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Relationship between industrial property rights and duration
Industrial property rights laws (Patent Law, Utility Model Law, Design Law, Trademark Law) do not only aim to protect rights, but also to promote industrial development. For example, in the case of patent rights, the person who makes a new invention is given the right to monopolize the invention for a certain period of time, in exchange for making the invention public to the world, with the aim of developing an industry that uses the invention. Therefore, the patent holder's monopoly is limited to a certain period of time, so that everyone can use the invention after that period has passed.
However, trademark rights can only be renewed, and by repeatedly renewing, trademark rights can be made to last almost indefinitely. This is because, although the longer a name given to a product or service is used, the more trust it accumulates and the greater its value as a brand, if it were limited to a certain period of time, that accumulated trust would be lost. If this were the case, it would seem that trademark rights should not have a set duration from the start, and should last forever once acquired, but this could lead to the world being flooded with useless trademarks, so for the time being, the duration is set at 10 years, and trademarks can be renewed if desired and used continuously.
Below, we will provide an overview of the duration of a design right.
Duration of design rights
Duration of a design right (excluding the design right of a related design)
The end of the term of a normal design right, excluding the design right of a related design, is stipulated in Article 21, Paragraph 1 of the Design Act, which states, "The term of a design right (excluding the design right of a related design) shall expire XNUMX years from the date of application for design registration."
While some designs only have a very short lifespan, changing with fashion, there are many designs, such as tableware for export, that have been loved by people all over the world for a long time.
Like inventions, designs are protected by creative works. However, granting exclusive rights to inventions for too long a period of time may hinder technological advancement through technological development. In contrast, designs are protected from an aesthetic perspective, so the adverse effects of extending their duration are considered to be relatively small.
Foreign legislation also generally allows design rights to exist for a period of 15 years or more; for example, in the EU, protection is granted for a maximum of 25 years (as of the end of 30).
In addition, copyright, which shares certain characteristics with design rights, must last for at least 50 years after the death of the author in Berne Convention member states (70 years in Japan), while trademark rights are considered to be perpetual rights that can be renewed any number of times.
Due to these circumstances, the duration of a design right, which was 10 years from the date of registration under the old law, was extended to 34 years under the current law enacted in 15, and was further extended to 18 years with a partial revision in 20, thereby strengthening the protection of rights.
In the partial amendments made in 2019, with the increase in applications for design registrations and applications for converted patent applications in recent years, there was a concern that inconvenience would arise in the management of intellectual property rights due to the fact that the starting date for the end of the term of a design right is the time of registration (for design rights) and the time of application (for patent rights), which is different from the time of application. In response to this, the starting date for the end of the term of a design right was changed to the time of application, as with patents.
In addition, from the viewpoint of supporting the development of unique design concepts for companies and promoting the improvement of brand value, it is desirable to set a longer duration for design rights, so an amendment was made to change the duration of design rights from "48 years from the date of registration" to "2 years from the date of filing of the application for design registration." The reason for unifying the duration at the time of application rather than at the time of registration is that, unlike designs, patents have an examination request system (Patent Act Article XNUMX-XNUMX) that allows the Japan Patent Office to determine whether or not to undergo substantive examination after filing.
Duration of related design rights
The end date of the term of a design right for a related design is stipulated in Article 21, Paragraph 2 of the Design Act, which states, "The term of a design right for a related design shall expire XNUMX years from the date of the application for design registration of the basic design."
The related design system was introduced in 10 as a result of partial amendments to the law, replacing the previous similar design system, with the aim of protecting design variations created from a single design concept during the design development process as having equal value and making it possible to exercise rights for each design.
Since there is an overlap between the design rights of a principal design and its related designs, a new provision was added in the partial amendment of the Design Act in 10 that the end date of the term of the related design is to be calculated from the date of registration of the principal design, in order to prevent a substantial extension of the rights with respect to the overlapping parts of the rights, even if the registration of the design right of the related design is delayed from the design right of the principal design.
Subsequently, a partial amendment to the Design Act in 2020 (effective April 4, 1) changed the duration of a design right to 25 years from the date of application for design registration, and in accordance with the definition of the first selected principal design as the "basic design" (Article 10, Paragraph 7 of the Design Act), the duration of a design right for a related design was amended to 25 years from the date of application for the basic design.
However, if the design right of the principal design expires for reasons other than the expiration of its term, i.e., ① the abandonment of the design right (Article 36, paragraph 97 of the Patent Act as applied mutatis mutandis pursuant to Article 1 of the Design Act), ② non-payment of registration fees (Article 44, paragraph 4 of the Design Act), or ③ the finalization of an invalidation decision (Article 49 of the Design Act), the design right of the related designs will survive while maintaining the relationship between the related designs, given that the organization of the principal design and related designs is for convenience and each design has equal creative value.
Please also refer to the following page for information on the revised related design system.
· "Utilizing the related design system'
Payment of registration fee (annual fee)
If you wish to maintain your rights, you must pay the registration fee (annuity) for each year from the second year onwards in advance of the previous year, with the registration date being the starting date for annuity payments.
Under the old law, it was stipulated that one to three years' worth of registration fees should be paid within 1 days from the date of the final decision or examination decision, but since there are many designs that have a short life span that is affected by fashion, and it was thought that three years' worth of registration fees would not be collected at once, it was decided that one year's registration fee would be sufficient when registering the establishment of a design right. On the other hand, reduction, exemption, or deferral of payment based on financial resources, as in the case of patent fees and utility model registration fees (Patent Law, Article 3, Utility Model Law, Article 30-3), is not permitted.
In addition, since it is expected that greater benefits will be enjoyed by maintaining and utilizing patent rights for a longer period after registration, the patent fees for the initial period of the maintenance period are set at an amount that does not hinder the maintenance of the rights, and the amount of the patent fees increases as profits increase, making the policy progressive in order to make the burden easier to bear. In contrast, since design rights are rights granted for the aesthetic design of an article rather than for technology, it was considered that there was less of a policy need to encourage the early relinquishment of rights compared to patent rights, and therefore the registration fees (annuities) from the 4th to 25th years are set at the same amount.
Back payment system
If the registration fee (annual fee) cannot be paid in advance for the previous year, it may be paid within six months after the deadline has elapsed (Article 6, Paragraph 44). In this case, in addition to the registration fee, a surcharge equal to the registration fee must be paid (Article 1, Paragraph 44). If the registration fee and surcharge are not paid within the deadline for payment in advance, the design right is, in principle, deemed to have been extinguished retroactively to the time when the initial payment deadline had elapsed (Article 2, Paragraph 44).
Automatic payment system
In addition, registration fees (annuities) after registration are subject to the automatic payment system. This was introduced on January 21, 1 with the aim of preventing rights from lapse due to overdue payment of registration fees. By submitting an "automatic payment application form" to the Japan Patent Office, registration fees are collected from the applicant's advance payment ledger or designated bank account and are automatically registered in the registration ledger every year. By using this system, rights holders can safely maintain and preserve their rights without worrying about payment deadlines and without the hassle of creating individual payment forms.
If you are considering a design registration, please feel free to contact us for a cost estimate. We will provide you with reliable assistance in protecting your distinctive design, as well as the brand power and value of your valuable products.
