Contents:

News round-up
25% AIPPI member discount on all Kluwer Law publications
Revision of Examination Guidelines for Design
States Cannot be Sued for Copyright Infringement Due to Sovereign Immunity
China says No to bad faith trademark filings
Will the SASHO procedure provide more assistance for investigating patentee evidence?
The AIPPI Spanish Group Honours Luis-Alfonso Durán
AIPPI on Instagram

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News round-up:

The AIPPI World Congress in Hangzhou (China) will be held from October 17 to 20, 2021.

AIPPI World Congress Announcement.

Focus on the AIPPI Law Series.

AIPPI Videos online.

Remembering our Members of Honour: Joan Clark and Alberto de Elzaburu

25% AIPPI member discount on all Kluwer Law publications

AIPPI members get a 25% discount on every title in the Kluwer Law Intellectual Property portfolio of print books* by using the code in the Member Offer section of the Membership Portal.

The code is valid until March 2021.

(*Visser’s Annotated European Patent Convention is excluded from the offer)

Articles & Case Notes:

Revision of Examination Guidelines for Design

By Hirohito Katsunuma of the Katsunuma International Patent Office

Tokyo, Japan

The Japanese Design Law was drastically revised in 2019 to newly protect Image Designs, Architectural Designs, and Interior Designs. A revision of the Examination Guideline for Design followed, which interestingly revealed what the protectable Image Designs, Architectural Designs and Interior Designs are.

Image Design

According to the revised Design Law, an image itself is protectable (Art. 2 Para.1). Particularly, the image displayed on articles separated from the article functionally associated with the image can be protected.

However, if all images as mentioned above can be protected, all kinds of images can be protected. To this point, the revised Examination Guideline for Design restricts the protectable image to the following images.

(1) the image to be used to operate the article functionally associated with the image, or
(2) the image of the result of the performance of the function of the article functionally associated with the image.

It means the completely abstract images are not protectable and the images must be functionally associated with articles to be protected.

Regarding the column of “article(s) to which the design is applied” in the application of the Image Design, the specific use of the image shall be stated. The revised Examination Guideline for Design listed "image for displaying information", "image for the operation to view the contents", "image for the transaction" and the like as appropriate description examples.

Architectural Design

With the amendment of the Design Law in 2019, Architectural Designs became protectable (Art. 2 Para.1).

The protectable architectures are required to be anchored on the land, and to be artificial structures.

Japan adopts a principle of one application for one design. However, in the case of Architectural Design, plural architectures are often designed simultaneously and applied for at the same time. For this nature of Architectural Design, the revised Examination Guideline for Design states that designs of plural architectures can be deemed to be one Architectural Design if the architectures are for one specific use or function and have a common aesthetic impression.

In addition, the Architectural Designs may include auxiliary articles such as tiles, doors, windows, gates, stones, plants, etc. According to the revised Examination Guideline for Design, what is permanently fixed to the architecture(s) or the land constitute parts of the Architectural Design. Contrarily, objects that are temporarily placed around the architecture(s) or that can be moved arbitrarily do not constitute parts of the Architectural Design. Therefore, an Architectural Design including objects temporarily or movably placed around the architecture will be rejected under the principle of one application for one design.

Interior Design

Since to the Revision of the Design Law in 2019, Interior Designs have been protectable (Art. 8^bis). Here, the Interior Design refers to a design relating to the article(s), structure(s), and image(s) that constitute facilities or decorations (hereinafter referred to as “interior”) in a store, an office, or other facilities. When the interior gives a unified aesthetic impression as a whole, the interior can be registered as an Interior Design. The Interior Design is a design of a set of articles.

According to the revised Examination Guideline for Design, the Interior Design shall be a design of physically continued space. Therefore, the design of the interior which is divided by the wall or the like is not protectable.

An interior includes various articles by nature. To this point, the revised Examination Guideline for Design listed "restaurant interior", "school classroom interior", and "airport terminal lobby interior" as appropriate descriptions of the column of “article(s) to which the design is applied” in the application of the Interior Design. That is, in the application of the Interior Design, the particular use of the interior should be stated clearly.

As for the revision of the Japanese Design Law in 2019, please visit the following JPO website:

https://www.jpo.go.jp/e/resources/report/sonota-info/document/pamphlet/isho_kaisei_en.pdf

The Eleventh Amendment's Revenge: States Cannot be Sued for Copyright Infringement Due to Sovereign Immunity

By Seth I. Appel of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP

Chicago, Illinois, U.S.A.

In a rare unanimous Copyright decision, the U.S. Supreme Court recently upheld a State’s sovereign immunity from suit for copyright infringement. While sovereign immunity is not absolute and the Court has recognized exceptions, those exceptions did not apply in this instance based on previous applications of State sovereign immunity in the patent context. Since patents and copyrights share the same constitutional basis for protection, the previous patent decision was seen as controlling, and was here extended to copyright infringement actions.

The U.S. Supreme Court held that a photographer cannot bring a copyright infringement suit against the State of North Carolina because it has sovereign immunity. Allen v. Cooper, 140 S.Ct. 994 (2020), https://www.supremecourt.gov/opinions/19pdf/18-877_dc8f.pdf. The Court determined that the Copyright Remedy Clarification Act (CRCA), which purports to permit such suits, is unconstitutional.

As the Court observed, this case is a tale of piracy, old and new. Blackbeard's flagship, Queen Anne's Revenge, sank off the coast of North Carolina in 1718. A marine salvage company (Intersal) discovered the shipwreck nearly 300 years later. Under U.S. law, the wreck belongs to the State, which retained Intersal to conduct recovery operations. Intersal hired Frederick Allen to take photos and video, and he registered his copyrights in those works. When the State published them without his permission, Allen brought suit in federal court for copyright infringement.

The State moved to dismiss the case on the ground of sovereign immunity. In general, federal courts cannot hear suits brought by individuals against non-consenting States. The Eleventh Amendment of the Constitution prohibits suit against a State by a citizen of another State; and courts have long understood this rule to apply to citizens of the same State as well. However, such sovereign immunity does not apply when Congress has enacted "unequivocal statutory language" abrogating the States' immunity if it has the constitutional authority to do.

In 1990, Congress passed the CRCA, which provides that a State "shall not be immune . . . from suit in Federal Court" for copyright infringement; and that it shall be liable and subject to remedies "in the same manner and to the same extent as" a private party. Allen argued that this created an exception to sovereign immunity so that his case could go forward. The Supreme Court ruled in favor of the State and struck down the CRCA. Although Congress' intent to remove States' immunity "could not [be] any clearer," the Court found that Congress did not have the constitutional authority to pass such a law.

Allen argued that Congress was so authorized by the Intellectual Property Clause of the Constitution, which enables Congress to grant copyrights and patents, but the Court disagreed. It found that "the power to 'secure' an intellectual property owner's 'exclusive Right' … stops when it runs into sovereign immunity."

Allen further argued that Congress was authorized under the Fourteenth Amendment, which empowers Congress to "enforce" the Due Process Clause, that is, no State may "deprive any person of life, liberty, or property, without due process of law." The court noted that the Fourteenth Amendment "fundamentally altered the balance of state and federal power that the original Constitution and the Eleventh Amendment struck." Nonetheless, the Court found that it did not authorize the CRCA. A proper abrogation statute under the Fourteenth Amendment must be tailored to protect the particular right that is guaranteed. Although copyright is a form of "property," the Court found that allowing Congress to abrogate sovereign immunity for copyright infringement was not "congruent and proportionate" to the Fourteenth Amendment injury it seeks to remedy. The Court indicated that it might feel differently based on evidence of "widespread" infringement or "wholesale violation of the copyright laws" by the States; but the evidence of constitutional injury was "exceedingly slight."

Justice Kagan, delivering the opinion of the Court, noted that its decision would not prevent Congress from passing a valid copyright abrogation law in the future, properly tailored to redress unconstitutional injuries.

In an earlier case, Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, the Court held that the Patent Remedy Act – a similar statute stripping states of sovereign immunity from patent suits – was unconstitutional. Under the principle of stare decisis, the Court relied heavily on Florida Prepaid to come reach the same conclusion as to the CRCA.

Although the Court's decision in favor of the State was unanimous, Justice Thomas and Justice Breyer each wrote concurring opinions expressing their respective views on stare decision, which may have implications far outside the IP context.

China says No to bad faith trademark filings

By Ms. Ling Zhao of CCPIT Patent & Trademark Law Office

Beijing, People’s Republic of China

In 2019, China revised its Trademark Law for the fourth time and the CNIPA announced the corresponding new rules to implement the new Law, aiming to curb bad faith filings, while strengthening the protection of the trademark rights as well as other legitimate rights of brand owners.

The Fourth Revision of China Trademark Law

We have a first-to-file trademark regime in China. Over the past three years, we have witnessed a rapid increase of trademark filings in China, reaching more than 7.5 million in 2019. Along with the rapid increase of trademark filings, we have also encountered trademark squatting and mass hoarding.

The fourth revisions to China Trademark Law have become effective since November 1^st, 2019. In accordance with Article 4 of the amended China Trademark Law, bad faith applications not intended for use should be rejected from registration. The good faith rule is not only a general principle referenced throughout the law, but also an absolute ground to be applied in the examination of opposition and invalidation action, as well as in examination of a trademark application.

Article 4 is referenced in Article 19.3 with respect to trademark agencies, stipulating that the trademark agencies shall not accept filing instructions if they know or should have known that the trademark application filed by the client is a bad faith filing violating Article 4. Violation of this article can result in administrative penalties including issuing a warning and imposing a fine.

The highest statutory damage for trademark infringement is raised to RMB5 million (about USD706,434). Infringement, committed in bad faith and with serious consequences, may be subject to punitive damages up to five times of amount of the losses of the right holder, the illegal profits, or reasonable times of the license fee.

CNIPA’s efforts to crack down bad faith trademark filings

CNIPA announced on October 11, 2019 the Provisions on Regulating Applications for Trademark Registration (thereafter as the Provisions), effective as of December 1st, 2019. The Provisions provide guidelines to trademark examiners to implement Art. 4, as well as other relevant articles of the amended China Trademark Law in examination of the trademark applications, oppositions and invalidation actions.

According to the Provisions, there are five major circumstances to determine if an application is in violation of Art. 4, including the number of trademark filings, various classes involved, trading of trademarks, the business and industrial circumstances, any precedent court verdicts or administrative decisions wherein the trademark applicant has ever been convicted as a bad faith applicant or a trademark infringer, filing trademarks being identical with or similar to others’ famous brands, and filing trademarks being identical with or similar to the names of celebrities, trade names or other commercial signs.

Statistics show that in 2018, over 100,000 abnormal applications were refused for registration, either by direct rejection or through opposition. With the implementation of the new law and the provisions, bad faith trademark filings are now further cornered.

Judicial guidance

The Beijing High People’s Court, which has the jurisdiction of second-instance trial of appeals of decisions of CNIPA, issued the Guidelines for the Trial of Trademark Administrative Litigation in 2019, setting specific criteria to determine bad faith from the judicial angle.

The Supreme People’s Court (SPC) declared China’s judicial attitude against bad faith trademark filings by selecting and announcing judgements on typical trademark disputes over bad faith registration, such as the Jordan trademark retrial judgement, which is selected and announced as a SPC Guiding Case, with binding effects to courts of all levels. Recently, SPC issued the “Opinions on Comprehensively Strengthening Judicial Protection of Intellectual Property Rights” to again reiterate China’s determination to curb bad faith trademark filings.

Will the SASHO (evidential review by experts) procedure provide more assistance for investigating patentee evidence?

By Kozo Yabe, YUASA & HARA, Tokyo, Japan

Even though we have witnessed the document submission order to acquire useful documentary evidence from an infringing party after the 1997 Amendment of the Civil Procedure Code and other multiple Patent Acts, the disclosure of evidential information is still a weak point of Japanese civil litigation especially for patent infringement when compared with the rigorous effects of procedures in other countries, e.g. discovery in the U.S., ex-parte investigations in Germany, etc.

In order to provide an additional measure to preserve and compound evidence, particularly in the case of method patents, the 2019 Amendment of the Patent Act introduced and adopted the SASHO (evidential review by experts) procedure. Although the details of the procedure had to be filled up by rules of the Supreme Court soon, it became law April 1, 2020. Then, the Supreme Court promulgated the rules of SASHO on Aril 22, 2020 even during the State of Emergency.

This is available for a plaintiff as a patentee to petition the court after the plaintiff files a complaint with the court. The plaintiff must show the court 1) how seriously necessary it is for them to preserve certain evidence in the hands of a defendant as an alleged infringer for proof of patent infringement, 2) how likely a patent infringement will be found, 3) the difficulty of collecting such patent infringement evidence in ways other than SASHO, 4) a minimum burden on a defendant even though the procedure of SASHO applies to the defendant.

After the plaintiff’s petition and the court decides to issue an order to proceed with SASHO, the defendant has a chance to appeal to the court to stop the procedure. On the other hand, even if such appeal is rejected, the court can appoint an expert to conduct the SASHO procedure at an appropriate venue, usually somewhere relating to the defendant’s business. The court can decide the issuance of an order by even using an in-camera process. The court appointed expert can investigate evidence which the plaintiff requested to preserve and can even utilize or operate real machines or systems to obtain data and review technical mechanisms, etc. The expert has to submit to the court a written report of the SASHO procedure. This report will be used as evidence to prove patent infringement if the plaintiff files it with the court.

On the other hand, the defendant still has an opportunity to conceal their trade secrets before the expert submits his/her report. The court must allow the defendant to have such opportunity to do so.

The defendant may still refuse an enforcement of the SASHO procedure even though the court issues such order. In such situations the defendant who refuses the enforcement must accept disapproval from the court which is likely to consider the patent infringement argument as provided by the plaintiff to be the truth. Provided however, there are no criminal or civil penalties associated with such refusal of the SASHO procedure.

As set forth above, the SASHO procedure was implemented in Japanese patent infringement litigation. However, its future is still unclear. In the case of document submission orders which were expected to inspire more disclosure of patent infringement evidence, it has not been so widely used or successful in practice yet. It has additionally adopted an in-camera process by the court to encourage the issuance of document submission orders. But the number of document submissions petitioned by parties is still relatively low because patent litigation practitioners are still sceptical regarding the easy issuance of document submission orders.

It is strongly desired that the SASHO procedure will inspire more evidential investigation by parties for expediting Japanese patent infringement litigation, though its requirements still appear to be rather narrow. Lawyers and judges should continue making efforts to develop better ways of practice using the SASHO procedure.

AIPPI Country News:

The AIPPI Spanish Group Honours Luis-Alfonso Durán

By Pedro Merino Baylos. President of the Spanish Group of AIPPI.

The Spanish Group of AIPPI, honoured Luis-Alfonso Durán, former Reporteur General of AIPPI, Member of Honour of AIPPI, and of the Spanish and Portugese Groups, with the publication of a book containing 44 contributions written by prestigious specialists of Intellectual Property from 20 different countries.

With this book, the Spanish Group honours Luis - Alfonso’s 45 years of work and dedication in AIPPI.

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