First, to register a design, an application must be filed with the Japan Patent Office. When filing an application, the design to be registered must be specified. Since a design is the aesthetic appearance of an article or building, specifying the design requires identifying the surface and form of the article through the application and attached drawings, etc.

In addition, with regard to the article, the “article to which the design pertains” (or the building) must be clearly stated in the application. Since the “article to which the design pertains” is the subject of the determination of the scope of the registered design, it is very important to specify it.

Regarding the shape, if the design is three-dimensional, it is necessary to provide a sufficient number of views to clearly express the design for which design registration is sought, including the front view, back view, left side view, right side view, top view, and bottom view (six views) in the orthographic projection method, so basically, you must provide six views. If the shape of the design cannot be fully expressed by six views alone, cross-sectional views, perspective views, etc. may be required.

Please note that registration is not granted immediately after filing an application. Instead, the patent office will conduct a formality examination and a substantive examination, and if there are no reasons for refusal, the application will be registered.Click here for the guidelines..

If the design is not specific, it is considered to be an industrially applicable design and is subject to refusal for violation of Article 3, Paragraph 1 of the Design Act. If the drawings (or photographs) submitted with the application do not match each other, the design is deemed to be not specific.

In order to resolve the reason for refusal, it is necessary to submit amended drawings to resolve the inconsistency in the drawings. However, please note that there are certain limitations to the scope of amendments. For example, if the specific design that can be naturally derived from the description and drawings in the original application differs from the amended design, this will be considered a change in the gist and the amendment will be rejected.

In order to avoid receiving such a notice of rejection, it is important to submit drawings that sufficiently identify the shape of the article or building to which the design relates at the time of application.

At our firm, patent attorneys and the graphic design department work together to create drawings suitable for design registration. For more information about the preparation of design drawings by our graphic design department, please seeClick here for the guidelines..

This reason for refusal (Article 10, Paragraph 1 of the Design Act) can be resolved by changing the related design to a normal design, i.e., deleting the indication of the main design, since the main design (basic design) and the related design are judged to be dissimilar. However, in that case, the scope of similarity will be narrowed. Therefore, it is necessary to consider whether it is possible to argue that the main design (basic design) and the related design are similar without making an easy amendment. If the argument is accepted and the related design can be registered, the scope of similarity will be clarified, which has the advantage of making it easier to exercise rights.

A design right holder has the exclusive right to work the registered design and designs similar to it as a business (Article 23 of the Design Act). Therefore, if the design of the product that you manufacture and sell falls within the scope of "designs similar to the registered design," there is no problem because the design right will be worked out and, in principle, there is little possibility of infringing on the design right of others.

However, care must be taken to determine whether a product falls within the scope of a "design similar to a registered design." For example, if you have a related design registration, you can consider it an exercise of your own design right even if you change the shape, etc., to the extent that it is similar to the main design and the related design. On the other hand, if you do not have a design right for a related design, it is difficult to estimate the scope of the design related to a "design similar to a registered design." In such cases, you can request an appraisal from a patent attorney or a judgment from the Japan Patent Office to determine whether the product you manufacture and sell falls within the scope of a "design similar to a registered design."*1

Please note that if there is a registered design or other work of another party that is in a conflict of use relationship*2, the exploitation of the design will be restricted even if you are the design right holder.

• The Patent Office will provide a neutral and fair judgment.
• A conclusion can be reached in as little as three months.
• The fee for requesting a decision from the Patent Office is inexpensive, at 1 yen per case.
• Although it is not legally binding, it is the official opinion of the Patent Office and is considered to be equivalent to a written opinion; it is in fact well respected in society and is considered to be one of the authoritative judgments.

There is a method of sending a warning letter to the infringing party and negotiating to stop the infringement. The party who received the warning letter will often stop the infringement voluntarily, but may not agree to pay damages. This method is expected to stop the infringement voluntarily, but it does not force the party to stop the infringement. It is important to be careful because there is a risk that the infringement will not stop and the damage will continue and spread. In addition, if you send a warning letter to the other party thinking that they are infringing your rights, but the other party's actions do not actually constitute an infringement, or if the design right on which the warning letter was based is later invalidated, sending the warning letter to the other party's business partners, etc. may become a business defamation act, and the other party may demand damages, which may worsen the dispute.

Therefore, you must carefully consider who to send the warning letter to and what the content of the letter should be. In order to gain an advantage in negotiations, you may consider obtaining an expert opinion from a patent attorney in advance or using the judgment system to use it as material in negotiations.

• Mediation System
  This is a method of dispute resolution in which a third party acts as a mediator, who intervenes between the parties in dispute, listens to both sides, presents a settlement proposal, and both parties agree to it. Mediation is a process in which the mediator mediates between the two parties, and will not be concluded if the parties cannot agree. Therefore, it is important to note that the use of mediation procedures does not force the conclusion of mediation, and if an agreement cannot be reached, the mediation will end at that point. The principle of open court proceedings does not apply to the mediation system, so it is useful when both parties wish to handle the dispute resolution procedures in secrecy.

• Arbitration system
  There is a method to use the arbitration system by an arbitration institution, where a third party acts as an arbitrator, listens to both sides, and makes an arbitral decision. The difference from mediation conducted by an institution other than a court is that if both parties agree to use arbitration procedures, the arbitral decision made by the arbitrator has the same legal force as a court decision. By using the arbitration system, it is sometimes possible to resolve the dispute quickly with a relatively simple procedure compared to court procedures. In addition, since the principle of open trials does not apply to the arbitration system, it is useful when both parties want to handle the dispute resolution procedure in secrecy.

• Injunction
  The following are some forms of injunctions against design right infringement:
  1. Request for the cessation of infringing acts
  2. Request for prevention of infringement
  3. Disposal of objects constituting the act of infringement, removal of facilities used in the act of infringement, and other acts necessary for the prevention of infringement
  *3. Requests for item 3 can only be made together with items 1 or 2.
  *If the design right that has been infringed is a secret design, an injunction cannot be sought unless the details of the registered design are presented and a warning is given (Article 37, Paragraph 3 of the Design Act).
  *In urgent cases, such as when a design right infringement has become a reality and there is a possibility of significant damage occurring if the issue is left unattended, you may first apply to the court for a provisional injunction to stop the infringing acts.

• Claim for damages
  It is possible to claim damages from those who manufacture or sell products that infringe design rights. In order to claim damages, many facts must be proven, but proving such facts is often difficult, so the Design Act has established calculation provisions to reduce the burden of proof regarding the amount of damages (Article 39 of the Design Act). In addition, the Design Act presumes that the infringer was negligent in the act of infringement*, making it easier for design right holders to claim damages from infringers.
  *The presumption of negligence does not apply to infringement of design rights involving secret designs.

• Claim for return of unjust enrichment
  You may also be able to exercise your right to recover unjust enrichment.

• Credit restoration claim
  In the case of a person who has intentionally or negligently infringed a design right and thereby damaged the business reputation of the design right holder, the court may, at the request of the design right holder, order measures to restore that reputation. Specifically, if it is determined that the business reputation of the design right holder has been damaged by the infringer's inferior goods, measures such as publishing an apology advertisement may be required.

• Pursuing criminal liability
  The Design Act stipulates that the act of manufacturing and selling counterfeit products is punishable by imprisonment of up to 10 years or a fine of up to 1,000 million yen, or both, so when a design right is infringed, criminal prosecution may also be possible.
  In the case of a corporation, in addition to the punishment of the perpetrator, the corporation will also be subject to a fine.

The starting point is to discover that a registered design or a design similar to a registered design is being used without the permission of the design right holder. There is no special method for discovering such facts. It requires steady efforts such as information from employees and business partners including customers, and searches on the Internet. It is also necessary to check whether the design right has been extinguished due to non-payment of pensions, etc.

In addition, although it is obvious when designs are identical, it is often difficult to say whether they are similar or not. Even if you think they are similar, there are cases where they are judged to be dissimilar in judgments and appeals. Therefore, apart from cases where they are completely identical, if there seems to be even the slightest difference between the registered design and the design, we recommend that you consult with an expert such as us, as the scope of similarity often differs depending on the field of the product, etc.

Once you have found the facts of infringement, you will then need to collect information and evidence about the other party. For example, the other party's address, name, producer, distribution route, etc. Since many products are sold online these days, it is also important to check the distribution route on the Internet.

If the product is relatively inexpensive, one option would be to purchase it and secure the actual item. If possible, taking a photo can be useful as evidence in the future. Also, it is quite difficult to completely clarify the distribution route, so it is fine to start with what you know. However, when tracing the distribution route, it may turn out to be an imported product. In that case, you will need to consider the procedure of detaining it at customs.

In parallel with this, it is advisable to check the validity of the design right to the extent possible. If the registered design or a design similar to it becomes publicly known not only in Japan but elsewhere in the world before the application for the registered design is filed, the design right will become invalid and the right will not be allowed to be exercised. At the very least, it is advisable to check the drawings published in patent publications and utility model publications.

After discovering an infringement, we will conduct an investigation and, if we determine that there is a high possibility of design right infringement based on the validity of the design right and the opinion of our experts, we will enter into negotiations with the other party.

It will probably start with a written notice. Depending on the other party, you may start with a "Request for Complaint" or you may send a registered letter straight away. If you can then resolve the issue through written or face-to-face negotiations, it is advisable to put it in writing by creating a "Memorandum of Understanding" or similar.

If negotiations break down, one way is to leave the matter alone, but if you decide to fight, the dispute will be resolved through litigation or arbitration.

When you receive a document such as a registered letter from a design right holder, it is not uncommon to not know what to do. In such cases, we recommend that you consult with our experts as soon as possible. The document usually states a deadline for your response, so it is best to first respond by that deadline.

When you contact us, the main points our experts will check are as follows:

1. Whether the other party's design right is still valid
2. Comparison of the other party's design with your company's design
3. Whether or not a search has been conducted to invalidate the other party's design right
4. Whether or not you can modify the design in question
5. What is the relationship between the design right holder and your company?

Based on the above considerations, we will consider whether the designs are similar or whether there are grounds for invalidation. Then, how do you respond? Do you respond by stating that the design is dissimilar? Do you take measures to extinguish the other party's design rights? Do you respond by changing the design? Or do you respond by saying that you would like to continue working the design? We will advise you on specific measures to take.
If the matter can be resolved in writing or through face-to-face negotiations, it would be advisable to create a memorandum of understanding and put it in writing.

If negotiations break down, it is normal to take countermeasures depending on the other party's response. It is also possible to request a ruling from the Japan Patent Office as to whether the implementation of your design falls within the scope of the other party's registered design and its similar designs. Furthermore, if you are certain that there is no infringement of the design right, it is also an option to take the initiative and file a lawsuit.

• It is useful to obtain an opinion before sending a warning letter to another company to assert that it is infringing your design rights.
• The expert testimony can be submitted to the court as evidence.

• If your company receives a warning letter regarding design infringement, you can use an opinion to argue non-infringement.
• You can attempt to resolve the dispute by presenting the other party with an appraisal stating that the two products are dissimilar.
• The expert testimony can be submitted to the court as evidence.