Case of "Packaging Box" (Design right)
Case No. Heisei 27 (ne) 10077
Decision date: January 27,
2016
Court: IP High Court
(http://www.courts.go.jp/app/files/hanrei_jp/632/085632_hanrei.pdf)
(1) Overview
The plaintiff, who holds a design right for a partial design of an article "Packaging Box" (Design Registration No. 1440898; the "Design Right"), alleged against the defendant that the defendant infringes the Design Right by manufacturing and selling its packaging box. The Tokyo district court dismissed the plaintiff's complaint because the registered design and the defendant's design were not similar to each other (Case No. Heisei 26 (wa) 12985; http://www.courts.go.jp/app/files/hanrei_jp/152/085152_hanrei.pdf). The plaintiff then appealed to the IP High court. Conclusively, the IP High court also dismissed the appeal.
(2) Registered Design and Defendant's design
(cited from http://www.courts.go.jp/app/files/hanrei_jp/632/085632_hanrei.pdf)
(3) Judgment of similarity by the IP High Court
There are differences between the registered
design and the defendant's design in the concrete shape of the
accent panel which is the gist of the registered design (The accent
panel is a concave surface formed along one of three edge lines
extending from an upper point at a top of the body to lower points
forming a bottom surface.). In this connection, the nearly rhombic
shape formed by straight lines generally provides sharp and solid
impression in the registered design, while the nearly spindle shape
formed by curved lines generally provides rounded and soft
impression in the defendant's design.
Regarding the differences of the concrete shape of
the vertically central portions of the accent panels, the accent
panel in the registered design is significant in that the bottom
sides of the isosceles triangles are intended to form a folded
configuration and has an ornamental function in a polyhedron in
appearance, while in the accent panel in the defendant's
design, the vertically central portion shows the horizontal folding
line across the accent panel, but no folded configuration can be
seen. Thus, the esthetic feelings obtained from these accent panels
are different.
Regarding the ratio of the vertical length with
respect to the central width in the accent panel, the ratio in the
registered design is 8:1 so that a narrow and sharp feeling is
obtained, while the ratio in the defendant's design is 4:1 so
that a fleshy and gentle feeling is obtained. Thus, the aesthetic
feeling in the registered and defendant's designs are different
in this point.
A position and so on of the partial design with
respect to the entire article should be considered. In the
registered design, the opening (shown in the right-hand side
surface) of the packaging box is not arranged in the surface of the
accent panel so that the accent panel has no function as the
opening, while in the defendant's design, the accent panel is
arranged as the opening and has the function of the opening.
Considering the function of the packaging box, since it is
necessary for removing contents contained in the box, the
difference in the positions of the openings is a great difference
for a supplier and a consumer. Thus, the aesthetic feelings of the
registered design and the defendant's design are not common in
this point.
As a result, the registered design and the
defendant's design provide different aesthetic feelings to a
viewer as a whole, and the common points are not considered to
overcome the different aesthetic feelings.
Thus, the defendant's design is not similar to
the registered design.
(4) Interesting Issue
The plaintiff asserted that the shapes of the
accent panels of the registered design and the defendant's
design are publicly known as shown in registered designs A-C below,
in which different accent panels are arranged in a nearly
rectangular parallelepiped, and it should be considered that these
registered designs A-C are similar to each other (These designs are
registered as a principal and related designs).
The court held that in these registered designs A-C, along one long side of a rectangular parallelepiped of a packaging container, two nearly rhombic concave surfaces (registered designs A and C) or two nearly spindle concave surfaces (registered design B) are formed except for opposite end portions of the long side. Since these designs are rectangular parallelepipeds, the numbers of surfaces and sides thereof are different from those in a triangle pyramid so that a degree of attention to one side in the rectangular parallelepiped is smaller than that to one side in the triangle pyramid. Further, these registered designs A-C are different from the present registered design and the defendant's design in which one accent panel is formed entirely along on an edge line of the packaging box so as to give a strong impression as surfaces of a polyhedron. Thus, the registered designs A-C should not be considered.
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