JAPAN / DESIGNS / DISTINCTIVENESS

The Lost Arrow case

Journal of the Japanese Group of AIPPI, Vol 25 No 6, 2000

James D Hughes

In a commentary on the latest developments in Japanese intellectual property cases, the author discusses the case heard on appeal in the Tokyo High Court, Kabushiki Kaisha Lost Arrow v K Itoh. The respondent in the case holds the registered design rights for certain types of rope connecting rings, known as caribiners. He sued Lost Arrow in the district court for infringement and was only partly successful. Lost Arrow appealed to the High Court; and Mr Itoh sought the full implementation of his original suit. The district court had found that both the plaintiff's and the defendant's designs were similar in almost all respects, except for a certain feature related to the "gate" through which the rope passed: the gate in the registered design was significantly wider. Nevertheless, the court found that the designs were extremely similar, with identical aesthetic appeal. The High Court differed. Caribiners are all essentially similar; but the wire gate in the Lost Arrow product was different, both functionally and aesthetically. Consequently, the two designs were not similar; and the second did not infringe the first. The author agrees with the High Court decision, but for different reasons. In his view, the offending design is far superior to the registered design in numerous respects that would be fully recognised by interested observers. "Although their lower court recognised the safety aspect of the offending design, deciding that this would not attract the attention of observers seemed to be well off the mark…" The author concludes that, even though design's are ostensibly judged on their outward appearance and not on their function, once the question of consumers is introduced, design features driven by function important to consumers should be taken into account. [20044]