Sunday, April 17, 2016

Franck Muller Loses Trademark Case Against Parody Watch “フランク三浦 [Franck Miura]”

On April 12, Japan IP High Court handed down a lenient judgment for a parody watch manufacturer on a trademark case. Franck Muller alleged that the parody watch manufacturer’s registered trademark “フランク三浦 [Franck Miura]” which sounds similar to “Franck Muller” should be invalidated. However, the court decided that there is no likelihood confusion in the marketplace, because “フランク三浦 [Franck Miura]” is significantly different in appearance and meaning, and the parody watches are cheap. A provision for preventing “free riding” (Article 4, paragraph (1), item (19) of the Trademark Act) requires similarity between two of the marks.

A parody is a work created based on an original work, and thus uses the value of the original work. However, Trademark Act is not designed to prevent such a parody itself. You must prove the similarity.

For comparison, the Copyright Act is not so lenient to a parody work. 

Sunday, April 3, 2016

Generic Drug Manufactures on the Backfoot

Japans courts recently give decisions in favor of original drug manufactures one after another, while the government is seeking to promote generic drugs in order to reduce total medical expenses.

In June last year,the Supreme Court gave a ruling regarding product-by-process claims that a product having the same structure or feature infringes the patent, even if its production process is different (TEVA v. Kyowa Hakko Kirin). In November, the Supreme Court made a decision that Patent Term Extension should be approved for a drug patent when the drug is granted marketing authorization for different dosage and administration even if the drug has the same ingredients (Genentech Inc. v. JPO), as reported in this blog.

Then, in March 25 this year, IP High Court upheld the decision of Tokyo district court in favor of Chugai Pharmaceutical that generic drug manufactures infringe the Chugais patent for manufacturing process of maxacalcitol which is the active ingredient of antipsoriatic agent, under the doctrine of equivalents. In this case, Chugais corresponding substance patent was already expired but the process patent was alive when generic drug manufactures sold their drugs. 

In view of the above, it seems there is a trend of original drug manufacture’s patent being protected for a longer time and interpreted more broadly.