January, 2014｜News Letter

1. May Description of Patent be Referred to for Construing Prior Art Reference?Panasonic Corporation v. Toshiba Home Appliances Corporation, Case No. 2013 (Gyo-Ke) 10163 (Decision rendered on January 30, 2014)

The Patentee, Panasonic, obtained a patent relating to a method for inactivating pollen antigen, viruses and the like by charged fine particulate water in 2011, against which Toshiba filed an invalidation trial before the JPO in 2012. The JPO admitted Toshiba's demand and rendered a decision of invalidation in 2012, followed by Panasonic's 1st appeal against the JPO's decision to the IPHC along with a demand for a correction trial before the JPO in 2012. The IPHC remanded the case to the JPO, and the JPO admitted the correction but rendered a decision of invalidation again in 2013, followed by Panasonic's 2nd appeal against the JPO's decision to the IPHC in 2013.

Claim 1 of the patent at issue claims as follows:
“A method for inactivating any of pollen antigen, mold, fungus or virus by charged fine particulate water by electrostatically atomizing water in the atmosphere to generate charged fine particulate water having a particle size of 3 to 50 nm and react the charged fine particulate water with any of pollen antigen, mold, fungus or virus, wherein the charged fine particulate water is released indoors and further contains one or more radicals of hydroxyl radicals, superoxides, nitrogen monoxide radicals and oxygen radicals”.

One of the main issues in this case was whether the description of the patent at issue may be referred to for construing the prior art reference for examining novelty. The IPHC answered to the issue as follows.

In the 2nd JPO's decision, the JPO found that charged fine particulate water disclosed in prior art reference (p.a.r.) 1 must have contained radicals such as OH radicals like the claimed invention of the patent at issue did on the grounds that the same graph showing the particle-size distribution of the charged fine particulate water was disclosed both in p.a.r. 1 and the specification of the patent at issue, and thus the same charged fine particulate water must have been generated by the same apparatus both in p.a.r. 1 and the patent at issue.

However, the IPHC denied the above JPO's decision on the grounds (i) that although the JPO referred to the description of the patent at issue for construing the content of p.a.r. 1, such a reference could not be justified since the specification of the patent at issue had not been published at the priority date of the patent at issue, and thus those skilled in the art could have not taken it into consideration, and (ii) that even though the same distribution was disclosed in p.a.r. 1, it could not be acknowledged that those skilled in the art could have recognized that the charged fine particulate water disclosed in p.a.r. 1 contained radicals.

Conclusively, the IPHC upheld Panasonic's appeal, and cancelled the 2nd JPO's decision.

An appeal to the Supreme Court was not filed against this decision, and thus the decision is final and binding.

K&P’s CommentsThis decision teaches that consideration of the description of a patent (application) should be excluded for construing the content of a prior art reference even in determining novelty, and that it is required of those skilled in the art to recognize the claimed feature at the priority date of the patent (application) in order to acknowledge that the claimed invention is inherently disclosed in a prior art reference.

In January 2014, the IPHC handed down 14 decisions including the above case on patents, and overturned previous decisions in 2 cases.

2. Can “LADY GAGA” be a Mark for CDs ?Ate My Heart Inc. v. The Director of the Japan Patent Office, Case No. 2013 (Gyo-Ke) 10158 (Decision rendered on December 17, 2013)

Plaintiff, Ate My Heart Inc, a company owned by a famous singer Lady Gaga filed a trademark application for the mark “LADY GAGA” designating “phonograph records, music files, image films, etc.” in Class 9. The application was rejected and the plaintiff filed an appeal against the decision of rejection, which the JPO sustained. Then, the plaintiff filed a suit against the decision with the IPHC.

The Main IssueThe main issue in this case is whether “LADY GAGA” is descriptive when used on “phonograph records, etc.” or is a source indicator.

Each party's allegation and the decision rendered1) The JPO's allegation
The mark “LADY GAGA” reminds people of a world-famous singer Lady Gaga. Thus, consumers would easily perceive that the mark “LADY GAGA” represents contents of the goods, in other words, consumers would most likely believe that phonograph records/CDs with the mark “LADY GAGA” contain Lady Gaga's music/performances. Therefore, the mark “LADY GAGA” is descriptive with respect to “phonograph records, etc.” Further, if the mark is used on goods not related to the singer Lady Gaga, it may mislead the consumers.

2) The plaintiff's allegation
*The JPO assumed some specific ways of using the mark, and based on such assumption, determined the mark was descriptive. But trademark examination should be made according to the mark and goods as filed and thus the JPO's such examination is arbitrary. Further, no inconvenience will arise even if the mark “LADY GAGA” is registered.
*There are a number of trademark registrations of names of companies owned by singers bearing the same names as the singers' names themselves. There is no reason to reject “LADY GAGA” since her company may change its name to “LADY GAGA”.
*A singer's name merely suggests that the goods bearing the name relate to the singer in some vague manner, but does not indicate any specific quality.
*If the mark “LADY GAGA” is not registered and a third party can use the mark, reputation associated with Lady Gaga will get hurt. It may also cause confusion as to source of the goods.
*A singer's name itself could be a source indicator since, at CD shops, CDs are displayed according to singers' names and consumers purchase CDs based on singers' names.

3) Decision
The IPHC sustained the JPO's rejection of the mark “LADY GAGA” with respect to “phonograph records, etc.”, fully supporting their allegation.

An appeal to the Supreme Court was filed against this decision, and thus the decision is not final and binding.

K&P’s Commentst appears that the plaintiff could not make a persuasive argument and the IPHC sustained the JPO's decision. When it comes to whether a singer's name is descriptive when used on phonograph records, it would be difficult to convince the courts that it is a source indicator, but not descriptive of quality (content) of goods. In this context, the IPHC's decision may be reasonable. However, the application was rejected because of the outstanding reputation of Lady Gaga as a singer, and thus if she had not been such famous, the mark “LADY GAGA” could have been registered. There seems to be many opinions against the IPHC's conclusion among trademark practitioners. Anyway, there will be room for the mark “LADY GAGA” to be registered if it obtains secondary meaning as a trademark.

In January 2014, the IPHC handed down 4 decisions including the above case on trademarks, and overturned previous decisions in 2 cases.