FOOD DESIGN: VALORE E TUTELA 22 giugno 2015 – Food Design: valore e tutela – Milano Food and Design Protection in Japan June 22, 2015, Minako MIZUNO

1.Introduction 2.Food involved in Intellectual Property cases 3.Food and Statistics 4.Food and Industrial Design Law 5.Other laws possibly protecting Food Design 22 giugno 2015 – Food Design: valore e tutela – Milano 2

In Japan many people love eating SUSHI. The guy cooking SUSHI is a friend of mine. We call him “TAISHO” with great respect and an endearing tone. 3

2 ． Food involved in Intellectual Property cases Registered designs for SUSHI and tools related to SUSHI 4

Registered designs in Japan 1971 Similar

Foods involved in Intellectual Property cases

3. Food and Statistics Number of Applications and Registrations at the JPO 7

3% to 4% of “All design applications” are for food. 1% to 3% of “All design registrations” are for food. 8

Appeals/Trials: Appeals against Examiner’s Decision of Refusal 9

Trials for Invalidation (JPO) 10

From JPO website 11

From JPO website 12

4. Food and Industrial Design Law R Goody R R R Basic design Related designs 13

Title of Article and Drawings 1. A new and creative design for a processed food can be registered at the JPO. (Article 3) 2. It is necessary to file a design application at the JPO. (Articles 6 and 7) 3. The design shall be shown in a set of orthographic six- view drawings. (Enforcement Regulations under Design Law) 4. The Examiner of the JPO conducts a search for prior arts, checks the drawings and makes a decision before registering the design. (Articles 17 and 18) 5. A person who has infringed the design right or exclusive license of another person shall be presumed to have been negligent as far as the act of infringement is concerned. (Article 40) The JPO issues Design Gazettes after establishment of a design right. 14

Steps 1 to 5 for judging similarity of two designs. Based on the Supreme Court Decision 1970 (Gyo-Tsu) No. 45 It is noted that steps 1 to 5 below are important and should be followed when judging the similarity of designs. 1. The subject design should be identified by its appearance which appeals to the eye, and also taking the product into consideration. 2. The design to be compared to the subject design should also be identified in the same way. 3. The identical points, common points and different points between the two designs should be identified and listed. 4. It is necessary to check and understand the historical and existing designs related to the subject product so that the new and creative features in the subject design can be clearly understood. 5. Lastly, similarity is judged by considering the above. 15

General impression An aesthetic impression through the sense of sight (Article 2) March 7, 1989, Heisei 1Gyo-Ke 129 Packaging can Subject design Cited design The JPO rejected the subject design under Article 3-1-3, since the subject design and the cited design are considered similar. The Tokyo High Court supported the JPO decision. The differences which the applicant asserted are (i) the ratio between the heights and diameters, (ii) colors, (iii) alphabetical characters and (iv) aesthetic impression. The Court did not highly value the above differences. The Court highly valued their common pattern, i.e., light wave patterns vertically arranged from top to bottom on the outer surface of the tin can since that is the feature that most attracts observers interests, and therefore they share the same feature. 16

Local Interpretation of difference between “Informed user” and “Consumer”. The term “consumer” appears in Japanese Design Law Article 24 ©2015 AIPPI JAPAN 17

Consumers (including traders) Design Examination Standards under Japanese Design Law 18

Other laws possibly protect Food Design 3D Trademark protection Yes! Class 30, Chocolate, Praline = Adm No! Class 30 MANJU TM The 3D mark cannot be rejected under Article of the TM Law IPHC June 30, 2008 The 3D mark cannot satisfy the requirements under Article 3-2 of the TM Law IPHC Sept. 27, 2006 Supreme court April 12,

Trademark Law Article ©2015 AIPPI JAPAN

Trademark Law Article ©2015 AIPPI JAPAN

Unfair Competition Prevention Law Article Article 2-1-1, Article ©2015 AIPPI JAPAN

Copyright Law Article 2 Article 2-(1) In this Law, the following terms shall have the meaning hereby assigned to them respectively: (i)“work” means a production in which thoughts or sentiments are expressed in a creative way and which falls within the literary, scientific, artistic or musical domain; (2) As used in this Law, “artistic work” includes a work of artistic craftsmanship. 23 © October, 2014 Copyright Research and Information Center

GRAZIE 22 giugno 2015 – Food Design: valore e tutela – Milano