Mini case n°3. Measures for lifting the ban on referencing on e-commerce sites

A new customer of Kimura informed us that “I was listed on a well-known e-commerce site, but I was informed that I should stop listing because there was a possibility of design rights infringement. I don’t think I violated. What can I do?” After our initial review and response, we handled the case on their behalf. E-Commerce SEO ban removal measures can be vital for a business, it has become our mission.

It is “a product that has a stretching effect” and the design right holder told the E-Commerce site that it is a “design right infringement product”. Immediately, I asked him to provide the information relating to the registration number of the model invoking the infringement and to send us the product in question. By referring to the terms of the CE site, we tried to determine whether or not the infringement of the design right was actually established.

In general, e-commerce sites are nervous from a “compliance” perspective, especially when it comes to products that infringe intellectual property rights. If there is an allegation that they are “infringing”, they often suspend the product listing without checking whether or not they are actually infringing.

Design rights extend not only to registered designs but also to similar designs (Section 23 of the Designs Act) . However, since “ideas related to technology” such as patents and utility models are expressed in language, rights are granted to abstract concepts, while designs are “related to the appearance of goods “. Since the right is granted to the design itself of the article described in the design, the scope of the right is narrower than that of a patent or a new practical idea even if “the right is extends to a similar range”.

In addition, the design is apprehended by the elements of “shape, pattern, color of the article”, and the element of “shape” occupies a large part in the infringement judgment concerning this product. Based on this premise, the registered design in question was in fact compared to the “stretch effect pillow” in this case to determine the presence or absence of infringement. The design registration is a registration relating to “stretch effect pillows” as in the case of this product, and referring to the accompanying drawings, the overall shape was certainly similar.

However, the product has a unique configuration feature: that of a large hole and the back shape of which is different from the back shape of the registered model, and which appears in a highly visible state. It was clear that consumers would experience a different aesthetic as a whole compared to the registered design. Therefore, based on this point, it was held that the Product was not similar to the registered design and did not constitute an infringement of design law.

Based on our analysis and conclusion, I contacted the client for this and thought about how to handle it. We came to the conclusion that would create a written opinion stating that this was not a design right infringement: in particular, it was agreed to make a counter-argument that “there is no no basis for infringement”. We have sent our written notice to the host company of the CE site.

After taking such action, the suspension of registration was removed at the discretion of the E-Commerce site, and the product was allowed to return to the site.