The Plaintiff requested injunctive relief and damages, asserting that the Defendant’s design is similar to the subject design (Reg. No. 1536247) and that working the Defendant’s design infringes on the subject design right. The court nevertheless ruled in favor of the Defendant. The “training device” according to the subject design and the Defendant’s design pertains to an EMS product that is used to apply electrical stimuli to muscles of the human body.
Summary of Decision and Comments:
The court found that the two designs share a basic configuration, included within a main part, in which: (1) a main body is shaped as a thin sheet, has one cutaway in each of upper and lower sides and two cutaways in each of left and right sides, and is formed so as to connect six pads; (2) the six pads are disposed in two columns laterally and in three rows vertically, and the left and right sides are symmetrical; (3) an approximately cylindrical operation part is provided at an exact central part of the main body and a rear surface thereof is provided with a cap for a battery; and (4) an electrode is provided on a rear surface of each of the pads. In addition, the “main part” was found to be further defined by the shape of each of the pads, the method of joining the pads (orientation), the shape of the cutaways between the pads, and the depth, of which the specific configurations related to differences established between the subject design and the Defendant’s design. Accordingly, the court held that the designs were distinct from each other, in that they differ in terms of the “main part” and therefore differ in aesthetic appearance.
A registered design (Reg. No. 1593189) associated with the Defendant’s design was the subject of a trial for invalidation in which the subject design was cited. The trial decision held the design valid on the grounds that the registered design was distinct from the cited design, and the Intellectual Property High Court upheld this decision (2018 (Gyo-Ke) No. 10169, introduced in the October 2019 issue of Soei Voice). In addition, although the Tokyo District Court had previously granted a provisional ruling to the effect that the configuration of the Plaintiff’s goods covered by the subject design constitutes a well-known indication of goods or the like, referring to the concept of “creating confusion with another person’s goods” as provided under Article 2(1)(i) of the Unfair Competition Prevention Act (2017 (Yo) No. 22023), the Osaka District Court in the present case found that the concept of “confusion”, as broadly defined in the Unfair Competition Prevention Act, was not relevant under the Design Act.
It appears that this case might have been influenced by the fact that the Defendant’s design was registered, and by the decision to hold the design valid, which was further upheld by the Intellectual Property High Court.