Specific cases in which design right infringement was contested

Like other intellectual property rights such as patents and trademarks, design rights are powerful rights that give the holder the exclusive right to exercise their own design.

If another company is illegally using your registered design, you can enforce your design rights and seek an injunction or damages. Conversely, if you use another company's registered design without permission, this may constitute an infringement of their rights, and in some cases you may be forced to scrap your product or be liable for large damages.

Therefore, when selling or otherwise dealing in a product with a new design, it is necessary to consider in advance whether or not it infringes the design rights of other companies, and in some cases, to conduct research.

On this page, we will look at some relatively recent court cases in which design right infringement was actually contested, and explain the key points to consider when determining whether or not a design right has been infringed.

Please also refer to the following website for information on the provisions of the Design Act relating to infringement (which also provides an overview of remedies such as injunctions and claims for damages).
· "Overview of design infringement and remedies'

Key points in determining similarity in infringement cases

A design right is the right to exclusively exploit designs that are identical or similar to a registered design in a commercial capacity. Whether designs are identical or similar is determined based on whether the articles are identical or similar, and whether the designs (shape, etc.) are identical or similar.

In terms of similarity of articles, if the uses and functions of the articles are the same or similar, they will be considered to be identical or similar. *If the articles are dissimilar, the designs will be dissimilar and direct infringement will not be established.

If the articles related to the designs are similar, the similarity of the designs (shape, etc.) is then examined.

In infringement cases, when determining whether designs (shapes, etc.) are similar, the structures of the two designs and the key parts that are key to determining whether they are similar are identified, and then these are compared to determine whether the two designs share a common aesthetic feel.

The essential part of a design is the part of the design that is most likely to attract the consumer’s* attention.

*The subject of similarity judgment is the consumer, as stipulated in the Design Act (Article 24, Paragraph 2 of the Design Act). This consumer includes traders such as businesses that handle the item.

In infringement cases, the essential parts of the designs are identified, and normally, if the essential parts are common, the designs are deemed similar, and if they are different, the designs are deemed dissimilar.

We will introduce some specific examples of how the key parts are certified and the decisions made as a result.

The nature, purpose and mode of use of the item
<Reiwa 2 (Ne) No. 1492, Judgment dated February 18, 2021>

	Plaintiff/Appellee Design (Registration No. 1409214)	Defendant/Appellant's Design
article	Data Storage	Data storageCase
design

In this case, the following was found to be essential parts of the plaintiff's design, and since the essential parts were common, the design was deemed similar and infringement was acknowledged.

Essential parts of the plaintiff's design

• Consists of a body, a groove, and a plate
• The top and front are completely covered with plates, and there is a groove between the body and the plate.
• The plate is curved on a circular arc at the top of the front, but the flat side is at a right angle.

Decision points

In determining the essential parts of a design, whether or not a part is easily observable by consumers is an important point, depending on the nature, purpose, and mode of use of the article. In other words, when the target product is used, what kind of situation or condition is likely to be used by consumers, and how easily/hardly each part is visible in that condition is considered.

Parts that are easily visible when the item is in use are more likely to be recognized as essential parts. On the other hand, in the case of home appliances such as refrigerators, the shape of the front door and handles are easily visible, but the back and bottom are less likely to be considered essential parts because they are rarely visible when the item is in normal use.

In this case, the data storage device is a product that is installed next to a television or computer and connected via a cable, so consumers do not necessarily have many opportunities to see the back and bottom, and so the above points, which are visible from the front, have been recognized as essential parts.

Similarity of items

In this case, the similarity of the articles to which the designs pertained was also an issue.

The court determined that the plaintiff's registered design was a "data storage device," while the defendant manufactured and transferred a "data storage device case," and therefore the items were not identical or similar, and therefore direct infringement did not exist.

However, since this "case" is used only in the manufacture of data storage devices, it was determined that indirect infringement existed (Article 38, Paragraph 1 of the Design Law).

Presence or absence of a new creative part not found in the publicly known design (1) *Examples of dissimilarities
<Heisei 21 (Wa) No. 2726, Judgment dated November 5, 2009>

	Plaintiff's Design (Registration No. 1339016)	Defendant's Design
article	Boots	Boots
design

In this case, the following were found to be essential parts of the plaintiff's design, and because the characteristics of the essential parts were different, they were deemed to be dissimilar, and no infringement was found.

Essential parts of the plaintiff's design

• Five apertures
• There are many bulges between the apertures
• Shiny spots

Decision points

In determining whether a design is an essential part, consideration is also given (considered as a reference) to whether it is a new creative part not found in publicly known designs. In other words, if the shape, etc. of a design is a shape, etc. commonly seen in prior designs or publicly known designs, it tends to be determined that it is not a distinctive shape, etc. and is not an essential part.

In this case, the above-mentioned essential parts were determined to be new configurations not found in publicly known designs, and since the essential parts were different from the defendant's design, it was determined to be a dissimilar design.

On the other hand, other than the above essential parts, such as the provision of multiple apertures and the shape of the heel, are common forms seen in publicly known designs and are therefore not considered essential parts.

Whether there is a new creative part not found in the publicly known design (2)
<Judgment dated August 29, 2019, Case No. 8272 (Wa) of Heisei 29>

	Plaintiff's Design (Registration No. 1551624)	Defendant's Design
article	Somen noodle maker	Somen noodle maker
design

In this case, the following was found to be essential parts of the plaintiff's design, and since the essential features are common, it was deemed similar and infringement was acknowledged.

Essential parts of the plaintiff's design

• A shape that combines a rail section and a tray section with a rotating device

Decision points

As mentioned above, if a shape, etc. is commonly seen in prior designs or publicly known designs, it tends to be considered not to be a distinctive shape, etc. and not to be an essential part.

In this trial, the defendant argued that the rail and tray parts could not be considered essential parts because similar shapes exist in publicly known designs, and that the shape of the spout part is the essential part, and that the two designs are dissimilar.

However, the court ruled that the combination of both the rail section and the tray section was a novel feature, and that because consumers were interested in how the somen noodles flowed and how easily they could be removed, the related "shape formed by the combination of the rail section and the tray section with the rotor" was an essential part.

In this way, when a design consists of multiple elements, even if each element is found in a publicly known design, if the combination of the elements as a whole is a new feature, they may be recognized as an essential part.

(3) Whether or not there is a new creative part not found in the publicly known design
<Heisei 28 (Wa) No. 12791, Judgment dated November 6, 2018>

	Plaintiff's Design (Registration No. 1224615)	Defendant's Designs (A) to (C)
article	Inspection Lighting Equipment	Inspection Lighting Equipment
design

In this case, the following was found to be essential parts of the plaintiff's design. Even if the essential features are not common, the differences are so slight that they are deemed similar and infringement is recognized.

Key parts of the plaintiff's design (excerpt)

• There are two thin cylindrical middle fins and one rear fin.
• The trailing fin is thicker than the intermediate fin.
• The diameter of the support shaft is about one-fifth the diameter of the fin.
• The spacing between the fins is approximately one-eighth of the fin diameter.

Decision points

The court found that features such as the number of fins (features not common to the plaintiff's and defendant's designs) were essential, but determined that changing the number, spacing, and thickness of the fins, or the diameter of the support shaft, due to the existence of a publicly known design, is a common practice, and therefore the differences between the two designs are slight and cannot be recognized as resulting in a particularly different aesthetic impression.

Even common features found in publicly known designs are not always excluded from the essential parts. However, as in this case, if the degree of difference recognized as an essential part is slight, it is considered that the essential part has little impact on the overall judgment of similarity taking into account other similarities and differences.

Please feel free to contact us

We have explained how to determine the essential parts of a design by taking up examples of design right infringement. As mentioned above, when determining the essential parts of a design, the nature, purpose, and mode of use of the article, as well as the presence or absence of a new creative part not found in the publicly known design, are considered.

When determining whether designs are similar, careful judgment from a professional perspective is required.

If you find that another company is selling counterfeit products, or if you are worried that your own product may be infringing another company's design rights, or if you suddenly receive a warning letter of design right infringement, please contact us first. We will provide you with expert advice on whether infringement may have occurred and what measures you can take.

We can also provide guidance on effective and strategic design application methods so that you can properly exercise your rights and protect your products even if your product designs are copied by other companies.

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