Measures to lift the prohibition on listing on E-Commerce sites.
Note Re. Kimura & Partners Japanese Patent Mini-Case Studies
Kimura & Partners publishes Patent and other IP Mini Cases. These cover the range of IP types across the numerous industries we work in. They are short summaries to inform IP professionals and businesses on salient issues relevant to IP law and business. If a certain case study hits the mark for you, you’ll be armed to deepen your knowledge before you take action, and increase your likelihood of success. We are always happy to discuss such cases or other matters with any readers who reach out to us.
We’ve worked with countless Japanese and foreign SMEs, and their leaders and inventors who are often one and the same. Kimura often refers to the “IP Battleground” given the challenges and risks such companies face. We salute SME’s globally as they are the engine for economic growth everywhere.
Enjoy
Takaaki Kimura
Mini Case #3. Measures to lift the prohibition on listing on E-Commerce sites
A new Kimura client consulted with us that “I was listing on a well-known E-Commerce Site but I was notified that I would have to stop listing because there was a possibility of infringement of design rights. I don’t think I have infringed. What can I do?” After our initial consideration and response, we proceeded with the matter on their behalf. Measures to lift the prohibition on listing on E-Commerce sites can be vital to a business – it became our mission.
This is “a product that has a stretch effect” and the design right holder made a claim to the E-Commerce site that it is a” design right infringement product “. Immediately, I asked him to provide the design registration number information claiming infringement and to send us the product in question. Referring to the terms of the EC site, we tried to determine whether or not the infringement of the design right was truly established.
In general, E-Commerce sites are nervous from the viewpoint of “compliance”, especially regarding products that infringe IP rights. If there is a claim that they are “infringing”, they often suspend the listing of products without verifying whether or not they are really infringing the rights.
Design rights extend not only to registered designs but also to similar designs (Article 23 of the Design Law). However, since “ideas related to technology” such as patents and utility models are expressed in language, rights are given to abstract concepts, whereas designs are “related to the appearance of goods”. Since the right is granted to the design itself of the article described in the drawing, the scope of the right is narrower than that of a patent or a practical new idea even if “the right extends to a similar range”.
In addition, the design is grasped by the elements of “shape, pattern, color of the article”, and the element of “shape” occupies a large part in the judgment of infringement regarding this product. Based on this premise, the registered design in question was actually compared with the “stretch effect pillow” in this case to determine the presence or absence of infringement. The design registration is a registration related to “pillows with a stretch effect” as in the case of this product, and when referring to the attached drawings, the overall shape was certainly similar.
However, the product has a unique configuration characteristic: that of a large hole and whose rear shape is different from the rear shape of the registered design, and which appears in a very conspicuous state. It was clear that consumers would experience a different aesthetic as a whole as compared to the registered design.Therefore, based on this point, it was judged that the Product was not similar to the registered design and was not an infringement of the design right.
Based on our analysis and conclusion, I contacted the client to that effect and considered how to deal with it. We reached the conclusion that would create a written opinion stating that it was not an infringement of the design right: specifically it was agreed to make a counterargument that “there is no basis for infringement”. We sent our written opinion to the host company of the EC site.
After taking such measures, the suspension of listing was withdrawn at the discretion of the E-Commerce site, and the product was able to return to the site.
END
