In this Newsletter, we refer to a decision (dated July 3, 2023) of a lawsuit for revocation of a trial decision of a design registration invalidation trial. The court overturned recognition of “design publicly known prior to filing” in the trial decision, and revoked the trial decision rejecting the invalidation.

1. Background of Subject Case
  X filed an invalidation trial against a subject registered design owned by Y and related to automotive floor mats, alleging that Design 1 (hereinafter, referred to as “Prior Design 1”) commonly sold prior to the filing of the subject application was publicly known and the subject registered design is similar to Prior Design 1.
  The Japan Patent Office did not admit the X’s allegation, and issued a trial decision rejecting the trial filed by X. In response, X filed the subject case seeking for revocation of the trial decision.
  X alleged that they made a foreign subcontractor manufacture automotive floor mats of Prior Design 1, received the manufactured products, and delivered them to an extraneous party Z, and Z sold them to general consumers.

2. Contents of Trial Decision
(1) How Design Identified as Prior Design is and Whether It is Recognized as Publicly-known Design
① Regarding “Prior Design 1,” X alleged on the existence of a design for automotive floor mats (hereinafter, referred to as "Prior Product") having a 3-dimensional shape specialized for a specific automotive model and started to be sold by Z around February 2012 under the product name of “3D RUBBER MAT.” As evidence for the existence of Prior Design 1, X submitted a Z’s product catalog (Exhibit Ko No. 1-1), design drawings owned by X (Exhibit Ko Nos. 1-2 and 1-3), and photos taken by X when checking the automotive floor mats delivered from the foreign subcontractor manufacturer (Exhibit Ko No. 1-4).

② The trial decision first summarizes the X’s allegation as follows:
“Regarding Prior Design 1, the Appellant ‘alleges that Prior Design 1 was publicly known prior to the filing, based on the design indicated by the photos and drawings of Exhibit Ko Nos. 1-1 to 1-4’ and states that ‘Exhibit Ko Nos. 1-1 to 1-4 as a whole specify Prior Design 1.’” Then, the trial decision explains flow to draw a conclusion as follows: “First, determination on the design indicated by Exhibit Ko Nos. 1-1 to 1-4 is presented, and Prior Design 1 is identified.”

  Regarding Exhibit Ko No. 1-1 (Z’s product catalog), the trial decision judges as follows:
“The back cover of the catalog describes ‘as of September 2012.’ Thus, it is recognized that Exhibit Ko No. 1-1 is a product catalog created after September 2012 and supposed to be distributed to others for the purpose of selling automotive floor mats. However, the target of distribution (to whom the catalog was to be distributed), and the location and period of distribution are unclear, and there is no evidence supporting that the catalog was issued and distributed in September 2012.”
  Based on this, it was judged that the design indicated by Exhibit Ko No. 1-1 (Z’s product catalog) was not recognized as “design publicly known prior to the filing.”
  Regarding Exhibit Ko Nos. 1-2 and 1-3 (design drawings), the trial decision judged that “the drawings prepared for manufacture originally should be handled so as not to be leaked to outsiders” and thus were not recognized to be “publicly known.”
  Regarding Exhibit Ko No. 1-4 (photos taken when checking the products), the trial decision held that such photos originally would not be disclosed to many unspecified people other than related parties, and judged that the photos did not serve as an evidence proving sales of the prior product to many unspecified people.
  Although it was recognized that X had sold products of the same model number as the product photographed in Exhibit Ko No. 1-4, it was judged that the photos would not serve as an evidence proving sales to many unspecified people, because the sales from X to Z was delivery of the products based on manufacturing consignment to OEM.

③ Further, the trial decision examined whether Prior Design 1 alleged by X was indicated by each of Exhibit Ko Nos. 1-1 to 1-4.
  Exhibit Ko No. 1-1 (product catalog) fails to indicate Prior Design 1 to an extent that the specific shape of the automotive floor mat can be specified.
  Exhibit Ko Nos. 1-2 and 1-3 (design drawings) are not recognized as drawings illustrating the Z’s product, as they illustrate a rectangular part for logo “Clazzio” unlike Exhibit Ko Nos. 1-1 and 1-4. Exhibit Ko Nos. 1-2 and 1-3 are not recognized to indicate the shape of the prior product.
  Exhibit Ko No. 1-4 (photos taken in checking of the products) is recognized to indicate the shape of the prior product alleged by X, because the product appearing in Exhibit Ko No. 1-4 (photos taken in checking of the products) is recognized as the Z’s product.
  For these reasons, the trial decision judged that the design indicated by Exhibit Ko Nos. 1-2 to 1-4 as a whole could not be recognized as the shape of Prior Design 1. In this regard, the trial decision held that the ratio of length, width, and depth as a whole was unclear.
  In conclusion, the trial decision judged as follows: “since the shape etc. of Prior Design 1 to be compared with the subject registered design cannot be specified, the subject registered design and Prior Design 1 cannot be compared for the design or judged for similarity.”

(2) Comparison of Subject Registered Design and Design of Exhibit Ko No. 1-4
  The trial decision examined comparison of design between the subject registered design and the design of Exhibit Ko No 1-4 to make sure, although originally unnecessary because the design of Exhibit Ko No. 1-4 was not publicly known. The trial decision held that the influences of all similarities therebetween on similarity judgment were small, and that the similarities were not enough to conclude the similarity judgment between the two designs, even if effects achieved by combining all the similarities were taken into consideration. Meanwhile, it was judged that, since differences between the designs (the trial decision emphasized that “the ratio of length, width, and depth as a whole, which is specific aspect of the subject registered design, is clear, while the ratio is unknown in the design of Exhibit Ko No. 1-4”) generally have great influences on the similarity judgment to overwhelm the similarities and strongly impress that the two designs are different, the subject registered design could not be recognized to be similar to the design of Exhibit Ko No. 1-4.

3. Filing of Lawsuit for Revocation of Trial Decision by X
  X filed a lawsuit aiming at the revocation of the trial decision, alleging that the holding of Prior Design 1 was incorrect and Prior Design 1 was publicly known prior to the filing of the subject application, and that the subject registered design and Prior Design 1 were similar.

4. X’s Allegation and Proof and Y’s Allegation in Court, and Court’s Judgment
(1) As an evidence, the Plaintiff X submitted sales details by product (Exhibit Ko No. 3) extracted from the X’s accounting system.
  Further, the Plaintiff X submitted movies (Exhibit Ko No. 5) proving that YouTube distributed movies in which a purchaser of the prior product explained how to attach the product to an automobile, and told the purchaser’s impression of use of the product, as an evidence.

(2) In addition, the Plaintiff X submitted design drawings of the prior product of the X’s subcontractor (design drawings very similar to Exhibit Ko Nos. 1-2 and 1-3 (design drawings) but without the part for logo “Clazzio”) and a statement of the representative of Z, etc., as well as archives of the Z’s website as of 2016 (Exhibit Ko No. 4), as evidences.

(3) The Defendant Y alleged as follows: “in a lawsuit for revocation of a trial decision, it is not permitted to judge validity of registered rights based on a new evidence which was not examined and judged in the trial, and therefore, neither of Exhibit Ko Nos. 4 and 5 submitted by the Plaintiff in the subject lawsuit should be employed as evidence.”

5. Court’s Judgment
(1) Regarding Evidences Additionally Submitted by Plaintiff X, the Court’s decision presents the premise as follows: “In a lawsuit for revocation of a trial decision of a design registration invalidation trial, it is recognized unacceptable to allege on an invalidation reason by comparison with a publicly known fact which was not examined or judged in the trial decision.”
  Meanwhile, the Court judges as follows: “In the subject case, the Plaintiff alleged in the trial decision that the fact of commonly selling the prior product prior to the filing of the subject application made Prior Design 1 (i.e., the design of the prior product) publicly known. Both Exhibit Ko Nos. 4 and 5 are evidences supporting the fact of sales of the prior product prior to the filing of the subject application, and the fact is nothing but a fact examined and judged in the trial decision. Thus, it should be permitted that the Plaintiff proves the fact by submitting Exhibit Ko Nos. 4 and 5 and alleges on the error of the subject trial decision based on these evidences.” That is, it was judged that the addition of evidences was permitted because the evidences were not for supporting the existence of any new fact, but for reinforcing the proof of the fact already alleged.

(2) The Court held that, at latest around February 2012, X had received the delivery of the prior products from their subcontractor and had supplied them to Z, and Z had created the catalog for general consumers and had sold a considerable quantity through the Z’s website. The sales to general consumers was recognized in view of the movie proving distribution of movies on YouTube (Exhibit Ko No. 5), and actual sales quantity according to the subject sales details (Exhibit Ko No. 3).

(3) Regarding the Defendant’s argument that “Exhibit Ko Nos. 1-4 are not for the same product name or model number for identifying the product, and thus it is not recognized that these evidences are for the same product,” the Court judged, in consideration of “design drawings of the prior product of the X’s subcontractor (design drawings very similar to Exhibit Ko Nos. 1-2 and 1-3 (design drawings) but without the part for logo ‘Clazzio’)” additionally submitted as evidence, as follows:
“The design drawings of Exhibit Ko Nos. 1-2 and 1-3 are not design drawings themselves of the product provided to Z, but were prepared by the same corporate as the design drawings of the automotive floor mat sold by Z and are very similar in the product details described therein. Synthetically considering these facts, the design of the prior product can be recognized based on Exhibit Ko Nos. 1-1 to 1-4 in combination. Further, it is recognized that Prior Design 1 was made publicly known prior to the filing of the subject application by the fact of general sales of the prior product by Z.”

(4) The design to be compared with was the design indicated by Exhibit Ko No. 1-4 in the trial decision, but was changed to Prior Design 1 recognized from Exhibit Ko Nos. 1-1 to 1-4 in combination in the Court.
  The trial decision emphasized that the ratio of length, width, and depth, which is the specific aspect of the subject registered design, was not clear from Exhibit Ko No. 1-4, and judged that the subject registered design was not similar to the design indicated by Exhibit Ko No. 1-4. On the other hand, as a result of including Exhibit Ko Nos. 1-2 and 1-3 in evidences for recognizing Prior Design 1, differences between the designs were greatly reduced, so that the Court judged “the subject registered design is similar to Prior Design 1,” and revoked the subject trial decision.

4. Our Opinion
(1) Regarding addition of evidences at a stage of lawsuit for revocation of a trial decision, it is known as a principle that addition of evidences for reinforcing already submitted evidence(s) is acceptable.
  In this case, it is believed that the evidences added as reinforcing evidences influenced to some extent on the Court’s judgment that “the prior design can be recognized.” In this regard, the subject case is interesting and helpful in practice, and should be used as a reference for whether proactive addition of evidence is accepted.

(2) X, the Appellant in the invalidation trial, tried to prove Prior Design 1 of the prior product based on Exhibit Ko Nos. 1-1 to 1-4 as indirect evidences. However, the trial board in the invalidation trial judged whether Exhibit Ko Nos. 1-1 to 1-4 were individually recognized to indicate a design publicly known prior to the filing of the subject application, and subsequently judged whether Exhibit Ko Nos. 1-1 to 1-4 were recognized to indicate Prior Design 1 as combined evidence.
  If it had been correctly recognized that the evidences of Exhibit Ko Nos. 1-1 to 1-4 were indirect evidences of the existence of Prior Design 1 prior to the filing, they would not have taken the step of individually judging Exhibit Ko Nos. 1-1 to 1-4.
  The judgment of dividing the relationship between the indirect evidences for the reason that “Exhibit Ko Nos. 1-2 and 1-3 (design drawings) illustrate a rectangular part for logo ‘Clazzio’ unlike Exhibit Ko Nos. 1-1 and 1-4” appears to be common for trial examiners.
  We are not sure whether Prior Design 1 of the prior product is recognized if the Court makes judgment based only on the evidences submitted by X in the invalidation trial, but it seems that judgment tends to be varied more among trial examiners of the patent office than among judges, because the trial examiners have few experiences of judging on one fact based on accumulated indirect evidences.