Trademark Act Article 39: Mutatis Mutandis Application of the Patent Act

This article applies the provisions of Articles 103 through 106 of the Patent Act mutatis mutandis.

However, Article 104 (Presumption of Production Method), Article 104-3, Paragraph 3 (Restriction on Exercise of Rights of Patentee, etc.), and Article 105-7 (Closed Proceedings for Examination of Parties, etc.) of the Patent Act are not applied mutatis mutandis.

Patent Act Article 104 (Presumption of Production Method) provides that 'where a patent is granted for an invention of a process of producing a product, if the product was not publicly known in Japan prior to the filing of the patent application, the same product is presumed to have been produced by that process.' In the Trademark Act, the production method of a product is irrelevant to whether rights can be exercised. Therefore, Patent Act Article 104 is not applied mutatis mutandis.

Patent Act Article 104-3, Paragraph 3 (Restriction on Exercise of Rights of Patentee, etc.) is a provision that allows for the assertion of restrictions on the exercise of rights even without standing to request a trial for patent invalidation. Through the mutatis mutandis application of Article 104-3, Paragraphs 1 and 2 of the Patent Act, it is clear that in an infringement lawsuit, if it is recognized that the trademark registration should be invalidated by a trial for invalidation, the exercise of the right to claim an injunction or damages based on the trademark right is not permitted. Therefore, Patent Act Article 104-3, Paragraph 3 is not applied mutatis mutandis.

Patent Act Article 105-7 (Closed Proceedings for Examination of Parties, etc.) is a provision for conducting examinations of parties, etc., in private when it is necessary to examine trade secrets, etc., to determine the existence of patent infringement. Since court proceedings are public in principle, stating trade secrets in court would result in their disclosure. Patent Act Article 105-7 was established to prevent such situations. Therefore, Patent Act Article 105-7 is not applied mutatis mutandis.

・Trademark Act Article 39

(Mutatis Mutandis Application of the Patent Act) Article 39: The provisions of Article 103 (Presumption of Negligence), Article 104-2 (Obligation to Clarify Specific Aspects), Article 104-3, Paragraphs 1 and 2 (Restriction on Exercise of Rights of Patentee, etc.), Article 105 (Submission of Documents, etc.), Articles 105-2 through 105-6 (Expert Opinion for Calculation of Damages, Determination of Reasonable Amount of Damages, Confidentiality Protective Order, Revocation of Confidentiality Protective Order, and Notification of Requests for Inspection of Case Records, etc.), and Article 106 (Measures for Recovery of Reputation) of the Patent Act shall apply mutatis mutandis to the infringement of a trademark right or exclusive right to use.

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