カテゴリー: Unfair Competition Law

Fashion design and copycat

On July 30, the Tokyo District Court delivered a ruling in the case of copycat fashion dispute pertinent to the shape of cold shoulder blouse.
[Case no. Heisei 29(Wa)30499]

Cold Shoulder Blouse

The case was brought into the court by PETTERS Co., Ltd. who complained MAXIM Co., Ltd. of unlawfully imitating a unique shape of cold shoulder blouse designed by plaintiff and damaging business interests by distribution of defendant’s “KOBE LETTUCE” cold shoulder blouses.

According to the court decision, plaintiff allegedly designed a new cold shoulder blouse featuring unique ruffle sleeve and long ribbon (see right in below) in February 2016 and began selling from August of the year. Subsequently, defendant imported similar blouses (see left in below) from Korea and promoted for sale in Japan since May 2017.

Unfair Competition Prevention Law

Plaintiff argued defendant shall be liable for his conduct because it constitutes violation of Article 2(1)(iii) of the Unfair Competition Prevention Law.

Article 2(1)(iii) of the Unfair Prevention Law prohibits unauthorized party from assignment, lease, display for assignment or lease, export or import of goods which shape results from imitation of goods belonging to other entity.

The party shall be exempted from liability if it passes three months from initial offer for sale of imitated goods at the time of his misconduct.
From the case law, it is construed that the article does not apply for imitation of a commonly used-shape in light of the purposes and objectives of the article.

 

Court decision

The judge, however, did not clearly state if overall shape of plaintiff’s cold shoulder blouse shall be protectable under the article.
As a consequence, the court totally dismissed the case on the grounds that:

  1. There exists difference in the shape of ruffle sleeve and ribbon between disputed goods.
  2. The difference gives rise to distinctive impressive in the mind of consumers
  3. If so, the shape of defendant’s goods shall neither be identical with, nor deemed imitation of plaintiff’s goods.

    Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

Japan IP High Court Ruling – Shape of “Unit Shelf” functions as a source indicator of Ryohin Keikaku

The Japan IP High Court has affirmed an earlier ruling by the Tokyo District Court, and sided with Ryohin Keikaku Co., Ltd, an operator of the MUJI retail chain, in a lawsuit accusing CAINZ Corporation, the second largest DIY store chain in Japan, of violating the Unfair Competition Prevention Act (UCPA) by distributing ready-to-assemble storage rack “Joint System Shelf” which is allegedly an imitation of MUJI’s “Unit Shelf”.

CAINZ (appellant) contested the early ruling made an error of judgment  in finding that relevant consumers conceive the shape of “Unit Shelf” as a source indicator of Ryohin Keikaku (appellee) based on the research results which showed approx. 98 percent of general consumers were unable to associate the shape with appellee, and 9 merchants out of 10 who daily deals with living ware and furniture could not identify the shape as “Unit Shelf”.

Besides, appellant claimed appellee violated clean hands doctrine and thus abused the right given he pursued the case knowing that his act to promote the “Unit Shelf” constitutes infringement of  design right belonging to a third party.

The IP High Court ruled the research was neither adequate nor persuasive  enough to negate distinctive function of “Unit Shelf” as a source indicator, stating that it just targeted people in their 20s to 40s despite consumers of goods in dispute cover whole generations having an interest in household furniture. The questionnaire to ask a specific name of retail shop was far from the case. Some of the researched merchants have business with appellant. In addition, opinions of 10 merchants are way too insufficient  to bolster appellant’s allegation.

Fact that an entity who suffered damage by unfair misconduct of competitor admittedly infringes design right belonging to third party  does not immediately hinder him from making a legal claim based on the UCPA. Being that appellant’s act to promote  the “Joint System Shelf” is likely to cause confusion with appellee’s “Unit Shelf”, the court finds  higher degree of necessity to put a restriction on appellant’s misconduct. From the foregoing findings, the court ruled in favor of appellee and dismissed the allegations as well as abuse of right.

When you conduct market research pertinent to trademark, you should be more careful to decide questionnaire and respondent. Non-existence of design or trademark registration does not guarantee risk-free transaction of a similarly shaped goods with hot-selling product if the shape functions as source indicator.

MASAKI MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM

IP High Court ruled a commonly used shape of package is incapable of serving as a source indicator

On December 22, 2016, the IP High Court (Tokyo) upheld decision of Tokyo District Court (Case no. Heisei 27(Wa)33398), and ordered dismissal of appeal ruling that:

  • Appellant’s good serves as a source indicator due to designs, color, gloss, and texture depicted on external package of the goods, not merely by cube geometry of the package.
  • In view of severe difference in design, color, word mark appeared on the package, consumers will perceive such distinctive elements as “configuration of goods” provided under Article 2(4) of the Unfair Competition Law rather than shape of the package itself.
  • Configuration of goods is incapable of serving as a source indicator unless it comprises prominent distinction. Overall shape of package composed of appellant’s goods is quite simple and thus a mere fact of identical shape with respective package is insufficient to conclude that the shape plays a role of source indicator of goods in dispute.

package

Based on the foregoing, the court denied appellant’s motion to dismiss a decision of trial court on the grounds that overall package of appellant’s goods neither corresponds to “indication of goods” provided under Article 2(1)i of the Unfair Competition Law, nor “configuration of goods” under Article 2(1)iii without combination of designs, color, gloss, and texture depicted on the package.

Unfair Competition Law

Article 2(1)i
The term “unfair competition” as used in this Act shall mean any of the following:

(i) creation of confusion with another person‘s goods or business by use of an indication of goods, etc. (which shall mean a name, trade name, trademark, mark, container or package, or any other indication of goods or trade pertaining to a person‘s business; the same shall apply hereinafter) that is identical or similar to an indication of goods, etc. wellknown among consumers used by said person, or assignment, delivery, display for the purpose of assignment or delivery, export, import or provision through a telecommunications line of goods bearing the such an indication of goods, etc.;

 

Article 2(1)iii
(iii) assignment, lease, display for the purpose of assignment or lease, export or import of goods which imitate the form of another person‘s goods (excluding forms indispensable to ensuring the functioning of said goods);

 

Article 2(4)
The term “configuration of goods” as used in this Act shall mean the external and internal shape of goods and their associated patterns, color, gloss, and texture, which may be perceived by users when making ordinary use of the goods.

Unfair Competition Law plays a key role in a dispute involving unregistered mark or trade dress. The case teaches us a good lesson.

A coincidence in the shape of package is insufficient in a lawsuit based on the Unfair Competition Law unless the shape contains prominent distinction in itself.

Appeal Case no. IP High Court Heisei28(Ne)10084

1187hirai%e4%bf%ae%e6%ad%a3003_2Masaki MIKAMI – Attorney at IP Law (Japan)

MARKS IP LAW FIRM

Can shape of goods be protected under the Unfair Competition Prevention Law?

Imitation of training chopsticks

Plaintiff filed a lawsuit against defendant to cease to manufacture and distribute defendant’s training chopsticks in the name of “Deluxe Training Chopsticks” by alleging it constitutes confusion with, or imitation of plaintiff’s well-known training chopsticks in the name of “Edison Chopsticks” based on violation of the Unfair Competition Prevention Law.

chopsticks

 The IP High Court decision

In a dispute of imitation of training chopsticks, the IP High Court admitted Article 2(1)(i) of the Unfair Competition Prevention Law is interpreted to include shape of goods in the meaning of “another person’s goods or business by use of an indication of goods, etc. (which shall mean a name, trade name, trademark, mark, container or package, or any other indication of goods or trade pertaining to a person’s business)”, provided that the shape has acquired “secondary meaning” as a consequence of substantial use even if it is not aimed to serve as a source indicator.

 Article 2(1)(i) of the Unfair Competition Prevention Law

Article 2

(1)　The term “unfair competition” as used in this Act shall mean any of the following:

(i)　creation of confusion with another person’s goods or business by use of an indication of goods, etc. (which shall mean a name, trade name, trademark, mark, container or package, or any other indication of goods or trade pertaining to a person’s business; the same shall apply hereinafter) that is identical or similar to an indication of goods, etc. well-known among consumers used by said person, or assignment, delivery, display for the purpose of assignment or delivery, export, import or provision through a telecommunications line of goods bearing the such an indication of goods, etc.;

Secondary meaning for shape of goods

Besides, in the assessment of secondary meaning, the shape is required:

(1)   To contain a distinctive character distinguishable from other similar goods objectively, and

(2)   To be exclusively used by specific entity for a long period of time or published for advertisement extensively, and thus the goods gets known for a source indicator of the entity among relevant consumers

It should be noted that where the shape simply results from technical function and utility of the goods and leaves no other option to adopt an alternative configuration, such shape should not be protected under Article 2(1)(i) of the Unfair Competition Prevention Law.

In the meantime, where the shape leaves other option to adopt an alternative configuration, Article 2(1)(i) of the Unfair Competition Prevention Law is applicable on the condition that the shape meet above requirements, namely (1) distinctive character and (2) well-knownness.

 

Conclusion

Based on above rules, the IP High Court found that the shape of plaintiff’s Edison chopsticks evidently derives from technical function and utility since it serves directly for consumers to learn how to use chopsticks in a correct manner.

The IP High Court admitted the shape leaves other potion to adopt an alternative configuration, however, denied plaintiff’s argument in view of lack of distinctive character since Edison chopsticks consists of a common configuration with equivalent goods. (Heisei 28 Ne 10028 ruled on July 27, 2016)