The starting point is the discovery of the use, without consent of the owner, of a design similar or identical to a registered design of the related design right. There is no specific method to make such a discovery; it should be the result of reasonable efforts and may for instance be the result of information provided by the company’s employees or clients, or found through an Internet search. In this case, it is important to make sure that the design right hasn’t lapsed, due for example to a failure in the payment of annuities.While finding that two designs are identical can be done in a glance, determining whether two designs are similar or non-similar is a delicate process. In some cases, designs that had been considered similar by the owner of the right are finally ruled as non-similar. Putting aside the case of identical designs, we therefore recommend the owner of the right to seek the assistance of specialists such as ourselves if there are even small differences between the two designs, as the scope of similarity often differs from one type of product to the other.

Once the owner of the right has discovered an infringement, it is necessary to gather evidence and information regarding the infringer, such as its name, address, producers, distribution route… In the case of a relatively inexpensive product, the purchase of the product in order to proceed to first-hand verification can also be a valid method. Photographing the product may also prove useful, as photos can subsequently be used as valuable evidence. As tracing the totality of the distribution route of the product may be difficult, a simple outline can be sufficient at first. If the said research proves that the product has been imported into Japan, injunction measures at the Customs must be considered.In parallel to this, it is preferable to check, even superficially, the validity of the design right. If the registered design or a similar design has been disclosed in any country of the world before the filing of the design application, the design right becomes invalid and enforcement measures can not be taken. It is therefore recommended to verify at least the drawings disclosed in Patent Publications and Utility Model Publications.

In the case that the owner of the right, having verified the validity of his/her design right and based on the results of the above-described search and the advice of experts, concludes that there is a strong possibility that his/her design right is being infringed, the next stage will be to enter negotiations with the other party. The first contact is usually be taken in written form ; in some situations it will be through a simple Inquiry form, while in others a letter detailing the contents of the case will directly be sent to the other party.At this stage, if the negotiation, be it in written form or during one or several meetings, makes it possible to bring the situation to a resolution, it is preferable to keep a record of the details.On the other hand, if the negotiation does not lead to a positive result, abandoning the registered design is a solution. Another solution, however, is to file a lawsuit or to seek resolution of the conflict through a mediation.