Court
upheld the above judgment (1) and (2) of the Tokyo District Court
and further stated as follows:
Even if a configuration derives from
a function of goods, as long as there is an alternative
configuration of goods, the former configuration may be qualified
as "an indication of goods". However, it would be rare
that such a configuration has the "Noticeable Feature,"
and therefore, in many cases, such a configuration would not be
qualified as "an indication of goods."; and
Although the Plaintiff's
configuration does not derive from an indispensable form to achieve
the function, the Plaintiff's configuration should be regarded
as a common form, and therefore, it lacks the "Noticeable
The findings of facts as to whether Plaintiff's
configuration derives from an indispensable form to achieve the
function are different between the judgments rendered by the Tokyo
District Court and by the IPHC. However, it seems that the standard
as to whether a configuration of goods is qualified as "an
indication of goods" is the same in both judgments. Also the
standard is substantially in line with the one adopted in other
recent cases (e.g. IPHC, December 26, 2012, and Tokyo District
Court, July 19, 2016).
Besides, it appears that the IPHC's judgment (5) above
elaborates on the Tokyo District Court's criteria as to whether
a configuration of goods is qualified as "an indication of
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