Speculation on Relation between Design for Part of Article and So-Called Design for Whole Article of Part

April 26, 2006
Harakenzo World Patent & Trademark
Patent attorney: Takashi Suga

1. Subject

  This column discusses on so-called design for a whole article of a part and design for a part of an article, settling on the subject matter of the high court judgment (June 30, 2003) on the “motor with reducer” case (Heisei 15 (NE) 1119 gô minji soshô jiken).

2. Relation between So-called Design for Whole Article of Part and Design for Part of Article

  A point to notice with regard to design for a part of an article is that, since a design for a part of an article is ultimately a design of the article regarding the design, it has to be clearly distinguished from a design for a whole article of a part which has an identical or a similar form to that of a part to be applied for a design registration as a design for a part of an article.
  In this connection, there are two theories: the so-called independence theory which does not consider relation between a part and an article including an identical or similar part and the so-called feature theory which considers the relation.
  In my opinion, the feature theory is reasonable for the following reason.
  That is because an article in the Design Law should be interpreted as an article being subjected to an independent transaction in relation to the purpose of the Design Law (Section 1). That is, mass-producing articles being subjected to independent transactions would directly contribute to industrial growth.
  Accordingly, it should be interpreted that the following restrain is placed in the system of partial design, which was introduced in order to protect a form of an original and characteristic part even though the form is that of an article not being subjected to an independent transaction. That is, a form of a part has to have any connection with an article including the part and being subjected to an independent transaction.
  This makes it easy to understand that the effect of a design right of a design of a part of an article does not reach an embodiment of only a form of the part unless the embodiment is that of an article including the form of the part.

3. Synopsis of “Motor with Reducer” Case

  The trial of this case is an appeal trial that the proprietor of the design right of the design registration number 798521 (hereafter the design right) whose article regarding design is a “reducer” filed an injunction etc. against a third person who made “a motor with a reducer” including a “reducer” similar to that regarding the design right.
  The synopsis of the case is as follows.
  In this case, “a motor with a reducer” of the third person is arranged such that the second casing containing the “motor” is attached to the first casing containing the “reducer”. The form of the back of the first casing is not visible from outside due to the second casing. The “reducer” regarding the design right is also contained in a casing, whose form of the back has a part of an aesthetic characteristic.

4. Synopsis of the Judgment

  This is, in brief, a case that the proprietor of the design right regarding a design for a whole article of a part (a reducer) filed an injunction against the third person who made a completed product (a motor with a reducer) including the same or similar part.
  The judgment did not issue an injunction etc. by reason that a form of an invisible hidden part to consumers and transactors cannot be considered in an actual distribution process although legal design is required to be “visually recognized” according to the Design Law, Section 2(1).
  This judgment seems to be reasonable because of “visually” in the Design Law, Section 2(1). That is, the design of the embodiment being subjected to the injunction is “a motor with a reducer.” As long as it is placed in a distribution process (embodiment), there is no need to consider the form of the part with detachment of the “reducer” from the article. In other words, it is impossible to say that the “reducer” section is an independent embodiment as a design because the form of the whole “reducer” is not visible from outside in this case.

5. Another View on the Judgment

  There is another view on the judgment that the injunction etc. may have been issued after introduction of the system of partial design because this judgment was rendered before the introduction.
  Reasonableness of the view is examined below.

6. On Reasonableness of the View

  What is the basis of the view?
  Assume that the proprietor of the design right of this case is a proprietor of a design right of a design for a part of an article (an article is a motor with a reducer) regarding the form of the “reducer” section.
  In this case, the scope of the registered design of a part of the article is specified based on the application of the design of a part of the article and the design illustrated in attached drawings etc (Design Law, Section 24).
  However, how the form of the hidden part (the form of the back of the first casing) is specified?
  For example, it seems to be possible to specify it with a continuous line in a perspective view so as to be visually recognized the form of the back of the first casing on a drawing and a dashed line for other parts.
  However, this is totally meaningless. That is because, as noted above, the hidden part is not ultimately visible from outside in the actual embodiment.
  That is, in this case, since the same result above is derived from a case of a design for a whole article of a part or a case of a design for a part of an article, a design right of a design for a whole article, “a motor with a reducer” should have been secured.
  Thus, the view is not considered to be reasonable.

7. Conclusion

  The instruction below follows from the consideration above.
  That is, it is vital to acquire, not only a right of a design for a whole article of a part, but also a right of a design for a whole completed article in the case of an embodiment that, with regard to a design of a part, a part of a form combined with the completed article is not visually recognized from outside.