Saturday, September 30, 2017

The first registration of wordless sound marks in Japan

On September 26 2017, the Japan Patent Office (JPO) announced that it made a decision to allow registration of wordless sound mark for the first time. 

In April 2015, Japan expanded trademark protection to cover non-traditional marks in different formats which include sound, motion, position, hologram, and color per se marks without delineated contours. Approximately 1,600 trademark applications for these new types of trademarks have been filed and more than 300 trademarks have been registered. When color per se marks were allowed to be registered for the first time in Japan, I picked up the news in this blog in March this year. No other color per se marks have been registered since then. 

For sound marks, 566 trademark applications have been filed, and then 172 trademarks have been registered. However, sound mark consisting only of musical elements (i.e. melody, harmony, rhythm, tempo, tone color etc.) has never been registered so far. However, finally, the JPO has made a decision to allow registration of the following three wordless sound marks below.

Intel's sound mark (Class 9: Microprocessor,  Software Programmable Microprocessors)
BMW's sound mark (Class 12: Automobiles and parts thereof, included in this class)
Taiko Pharmaceuticals' sound mark (Class 5: gastrointestinal medicine)
A next topic of interest on the new types of trademarks could be their enforceability including judgement of similarity or confusion.

Also, it should be noted that the government started to discuss how trade dresses such as store designs should be protected in Japan.

Saturday, September 23, 2017

Japanese generic company works on strategic lawsuit with a recently acquired US company to develop the US market

A Japanese generic company, Sawai Pharmaceutical Co. is planning to actively work on lawsuits in the US in cooperation with its US subsidiary, Upsher-Smith Laboratories Inc., the Nikkan Kogyo Shimbun (the Daily Industrial News) reported on August 25. Sawai acquired Upsher-Smith for $1,050 million on May 31 this year. 

According to the article, Sawai will conduct invalidity search for patents which protect original drugs and of which remaining patent term is long until expired, to submit paragraph IV certifications. By invalidating patents for original drugs, Sawai expects to expand sales of its generic drugs. Sawai has a plan to release one or two generic drugs per year in the US, starting from early 2020's, through this kind of activities.

Sawai obtained ANDA (Abbreviated New Drug Application) approval for Pitavastatin Tablets in February this year. It is said that this is the first ANDA approval based on a paragraph IV for Japanese generic manufacturers. It seems that Sawai doesn't want to wait for expiration of patents, but rather wants to actively  invalidate patents for original drugs. IP service companies who excel in patent invalidity search may become good partners for Sawai.

The Japanese government concerns about the growth of medical expenses in recent years. In 2016, the amount of total national medical expenses amounted to JPY 41.28 trillion, which includes drug dispensing cost JPY 7.49 trillion. The government is promoting the use of generics to reduce medical expenses and announced a plan to make penetration rate of generics increase to 80% by September in 2020 (cf. 69.8% in December 2016). 

If Sawai goes well, other Japanese generic companies may follow the same approach as Sawai. I personally don't want to see many patents for original drugs invalidated, though.

Friday, September 15, 2017

Border Enforcement: China stays top in originating country of infringing imported goods into Japan

The US initiated Section 301 investigation of Chinese trade practices from the aspect of IP infringement, technology transfer and innovation. Regardless of whether Section 301 should be used, the issue of IP infringement by Chinese companies is not someone else's problem for Japan.

On September 8, the Japanese government published statistics on import suspension of IP infringing goods into Japan during the first half of this year.

The number of import suspension cases is 15,393, that shows an increase of 11.1% on the same period last year. However, the number of import suspension goods is down 4.8% (278,964 goods) from the same period last year. It may be because of increase in mail transportation caused by expansion of e-commerce.

Note: "Number of import suspension cases" is the number of import declarations or mails that contain IP infringing goods that the customs suspended. "Number of import suspension goods" is the number of IP infringing goods that the customs suspended. 

As for the country of origin, 14,282 import suspension cases (92.8% of the total) came from China, that is rise of 12.5% on the same period last year, and China remains top for the 7th consecutive year.
China files more than 1 million patent applications in a year, regardless of quality of the patents, and it is becoming an IP major power. Furthermore, the Chinese government is driving forward utilizing patents. Such circumstances should increase awareness of IP issues in more Chinese companies, and contribute to reduction of IP infringement.  

By types of intellectual property, most of the cases are import suspension due to trademark infringement  (15,147 cases or 98% of the total; 159,488 goods or 57.2% of the total). The remarkable change comparing to the same period last year is the increase of design right cases. 77,789 goods were suspended due to design right infringement.  It is approximately 18 times more than the same period last year. Recently, Japanese companies recognize the importance of design to improve product competitiveness, thus they may increasingly use design right for enforcement. As for patent, only 15 cases (0.1% of the total) or 21,390 goods (7.7% of the total) were suspended. Compared with trademark or design which are distinguishable in appearance, patent is not easy to check at the customs. We should recognize the importance of "detectability" (of infringing goods) and "provability" (of infringement) that are measuring factors often used in the evaluation of patents.

Please refer to IPR Boarder Enforcement for details on the procedure for import suspension in Japan.