table of contents
Basic information on the design system
For those who are applying for a design for the first time, we will provide an easy-to-understand explanation of what a design is, the benefits of obtaining a design right (different from a patent), and the requirements necessary for registration.
1. What is a design?
A design is the design (appearance) of the shape, pattern, color, or image of an object or building. In particular, the design of a wide variety of items, from clothes, cars, desks, umbrellas, ballpoint pens, and mobile phones to nails, frying pans, dry cell batteries, thread, and cakes, are protected by the Design Act.
These items are also protected by the Design Law
- Food (cake, candy, solid curry, sushi, etc.)
- Office supplies (erasers, thumb tacks, blackboards, etc.)
- Printed materials (books, flyers, tickets, etc.)
- Vehicles (airplanes, fishing boats, tractors, etc.)
- Building materials (pillars, sliding doors, curtain rails, rafters, etc.)
- Basic products (thread, chain, nails, vinyl tape, etc.)
- Prefabricated houses, outdoor equipment (bathrooms, balconies, gates, torii gates, telephone booths, mailboxes)
- Real estate (buildings, interiors)
- Images (operation images, display images)
In addition to the overall design of an item or building, the design of only a part of an item or building (such as the handle of a coffee cup) can also be registered as a design.
Furthermore, not only finished products (e.g., bicycles) but also their parts (e.g., bicycle pedals) are eligible for design registration if they are traded independently.
This is not protected by the Design Law.
- Intangibles (fireworks, etc.)
- Non-solids (electricity, light, liquid, gas, etc.)
- Powders and granules that cannot be seen with the naked eye
- Motifs separate from the object (logos, typefaces, etc.)
- Internal structure invisible from the outside
- Works of pure art, such as paintings and sculptures
2. Benefits of obtaining a design patent
The owner of a design right has the exclusive right to exploit the registered design and designs similar to the registered design.
In other words, if someone else practices a registered design or a similar design, you can file an injunction to stop the practice and to claim damages for damages suffered as a result of the practice. This applies not only to the registered design, but also to designs similar to the registered design. You can also request an injunction against the import of infringing products. In recent years, many counterfeit products with the trademark removed from the package or product, or similar products with a dissimilar trademark, have been imported into Japan, and these cannot be stopped by trademark rights alone. In such cases, if you have acquired the right to the form through design rights, you can request an injunction against the import of even clever counterfeit products.
Another advantage is that the time until registration is shorter than that of a patent. For example, it takes an average of 9.5 months to get the first action on a patent, and an average of 12.5 months for a trial, while it takes an average of 6.0 months to get the first action on a design, and 6.7 months for a trial (as of 2019, from the 2020 Patent Administration Annual Report). For example, if you change from a patent application to a design application, you can exercise your rights based on the design right against infringing products of other companies that become apparent after the patent application is filed, more quickly than if you were to register a patent right.
3. General requirements for design registration
In order for an applied design to be registered, it must meet the following requirements:
(1) The design must be protected under the Design Act.
The following designs, even if they are for an article, are not considered designs under the Design Act and cannot be registered as designs.
<Designs that cannot be considered as designs under the Design Act>
① Designs separate from the object (typefaces, signs, characters, intangible objects such as fireworks, fountains, etc.)
② Those that are not the shape of the item itself (such as the latte art pattern on a cafe latte in a cup)
*However, even if the shape is intended for sale, it will be treated as the shape of the article itself if the shape can be maintained.
3) Non-solid objects (electricity, light, gas, liquid, etc.)
*However, in the case of indoor and outdoor lighting fixtures, automobile taillights, and other items where a pattern or color appears on the item itself when the lighting part is turned on, the pattern or color is also treated as a design element.
4. Things that cannot be seen with the naked eye (salt, sugar, etc.)
*However, if salt or sugar is molded into a lump and is visible to the naked eye, it will be treated as a design.
For the requirements for a building under the Design Law and the requirements for an image under the Design Law, please see "Protection of architecture and interior design""Use of image design"Please refer to.
(2) The design must be capable of industrial application.
The design must be for an item that can be repeatedly produced through an industrial (mechanical or handicraft) production process and mass-produced.
＜Designs that are not applicable for industrial use＞
① Designs that use natural objects as the main element and cannot be mass-produced
[Example] Natural stones used as ornaments
②Works in the field of pure art
[Example] Painting, sculpture
(3) It must be a new design that has never been seen before (novelty).
It is necessary that there are no identical or similar designs prior to the filing of the application.
<Designs that lack novelty>
① A design that was publicly known in Japan or abroad before the application for design registration
② A design that was published in a publication or became publicly available through an electronic communication line in Japan or abroad prior to the filing of the application for design registration.
Even if you have made a disclosure yourself, the invention will lose its novelty and will not be eligible for registration unless the provisions for exceptions to loss of novelty apply.
Prior to filing, there must be no identical or similar designs in existence.
■ Examples of designs that lack novelty
- Designs that have already been published by yourself or others at exhibitions, in pamphlets, on websites, etc.
- Designs already sold by yourself or others
- Designs similar to the above designs
(4) The work was not easily created (non-creativity)
A design that lacks creativity cannot be registered.
<Designs that are not difficult to create>
① Replacement design
A design that is merely constructed by replacing specific components of a publicly known design with another publicly known design in a manner common to those skilled in the art
② A mishmash of designs
A design that is merely a compilation of multiple publicly known designs using a method common to those skilled in the art
③ Design with some components deleted
A design in which a part recognized as a unit of design creation has been simply deleted
④Design based on change of layout
A design in which the arrangement of components of a publicly known design is merely changed in a manner common to those skilled in the art
⑤ Designs with changes in composition ratio or increases/decreases in the number of consecutive units
A design in which the proportions of all or part of a publicly known design or the number of units of consecutive repeating components of a publicly known design have been changed by a method common to those skilled in the art
⑥ A design that merely represents a publicly known shape, pattern, or color, or a combination of these, almost exactly as it is
⑦ Designs converted from commercial practices
(5) The design must not be identical or similar to any part of the prior design.
A design that is identical or similar in part to a design that has been applied for and registered earlier is not considered to be a new design and cannot be registered (however, there are exceptions if the applicant is the same).
(6) The design must not be contrary to public order or morals.
Even if a design meets the above requirements, the following designs cannot be registered for public interest reasons:
① Designs that may offend public order and morals
[Example] Statues of heads of state, national flags, etc.
②Designs that are likely to cause confusion with articles related to the business of others
[Example] A design that represents another person's well-known trademark
③ A design consisting only of a shape essential to ensure the function of an article or a shape essential for the use of a building, or a design consisting only of an indication essential for the use of an image.
[Example] A standard shape such as the pin shape of a connector terminal
(7) Filing an application earlier than others (first application)
If two or more applications are filed for the same or similar design, only the application of the earliest design applicant will be registered.
*However, if the same applicant uses the related design system, a later application can be registered.