Regarding designs that cannot be registered

Regarding designs that cannot be registered

The Design Act stipulates that designs that are identical or similar to publicly known designs cannot be registered.

However, even if a design is completely new, it may not be approved for registration depending on its content.

This applies to designs that would cause harm to others if rights were granted. Similar provisions exist in the jurisdictions of patents, utility models, and trademarks, but in the Designs Act, it is stipulated in Article 5. The explanation is as follows.

1. Overview of unregistrable designs

Article 5 of the Design Act stipulates that even if a design meets the requirements for registration, such as industrial applicability, novelty, and lack of ease of creation, it may not be registered for the following reasons:

The examiner will determine whether or not the design falls under any of these grounds for unregistrability, and if so, will not allow the design to be registered.

2. Specific reasons for non-registration

Below, we explain the specific criteria for determining each reason for non-registration.

(1) Designs that violate public order and morals

(a) Designs that are likely to harm the public order

Designs that may offend the dignity of the nation or the Imperial Family, such as statues of Japanese or foreign heads of state, national flags, the Imperial Chrysanthemum Crest, or coats of arms of foreign royal families (including similar designs), are deemed to be likely to harm public order.

The new banknotes, which feature portraits of Eiichi Shibusawa, Umeko Tsuda, and Shibasaburo Kitasato, have been registered as designs by the National Printing Bureau, an independent administrative institution.

・Design Registration No. 1657689

・Design Registration No. 1657690

・Design Registration No. 1657691

(b) Designs that are likely to offend public morals

Examiners will determine that designs that unduly stimulate the moral sense of people of sound mind and body and cause shame or disgust, such as designs depicting obscene material, are likely to offend good morals.

(2) A design that is likely to cause confusion with an article, building, or image related to another person's business

A design that depicts another person's well-known or famous trademark, or a mark similar to such a trademark, is deemed to be a design that is likely to cause confusion with articles, etc. related to the business of another person, because there is a risk of confusion that the articles, etc. are made or sold in connection with the business of that person or organization.

(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.

Under the Design Act, designs consisting only of shapes essential to ensure the functionality of an article, or shapes essential for the use of a building, or designs consisting only of indications essential for the use of an image, are considered creations of technical ideas that should be protected by the Patent Act or the Utility Model Act, and are therefore not suitable for granting exclusive rights as design rights.

Examiners will determine that a design consists only of a shape essential to ensure the functionality of an article or a shape essential to the use of a building if it falls under the following types.

① A design consisting only of a shape that is inevitably determined by the function of an item or the purpose of a building.

In the case of a design consisting only of a shape that is necessarily determined to ensure the function of an article or the use of a building (an inevitable shape), the examiner will determine that the design is 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 as provided for in Article 5, Paragraph 3 of the Design Act. The examiner will determine whether or not the applied design is a design consisting only of an inevitable shape by focusing only on the shape that embodies the technical function of the article or the use of the building, regardless of the presence or absence of patterns and colors that are components of the design. In particular, the following points will be taken into consideration.

(i) Whether there are any alternative shapes that can ensure the functionality of the item or the use of the building.
(b) Whether or not it includes shapes that should be taken into consideration in design evaluation other than inevitable shapes, etc.

② Designs consisting of shapes (quasi-inevitable shapes) determined by standardized specifications in order to ensure the interchangeability of products or in light of the use of buildings, etc.

Examiners will also treat designs in which each element of the shape, dimensions, etc. has been standardized in order to ensure the interchangeability of articles, etc. (including ensuring technical functions) or in light of the use of a building, etc., and which must be accurately reproduced in accordance with the standardized shape, dimensions, etc., in accordance with ➀ inevitable shape.

For example, examiners will determine that items that fall under (a) or (b) below are standards that have been established to ensure the interchangeability of goods, etc.

(a) Public standards

Standards established by public standardization organizations, such as JIS standards (Japanese Industrial Standards) established by the Japan Standards Association, and ISO standards established by the International Organization for Standardization (ISO).

(b) De facto standard (design)

This refers to standards that are not official standards, but are recognized as the industry standard in the field of the relevant goods, etc., and products based on said standards effectively dominate the market for the goods, etc., and the details of the standard, such as shape, dimensions, etc., can be identified by the name, number, etc. of the standard.

However, the application of the provision of Article 0202, Paragraph 5502 of the Design Law is limited to articles, etc. whose main purpose of use is to demonstrate a function based on the shape, etc. Therefore, for example, the provision of Article XNUMX, Paragraph XNUMX of the Design Law does not apply to office paper (paper base dimensions JIS P XNUMX) and daily paper (envelopes JIS S XNUMX), etc., even if they have shapes determined by official standards or de facto standards.

③ A design consisting only of representations essential to the use of the image

In addition to designs consisting only of representations that are necessarily determined in light of the use, etc. of an image, examiners will also determine that designs consisting only of representations that have been standardized or standardized and must be created accurately are designs consisting only of representations that are essential for the use of an image as provided for in Article 5, Paragraph 3 of the Design Act.

3. Procedure for examination to determine whether a trademark falls under the grounds for non-registration

If the examiner is convinced that the applied design falls under the grounds for unregistrability, he/she will issue a notice of reasons for refusal. In response, the applicant can make corrections by submitting a written amendment, or can make a rebuttal or explanation by submitting a written opinion. If the applicant is no longer convinced that the design falls under the grounds for unregistrability through amendments, rebuttals, or explanations, the reasons for refusal will be resolved.

If the examiner's opinion does not change, he/she will issue a decision of refusal based on the grounds for refusal that the design cannot be registered under Article 5.