Design Date
December 25, 2023
Court Intellectual Property High
Right
Court, First Division
Case number 2023 (Gyo-Ke) 10071- A case in which, concerning an application for design registration wherein articles
embodying the design are "Bags", the Court did not acknowledge that the design,
which is indicated in a certificate that the Plaintiff submitted to be granted theapplication of the exception to lack of novelty of design as stipulated in Article 4,paragraph (3) of the Design Act, is identical to the Cited Design, and held that thePlaintiff's publication of the Cited Design cannot be subject to the application of
Article 4, paragraph (2) of the same Act.
Case type: Rescission of Appeal Decision of Refusal
Result: Dismissed
References: Article 4, paragraph (2) and paragraph (3), and Article 3, paragraph (1),item (iii) of the same Act
Related rights, etc.: Design Application No. 2021-19105; Appeal against Examiner's
Decision No. 2022-13077
Summary of the Judgment
1 On September 3, 2021, the Plaintiff filed an application for design registration
wherein articles embodying the design are "Bags" (Design Application No. 202119105; hereinafter referred to as "Application", and the design pertaining to theApplication is referred to as "Applied Design"; for reference, a part of a drawing
indicating the design is cited from Exhibit 1 of the Judgment and shown below), andsubmitted a certificate dated September 10, 2021 (hereinafter referred to as"Certificate", and the design indicated in the Certificate is referred to as "Design
Indicated in Certificate"; for reference, the image of the Design Indicated in
Certificate is cited from Image 1 attached to Exhibit 3 of the Judgment and shown
below) for the Application to be granted the application of the exception to lack ofnovelty of design as stipulated in Article 4, paragraph (3) of the Design Act(paragraph (3) was revised by Act No. 51 of 2023 (hereinafter referred to as "RevisedAct"), but the date of enforcement of the revision to Article 4, paragraph (3) of the
Design Act pertaining to Article 1, item (ii) of the Supplementary Provisions to the
Revised Act is January 1, 2024, and in regards to the applications for design
registration that were filed earlier than said date pursuant to Article 4 of the
Supplementary Provisions to the Revised Act, the provisions in force at the time inquestion continue to apply), but received a decision of rejection on May 23, 2022.
The Plaintiff filed a request for an appeal against the examiner's decision of rejection,
but the JPO determined that the Applied Design is similar to the Cited Design (thedesign posted on the website on August 31, 2021; for reference, an image of the CitediDesign is cited from the Cited Design in Exhibit 2 of the Judgment and shown below),
and that the Cited Design and the Design Indicated in Certificate cannot be
acknowledged as identical, so that the exception to lack of novelty of design as
stipulated in Article 4, paragraph (2) of the Design Act is not applicable, and byholding that the Applied Design falls under the design listed under Article 3,
paragraph (1), item (iii) of the Design Act, rendered the JPO's decision to the effectthat the request shall not be granted (hereinafter referred to as "JPO Decision").

The

present case is a suit for rescission of the JPO Decision, and the issue concerns
whether or not the exception to lack of novelty of design according to Article 4,paragraph (2) of the Design Act is applicable (cause for rescission).

(Applied Design)(Cited Design)(Design Indicated in Certificate)

2 In the judgment of the present case, concerning whether or not there is error in
the JPO Decision not to grant application of the exception to lack of novelty of design
as stipulated in Article 4, paragraph (2) of the Design Act for the Cited Design, theCourt determined as follows and dismissed the Plaintiff's request.
(1) The purport of Article 4, paragraph (3) of the Design Act is to provide for a
special requirement to be granted the application of the exception to lack of novelty ofdesign as stipulated in Article 4, paragraph (2) of the same Act, as the exception to
Article 3, paragraph (1) of the same Act.

In principle, before the filing of an

application for design registration, a certificate pertaining to the design must be
submitted for each design that is published as a result of an act by a person who has
the right to be granted design registration.

Accordingly, it is understood that thedesign indicated in the certificate must be identical to the cited design.

Of course, it

is not reasonable to consider that the two designs lack identicalness if the difference
between the design indicated in the certificate and the cited design is only minor.
Also, by taking into consideration the burden of the applicant of design registration interms of the procedures involved, if it can be acknowledged that the points ofdifference between the design indicated in the certificate and the cited design areiiwithin a scope wherein, in light of the nature and functions of articles, it can be
sufficiently understood that such points of difference are substantively identical, it isreasonable to acknowledge that the design indicated in the certificate and the citeddesign are identical as well.
Nevertheless, concerning the studs, which constitute a point of difference between
the Two Designs, it can be said that the placement, per se, of studs is common, given
the nature of the article as a bag.

Meanwhile, the number and layout of studs are notuniform, and the number and layout of studs can affect the aesthetics of the bag.

Asfor the appearance of studs, which is a point of difference between the Two Designs,
it is sufficiently possible to observe the studs with the naked eye, so that the studs
function as decorative composition elements of the design of the front of the bag.
The layout of three studs, with regard to which "the space between the second and thethird, counted from the top, is slightly longer than the space between the first andsecond", is different in construction from the layout of "a set of four studs each,almost at regular intervals", and furthermore, in relation to the forms of the top hem
and the three hems on the right and left in the front of the storage unit, which areshared by the Two Designs, the Design Indicated in Certificate has three studs laid out
against the same number of three mountain parts on the right and left hems, with thesecond stud laid out on a line which connects, in a straight line, the peaks of themountain parts at the center of the right and left hems.

In contrast, the Cited Design

has four studs laid out, which is one stud more than the three mountain parts , on eachof the right and left hems, and the second stud is positioned nearer to the bottom of avalley part, between the mountain parts of the upper corners on the right and left andthe mountain parts at the center of the right and left hems, and the third stud, counted
from the top, is positioned slightly nearer to the upper part of the center of the valley
part between the mountain parts at the center of the right and left hems and themountain parts of the lower corners on the right and left.

As such, it can be said thateven in relation to the mountain parts on the right and left hems, when the storage unit,
which is commonly found in the Two Designs, is seen from the front, each design has
its own aesthetics unlike the other.
In that case, given that it can be said that the points of difference between the Two
Designs, as shown in the number and layout of studs on the front side, are points ofdifference that affect the aesthetics relating to the forms, etc. of articles, it cannot be
said that it can be acknowledged that the points of difference between the designindicated in the certificate and the Cited Design are within a scope wherein it cansufficiently be understood that the points of difference are substantively identical iniii

light of the nature and functions of the articles.
(2) Based on the above, it cannot be acknowledged that the Cited Design is
identical to the Design Indicated in Certificate, which is shown in the Certificate, andthus it cannot be acknowledged that the publication of the Cited Design was based on
the publication of the prior Design Indicated in Certificate.
In that case, since it leads to the conclusion that the certificate as stipulated in
Article 4, paragraph (3) of the Design Act was not submitted for the Cited Design, thePlaintiff cannot be granted the application of Article 4, paragraph (2) of the same Act
for the Cited Design.

iv

Judgment rendered on December 25, 2023
2023 (Gyo-Ke) 10071 Case of seeking rescission of JPO decision
Date of conclusion of oral argument: October 25, 2023
Judgment
Plaintiff: Rainbow Shake Inc.
Defendant: Commissioner of JPO

Main text
1. The Plaintiff's claims shall be dismissed.
2. Court costs shall be borne by the Plaintiff.
Facts and reasonsNo. 1 Trial sought by the Plaintiff
The decision made by the JPO on May 22, 2023 for Appeal against Examiner's
Decision No. 2022-13077 shall be rescinded.
No. 2 Outline of the case
The present case is a suit for rescission of the JPO decision which dismissed arequest for appeal against the examiner's decision of refusal of an application for
design registration.
1.

Background to the procedures of JPO
On September 3, 2021, the Plaintiff filed an application for design registration

with the details described below in 2 (Design Application No. 2021-19105;
hereinafter referred to as "Application", and the design pertaining to the Applicationis referred to as "Applied Design"), and submitted a certificate dated September 10,
2021 (Exhibit Ko 1; hereinafter referred to as "Certificate", and the design indicatedin the Certificate is referred to as "Design Indicated in Certificate") for the
Application to be granted the application of the exception to lack of novelty of design
as stipulated in Article 4, paragraph (3) of the Design Act (paragraph (3) was revisedby the Act No. 51 of 2023 (hereinafter referred to as "Revised Act"), but the date ofenforcement of the revision to Article 4, paragraph (3) of the Design Act pertaining to1

Article 1, item (ii) of the Supplementary Provisions to the Revised Act is January 1,
2025, and in regards to the applications for design registration that were filed earlier
than said date pursuant to Article 4 of the Supplementary Provisions to the Revised
Act, the provisions in force at the time in question continue to apply), but received adecision of rejection on May 23, 2022.
On August 22 of the same year, the Plaintiff submitted a notice of appeal andrequested for an appeal against the examiner's decision of refusal, and the JPO
examined the request for trial as Invalidation Trial No. 2022-13077, and on May 22,
2023, rendered a decision to the effect that the "request for a trial of the present casehas no grounds" (hereinafter referred to as "JPO Decision"), and a copy of thedecision was sent to the Plaintiff on June 8 of the same year.
2.

Applied Design
The Applied Design for which the Plaintiff filed the Application is as indicatedin Exhibit 1 (Exhibit Otsu 3).
3.

Gist of the reasons for the JPO Decision(1)

Comparison of the articles embodying the design and determination ofsimilarity
The articles embodying the Applied Design and the design indicated in Exhibit
2 (the part indicating "Cited Design" on the second page of Exhibit 2, and the partcircled in red in the indication of "Enlargement of Cited Design" on the third page ofExhibit 2; hereinafter referred to as "Cited Design") are "Bags" for the Applied
Design, and "Bags" for the Cited Design as well, so that there is similarity of articles
embodying the design.

Accordingly, the articles embodying the Applied Design and

the Cited Design are identical.
(2)Comparison of the forms, etc. of the Applied Design and the Cited Design

A.

The forms, etc. of the Applied Design and the Cited Design are similar in thefollowing respects.
As the basic structure of an embodiment,(Similarity A)

Both designs have the overall structure consisting of the main unit,

which is shaped like a chassis, with the top surface opened, and a holding unit.
As a specific embodiment,(Similarity B)

The main unit, which constitutes a storage unit, has the shape of an

approximate cuboid consisting of thin plate-like materials, which are extended upwardand in the directions of right and left on the front and back surfaces, with the edges
formed into wave shapes, and there are mountain parts, in sets of three, on the top
hem and on the right and left hems, including the upper corners on the right and left,2and the mountain parts in the upper corners on the right and left look as if themountain parts on the top hem and on the right and left hems have been joined, andare shaped like approximate half ovals protruding upward in right and left oblique
directions, when seen from the front, and the mountain parts on the right and left sidesof the bottom hem having the form of an approximate arc with the bottom hem beinga straight line.
(Similarity C)

The similarity consists of the holding unit having a thin belt-likeshape, and studs, as fasteners, and ring-shaped metal fittings being placed verticallynearer to the upper part of the center of the right and left sides, and when see n fromthe front, one holding unit being formed into an arc whose height is approximately 1/4of the entire form.
(Similarity D)

The similarity in terms of studs is such that small round studs areplaced nearer to the right and left edges in the front, with some room on top andbottom, in a vertical line in sets of four, being placed almost at regular intervals.
B.

The Applied Design and the Cited Design have forms, etc. that are different in

the following respects.
As a specific embodiment,(Point of Difference a)

There is the difference in the manner of attachment of theholding unit, which is that the Applied Design has the holding unit being fastenedwith two studs that are placed vertically, with a D-ring metal fitting placed in-between,
whereas in the Cited Design, the place corresponding to the upper stud cannot be
observed, and only the lower stud and the upper ring-shaped metal fitting can beobserved.
(Point of difference b)

There is the difference in that, in the Applied Design, thepart consisting of studs has sets of four small round studs placed in a vertical line
nearer to the right and left edges on the front and back surfaces, whereas in the Cited
Design, the layout of studs on the back surface is unknown.
(Point of difference c)

The difference is such that in the Cited Design, thecoloring is ivory for the main unit of the bag, and brown for the holding unit, andmetal coloring (silver) for the studs and metal fittings, whereas in the Applied Design,no color is used.
(3)

Evaluation of forms, etc. of the Applied Design and the Cited Design

A.

Concerning Similarity (A) and Similarity (C) pertaining to the basic structureof an embodiment, such similarities apply when the forms, etc. of the Applied Design
and the Cited Design are generally captured as bags, and in the field of goods that
include bags, the forms, etc. are very commonly found as composition elements, so3that it cannot be said that it has a great impact on the determination of similarity
between the Applied Design and the Cited Design.
On the other hand, in regards to Similarity (B) and Similarity (D), thesimilarities concern the overall form and the specific forms, etc. of the main unit,
which attract the attention of consumers, and in particular, the appearance in whichthin plate-like materials are extended upward and in the directions of right and left on
the front and back surfaces, with the edges formed into wave shapes, and there aremountain parts, in sets of three, on the top hem and on the right and left hems,
including the upper corners on the right and left, and the mountain parts in the upper
corners on the right and left look as if the mountain parts on the top hem and on theright and left hems have been joined, and are shaped like approximate half ovals
protruding upward in right and left oblique directions, when seen from the front, andthe mountain parts on the right and left sides of the bottom hem having the form of an
approximate arc with the bottom hem being a straight line.

These features are sharedby both the Applied Design and the Cited Design, and strongly give the impression to
consumers that the Applied Design and the Cited Design share similarity, so that they
perform a very significant function as a decorative accent, with the part consisting ofstuds being placed nearer to the right and left edges in the front, where it can easily beseen.

Accordingly, these similarities have a very significant effect on thedetermination of similarity between the Applied Design and the Cited Design.
In that case, even if the effect which Similarity (A) and Similarity (C) have on
the determination of similarity between the Applied Design and the Cited Design may
be small, the effect which Similarity (B) and Similarity (D) have on the determinationof similarity between the Applied Design and the Cited Design is very significant, sothat Similarities (A) to (D), when considered together, give a stronger impression ofsimilarity to observers.
B.

In contrast, Point of Difference (a) and Point of Difference (b) have a sm alleffect on the determination of similarity between the Applied Design and the Cited
Design, and Point of Difference (c) has an imperceptible effect on such determinationof similarity, so that even when Points of Difference (a) to (c) are considered tog ether,it does not result in an effect that would influence such determination of similarity.
C.

In that case, the Applied Design and the Cited Design have forms, etc. in which

Similarities (A) to (D), when considered together, give a stronger impression o fsimilarity to observers, whereas Points of Differences (a) to (c), even when considered
together, do not have an effect that would influence the determination of similarity
between the Applied Design and the Cited Design.
4

Accordingly, the impression of

the points of difference is not such that it overturns the impression of similarity, andthus the Applied Design and the Cited Design are similar.
(4)

Determination of similarity between the Applied Design and the Cited Design
Accordingly, the Applied Design and the Cited Design have the same articles

embodying the design, and in regards to the forms, etc., the similarities have asignificant effect on the determination of similarity between the Applied Design and
the Cited Design, and give a stronger impression of similarity to observers, whereas
the points of difference are small, and they are not sufficient to overturn theimpression given by similarities.

Accordingly, when the designs are observed on thewhole, the Applied Design is similar to the Cited Design.
(5)

Exception to lack of novelty of designA.

As indicated in Exhibit 3, the Design Indicated in Certificate was published on

the Internet on March 14, 2021 by Ko, who is the creator of the Applied Design, andis the design for the "Bag" that was posted on Instagram (* (omitted) *) by an accountholder whose name is "Ko'".
The Design Indicated in Certificate is as shown in Images 1 and 2 attached to
Exhibit 3, and the forms, etc. are as follows: [A] The entire form consist of the mainunit, which is shaped like a chassis, with the top surface opened, and a holding unit;
and [B] The main unit, which constitutes a storage unit, has the shape of an
approximate cuboid consisting of thin plate-like materials, and the thin plate-likematerials are extended upward and in the directions of right and left on the front andback surfaces, with the edges formed into wave shapes, and there are mountain parts,
in sets of three, creating a total of seven mountain parts on one surface, on the top
hem and on the right and left hems, including the upper corners on the right and left,
and the mountain parts in the upper corners on the right and left look as if themountain parts on the top hem and on the right and left hems have been joined, andare shaped like approximate half ovals protruding upward in right and left oblique
directions, when seen from the front, and the mountain parts on the right and left sidesof the bottom hem having the form of an approximate arc with the bottom hem beinga straight line; and [C] The holding unit has a thin belt-like shape, and studs, as
fasteners, are placed vertically nearer to the upper part of the center of the right andleft sides, and when seen from the front, one holding unit is formed into an arc whose
height is approximately 1/4 of the entire form; and [D] The part consisting of studs
has small round studs being placed nearer to the right and left edges in the front, withsome room on top and bottom, in a vertical line in sets of three, being placed with thespace between the second and the third, counted from the top, being slightly longer
5than the space between the first and second; and [E] All edges other than the bottom
hem are bordered with a bordering material; and [F] The main unit of the bag and theholding unit are colored in black and the studs and metal fittings are colored in metalcolor (silver).
B.

When the Design Indicated in Certificate and the Cited Design (hereinaftersometimes referred to as "Two Designs") are compared, first of all, the articles
embodying the designs are both "Bags", so that the articles embodying the design are
identical.
Next, in regards to the forms, etc., in the Design Indicated in Certificate, thestuds on the front side are placed in sets of three, in a single vertical line nearer t o theright and left, with the space between the second and the third, counted from the top,
being slightly longer than the space between the first and second, and the main unit
and the holding unit being black, whereas in the Cited Design, the studs on th e front
side are placed nearer to the right and left directions in a vertical line, in sets of four,
almost at regular intervals, and the main unit is ivory and the holding unit is brown,with ring-shaped metal fittings placed on the fastener sides.

As such, the Two

Designs are different in terms of the presence or lack of ring-shaped metal fittings on
the holding unit, the number and layout of studs on the front side, and the colors of
the holding unit and the main unit.

Accordingly, the Two Designs have points ofdifference, so that they cannot be acknowledged as identical designs, and thus it
cannot be acknowledged that the Cited Design was published based on the publicationof the prior Design Indicated in Certificate.
In that case, the Cited Design cannot be the subject of application of the
exception to lack of novelty of design as stipulated in Article 4, paragraph (2) of the
Design Act, and shall not be excluded from the materials for determining the noveltyof the Applied Design.
Accordingly, the Cited Design is a design that was published prior to the filingof the Application, and as indicated in the above (4), the Applied Design is similar to
the Cited Design, and thus the Applied Design falls under the design listed in Article
3, paragraph (1), item (iii) of the Trademark Act.
(omitted)
No. 5 Judgment of this court
1.

Cause for rescission(1)

The Plaintiff's argument that there is error in the JPO Decision, which did not6grant to the Cited Design the application of the exception to lack of no velty of design
as stipulated in Article 4, paragraph (2) of the Design Act, shall be considered below.
(2)

Article 4, paragraph (2) of the Design Act provides that, regarding theapplication of the provisions of Article 3, paragraphs (1) and (2) to a design in an
application for design registration that the person with the right to register the design
has filed within one year after the day on which that design, due to that person's
actions, came to fall under the provisions of Article 3, paragraph (1), item (i) or (ii),the Court approves the exception to lack of novelty of design by deeming that thedesign in question not to have come to fall under the provisions of Article 3,
paragraph (1), item (i) or (ii).
A person intending to be granted such application of the exception to lack ofnovelty of design must submit to the Commissioner of the JPO a document indicatingsuch intention, at the same time as the filing of an application for design registration,and must submit to the Commissioner of the JPO a document that proves that thedesign, which came to fall under the provisions of Article 3, paragraph (1), item (i) or(ii) of the Design Act, is a design that can be granted the application of Article 4,paragraph (2) of the same Act, within 30 days from the date of filing the application
for design registration (Article 4, paragraph (3) of the same Article).
Accordingly, in order for the Plaintiff to be granted the application of Article 4,paragraph (2) of the Design Act for the Cited Design, there must be the premise that
the Plaintiff submitted the certificate prescribed in Article 4, paragraph (3) for theCited Design.
(3)

Regarding this point, the Plaintiff asserts that the Design Indicated in

Certificate, as indicated in the Certificate, and the Cited Design are substantively
identical designs, and asserts that based on the Plaintiff's submission of the Certificate
to the Commissioner of the JPO, it should be acknowledged that the Cited Design was
published based on the publication of the prior Design Indicated in Certificate.
Upon considering the case in view of the above, the Design Indicated in
Certificate is as shown in Exhibit Ko 1 (Images 1 and 2 attached to Exhibit 3), whichshows that the forms, etc. consist of a storage unit, which has the overall shape of an
approximate cuboid with a gusset, and a handle cross-linked in the shape of an arc
from both right and left sides of the top hem of the storage unit, and both the storage
unit and the handle being colored in black, and on the storage unit, there are the threehems; namely, the top hem in the front as well as the right and left hems, being
formed into wave forms, creating a total of seven mountain parts as follows: There arethree mountain parts on each hem of the top hem and the right and left hems of the7storage unit, including where the mountain parts on the top hem and on the right andleft hems constitute the upper corners on the right and left; The mountain parts in theupper corners on the right and left look as if the mountain parts on the top hem and on
the right and left hems have been joined, and are shaped like approximate half ovals
protruding upward in right and left oblique directions, when seen from the front; thearc-shaped mountain parts at the center of the right and left hems; the mountain partsin the lower corners on the right and left, having the form of an approximate arc withthe bottom hem being a straight line.

Starting from a position slightly apart from the

top hem of the storage unit, small roughly round-shaped studs are lined up along theright and left hems in a straight line from top down.

The space between the second

and the third studs, counted from the top, is slightly longer than the space between thefirst and second studs, and the studs are placed in sets of three.

As for the layout of

the studs, the first stud, counted from the top, is placed nearer to the upper part of thevalley part between the mountain parts, which constitute the upper corners on theright and left, and the mountain parts, which are at the center of the right and lefthems, and the second stud, counted from the top, is placed on a straight line whichconnects the peaks of the mountain parts at the center of the right and left hems, andthe third stud, counted from the top, is placed on a straight line which connects thepeaks of the mountain parts in the lower corners on the right and left.
On the other hand, the Cited Design is as shown in Exhibit Ko 2 (pages 2 and 3
of Exhibit 2), and when compared with the Design Indicated in Certificate asrecognized above, the points of difference in the forms, etc. of the Two Designs are as
follows, as described above in No. 2-3 (5) B, as recognized in the JPO Decision: The
Design Indicated in Certificate has the studs on the front side placed nearer to theright and left in a single vertical line, in sets of three, with the space between thesecond and the third, counted from the top, being slightly longer than the space
between the first and second, and the main unit and the holding unit being colored inblack, whereas in the Cited Design, the studs on the front side are placed nearer to theright and left directions in a vertical line, in sets of four, almost at regular intervals,
and the main unit is ivory and the holding unit is brown, with ring-shaped metal
fittings placed on the fastener sides; the Two Designs are different in terms of thepresence or lack of ring-shaped metal fittings on the holding unit, the number andlayout of studs on the front side, and the coloring of the holding unit and the main unit.
Next, as determined below in (4), the Design Indicated in Certificate and theCited Design have points of difference in the number and layout of studs on the front
side, at least when seen from the front, and since it cannot be sai d that such points of8

difference are within a scope that can sufficiently be recognized as substantively
identical in light of the nature and functions of articles, it cannot be said that the Two
Designs are identical.
(4)

The Plaintiff asserts the following: The forms that are commonly found in the

Two Designs are unique and give a strong impression to consumers, so that it cannot
be helped that the points of difference of the number and layout of studs on the front
side leave little impression; as such, although the studs relate to the appearance of thefront side of the bag, instead of the number and layout of studs being clearlyrecognized as points of difference between the Two Designs, it is natural to consider
that both of the Two Designs respectively give rough impressions such as that "aplural number of studs are aligned", and since consumers receive the same impression
from the points of difference of the Two Designs, it can be said that the they aresubstantively identical, and the Plaintiff asserts that the Two Designs are identical.
However, the purport of Article 4, paragraph (3) of the Design Act is to provide
for a special requirement to be granted the application of the exception to lack ofnovelty of design as stipulated in Article 4, paragraph (2) of the same Act, as the
exception to Article 3, paragraph (1) of the same Act.

In principle, before the filingof an application for design registration, a certificate pertaining to the design must be
submitted for each design that is published as a result of an act by a person who has
the right to be granted design registration.

Accordingly, it is understood that thedesign indicated in the certificate must be identical to the cited design.

Of course, it

is not reasonable to consider that the two designs lack identicalness if the difference
between the design indicated in the certificate and the cited design is only minor.
Also, by taking into consideration the burden of the applicant of design registration interms of the procedures involved, if it can be acknowledged that the points ofdifference between the design indicated in the certificate and the cited design arewithin a scope wherein, in light of the nature and functions of articles, it can be
sufficiently understood that such points of difference are substantively identical, it isreasonable to acknowledge that the design indicated in the certificate and the citeddesign are identical as well.
Nevertheless, concerning the studs, which constitute a point of difference between
the Two Designs, it can be said that the placement, per se, of studs is common, given
the nature of the article as a bag (Exhibits 4 to 11).

Meanwhile, the number andlayout of studs are not uniform, and the number and layout of studs can affect theaesthetics of the bag.

As for the appearance of studs, which is a point of difference

between the Two Designs, it is sufficiently possible to observe the studs with the9naked eye, so that the studs function as decorative composition elements of the designof the front of the bag.

The layout of three studs, with regard to which "the space

between the second and the third, counted from the top, is slightly longer than thespace between the first and second", is different in construction from the layout of "aset of four studs each, almost at regular intervals", and furthermore, in relation to theforms of the top hem and the three hems on the right and left in the front of thestorage unit, which are shared by the Two Designs, the Design Indicated in Certificate
has three studs laid out against the same number of three mountain parts on the rightand left hems, with the second stud laid out on a line which connects, in a straight line,
the peaks of the mountain parts at the center of the right and left hems.

In contrast,

the Cited Design has four studs laid out, which is one stud more than the threemountain parts on the right and left hems, and the second stud is positioned nearer tothe bottom of a valley part, between the mountain parts of the upper corners on theright and left and the mountain parts at the center of the right and left hems, and thethird stud, counted from the top, is positioned slightly nearer to the upper part of thecenter of the valley part between the mountain parts at the center of the right and l efthems and the mountain parts of the lower corners on the right and left.

As such, it

can be said that even in relation to the mountain parts on the right and left hems, when
the storage unit, which is commonly found in the Two Designs, is seen from the front,
each design has its own aesthetics unlike the other.
In that case, given that it can be said that the points of difference between the Two
Designs, as shown in the number and layout of studs on the front side, are points ofdifference that affect the aesthetics relating to the forms, etc. of articles, it cannot be
said that it can be acknowledged that the points of difference between the designindicated in the certificate and the Cited Design are within a scope wherein it cansufficiently be understood that the points of difference are substantively identical inlight of the nature and functions of the articles.
Accordingly, the Plaintiff's argument against the above determination cannot be
accepted.
(5)

Based on the above, it cannot be acknowledged that the Cited Design is

identical to the Design Indicated in Certificate, which is shown in the Certificate, andthus it cannot be acknowledged that the publication of the Cited Design (Ko 2) was
based on the publication of the prior Design Indicated in Certificate.
In that case, since it leads to the conclusion that the certificate as stipulated in
Article 4, paragraph (3) of the Design Act was not submitted for the Cited Design, thePlaintiff cannot be granted the application of Article 4, paragraph (2) of the same Act
10for the Cited Design.
Accordingly, it cannot be acknowledged that there is error in the JPO Decision
not to grant the application of the exception to lack of novelty of design as stipulated
in Article 4, paragraph (2) of the Design Act for the Cited Design.
2.

Based on the above, the Cited Design is a design that was published prior to theApplication, and as determined in the JPO Decision under No. 2-3 (3), the Applied
Design is similar to the Cited Design (the Plaintiff does not argue against this point),
so that it cannot be said that there is error in the JPO Decision which held that the
Applied Design falls under the design listed in Article 3, paragraph (1), item (iii) of
the Design Act.

Accordingly, the cause of rescission as asserted by the Plaintiff has

no grounds.
No. 6 Conclusion
As described above, the Court dismisses the Plaintiff's request which has no
grounds, and renders a judgment as per the main text.
Intellectual Property High Court, First Division
Presiding Judge: HONDA Tomonari
Judge: TOYAMA Atsushi
Judge: AMANO Kenji

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Exhibit 1

Applied Design (Design Application No. 2021-019105)[Articles embodying the design]

Bags
Perspective view

Front view

Rear view

Plan view

Bottom view

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Left-hem view

Right-hem view

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Exhibit 2

Cited Design

Design of the bag shown on the website below
Title: nori enomoto
Limited pre-orders of wavy and three-dimensional new
bag "mardi matin"
Medium: [Online]
Date of post: August 31, 2021
Search date: [February 10, 2022]
Information source: Internet
URL address for information: https://strend.jp/article/15038

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