What are the benefits of design registration?

What are the benefits of design registration?

What kind of image do you have of design rights? Some people may not be familiar with them compared to patent rights, trademark rights, and copyrights.
However, in fact, obtaining a design right has many advantages compared to patents, trademarks, and copyrights.

Here we will explain the advantages and disadvantages of design registration.
We will also introduce the differences between patent rights, trademark rights, and copyrights, as well as the advantages and disadvantages when compared to these.

Advantages and disadvantages of design registration

Benefit

1. Suppression of counterfeit products

If another company commercially implements a design that is identical or similar to a registered design, this constitutes infringement of the design right.
When a design right is infringed, it is possible to stop the sale of products that imitate the registered design and to claim damages.

A design protects the appearance of an object, that is, the design of a product. Product designs are easily imitated because they are visible, and the better the design, the sooner counterfeit products will be produced.
In such cases, simply having "Design Registration No. XXXXX" written on the product itself or on a website, or having it published in the Design Gazette, can suggest that rights can be immediately exercised against counterfeit products, and this can be expected to have a deterrent effect.

If counterfeit products actually appear on the market, having a design right will make it possible to proceed with litigation smoothly.
If you do not have a design right, you will need to seek protection under the Unfair Competition Prevention Act, but in many cases it is difficult to prove the requirements for an injunction or damages. This means that you will have no choice but to allow counterfeit products to run wild, which can lead to troubles such as being forced to change the design of a product that you have put on the market.
It is important to take measures against counterfeit products that copy designs, and the ease of taking such measures depends on whether or not you have a design right.

Furthermore, in today's world where counterfeit goods imported from abroad have become a problem, design rights are also effective in border control measures at customs.
If a counterfeit product has a mark and that mark is a registered trademark, it may be possible to stop its import as a trademark infringement.
However, there has been an increase in clever cases where marks are concealed, and in such cases, even if the product is counterfeit, it cannot be regulated as a trademark infringement. If you obtain a design right, it becomes possible to regulate the shape of the product itself, making it possible to effectively deal with the import of counterfeit products.

2. Improved market competitiveness, trust and recognition

Other companies will no longer be able to obtain rights to designs that are identical or similar to the registered design.
By filing a design application early, you can prevent other companies from implementing your design, so the better your design is, the more competitive you can be in the market compared to other companies.

In addition, obtaining a design patent means that the design is unique and novel, and there is little possibility that it infringes on the design rights of other companies.
It is possible to effectively appeal to business partners and others with your excellent design.

3. License Revenues

Other companies cannot freely exploit designs that are identical or similar to a registered design.
By obtaining permission from the design owner, other companies can exploit the design in accordance with the terms of that permission.
This also allows the design owner to obtain licensing fees.

4. Motivating designers

One of the purposes of the Design Law is to increase the motivation of design creators and produce better designs.

Product designs typically require a great deal of time, money and effort to create.
If unintentional diffusion and imitation were permitted, the creator of the design would not be able to recover the development costs, and conversely, imitators who did not invest in the development costs would effectively gain huge profits.
Obtaining a design right can prevent counterfeit products while also protecting the rights of the person who created the design, preventing a decline in creative motivation.

Demerit

1. It costs money to acquire rights

The minimum cost of filing an application is the application fee of 16,000 yen to be paid to the Japan Patent Office.
If you hire an agent, the total application fee will usually be around 100,000 yen.

The minimum cost of registration is 1 yen, which is the registration fee (for one year) paid to the Japan Patent Office.
If you hire an agent, some offices may ask for a success fee in addition to the registration assessment.

If you wish to claim priority or take advantage of the accelerated examination system or secret design system, further costs will be incurred.

2. The process is tedious

Filing a design application can be quite difficult for those who have no prior experience with design applications, as the application documents have a unique format and drawings are required.
To file quickly and easily, it is a good idea to ask an agent to handle the application, although this is a cost-effective option.

3. Identifying the scope of rights and determining infringement

A patent right describes the technology that is the scope of the right in written form. Therefore, when determining whether a patented product infringes a counterfeit product, the focus is on interpreting the wording of the patent right to see whether the counterfeit product is included in the scope of the patent right.
In contrast, when determining whether or not there is infringement between a registered design and its counterfeits, the focus is on the similarity of appearance, so the issue is whether or not there are significant differences when comparing the appearances of the two products.
The determination of similarity depends on factors such as the prevalence of the product to which the design relates, whether the differences are areas that attract consumers' attention, and the position, size, and scope of the differences in the overall design, so it can be difficult to identify the scope of rights and determine whether there has been an infringement.

Comparison with patents, trademarks, and copyrights

When you are looking to protect the design of an item, you may also be able to obtain protection under patent law, trademark law, and copyright law.
A brief explanation is given in the table below.

	design	Patent	商標	book
Protection target	Aesthetic appearance of the article	The creation of advanced technical ideas that utilize the laws of nature	The credibility of a company or product embodied in a mark	Creative expressions of ideas or emotions related to literature, academia, art, music, architecture, etc.
Possibility of protecting the design of an article	Possible if the design is new and not easily created	Possible if the design has a new and significant technical effect	Yes, if it is well-known (known nationwide to consumers and traders)	It is possible for works of art and crafts to be protected. Designs of mass-produced industrial products that are not one-of-a-kind items cannot be protected.
Necessity of registration	必要	必要	必要	Not required (No registration procedures are required to generate rights. Registration procedures can be carried out to prove that you are the right holder, etc.)
Time until registration	About 6 to 10 months	A request for examination must be made within three years of filing the application, and the results of the examination will be notified about one year after the request is made. Therefore, the earliest it takes is one year, but in most cases it takes two to five years.	About 8 to 12 months	None (rights arise as soon as the work is created)
Duration	25 years from the filing date (annual fees must be paid for each year to maintain the patent)	20 years from the filing date (annual fees must be paid for each year to maintain the patent)	It lasts for 10 years from the date of registration, but can be made permanent by paying a renewal fee.	In principle, up to 70 years after the death of the author. In the case of works registered under the name of a corporation, 70 years after the work is made public.
Minimum cost to register (if doing it yourself)	16,000 yen at time of application + 8,500 yen at time of registration (1 year)	14,000 yen at the time of application + 142,000 yen at the time of examination request + 13,800 yen at the time of registration (for 1st to 3rd years)	12,000 yen at time of application + 17,200 yen (for 5 years)	None
Registration rate	Relatively high	Relatively low	Relatively high	None
Scope of rights	Since the scope of rights is based on what appears in the drawing, it tends to be interpreted narrowly.	Because the scope of rights is expressed in writing, it tends to be interpreted broadly.	Basically, the rights apply to trademarks that are identical or similar and the designated goods and services are also identical or similar.	The right extends to others who know of and copy the copyrighted work. There are no absolute standards for determining similarity in copyright infringement, and the scope of rights is less clear than that of designs, patents, and trademarks.
Effectiveness in combating counterfeit goods	The appearance is obvious at a glance, making it effective in preventing counterfeit goods, including border control measures at customs.	Technical ideas that are mainly written can be difficult to understand, and they lag behind design trademarks in terms of border control measures at customs.	Very effective when the counterfeit product is trademarked or the design of the counterfeit product itself is similar to the trademark	As mentioned above, the scope of rights is uncertain compared to designs, patents, and trademarks, so it lags behind design trademarks.
Secret operation possibility	After registration, designs can be kept secret for three years (secret design system)	It will be published one year and six months after filing.	It will be made public after filing. Since it is something that accumulates credibility by being used in products and services, it is assumed that it will be made public.	It is possible not to disclose

 

Regarding the period until registration and the registration rate,Patent Administration Annual Report 2022Is referred to.

Summary of comparison with patent rights, trademark rights, and copyrights

Leaving counterfeit goods unchecked can result in a decrease in sales, complaints from customers who purchased inferior products, problems with business partners, accidents involving consumers, a decline in brand image, and changes to designs that have been painstakingly created, among other disadvantages.
Taking these losses into consideration, the benefits of obtaining a design patent are clear and significant, although this depends on the unit price and distribution volume of the product.
The cost is significantly cheaper than a patent, and registration is quick, so your rights can be enforced swiftly in the event of infringement.

If you want to prevent the design of an item from being copied, protection under the Design Act, which has the sole purpose of protecting that design, can be useful.
In addition, when a design has a technical effect, it is possible to protect it from multiple angles by obtaining a patent.
If the design of the item is well-known as a mark of goods, etc., it may be possible to protect it under the Trademark Law. If the design is to be used for a long time, it may be possible to continue the exclusive use of the design through the design right and then register the trademark after it has gained public recognition.

If the cost of registration is an issue, you may be able to protect your design under copyright law. However, designs of industrial products that are distributed in the market, such as pens, refrigerators, clothes, and smartphones, are not protected by copyright law.
Another option is protection under the Unfair Competition Prevention Act, but protection is no longer available if three years have passed since the sale of a product bearing the design, and it is necessary to prove that the design is well-known and famous as a product mark, etc., making it often difficult to prove the requirements for seeking an injunction or damages.
It is better to think of it as a remedy when you do not have rights such as design rights, patent rights, trademark rights, or copyrights.

When you are unsure whether to file a design application

I understand that there are benefits to obtaining a design patent, but to be honest, I think many people are worried about whether it is cost-effective.
I sometimes hear people say that they would apply if the fees were cheaper.

Design research and drawing up plans require special skills, so many patent law firms outsource these tasks to separate companies.
This is one of the reasons for the increase in office fees.

We have patent attorneys and staff who specialize in designs, and we also conduct design searches in-house.
We also have a department for creating blueprints, and we create blueprints from scratch in-house.
We have a large number of staff members specializing in design, which allows us to respond quickly to many requests and inquiries.

If you are wondering whether or not to file a design application, please contact us for a quote.