table of contents
Overview of design infringement and remedies
How is it determined whether a design right has been infringed?
On this page, we will explain design right infringement using examples of representative court cases in which design right infringement was actually contested.
Design right infringement can be broadly divided into direct infringement and indirect infringement.
Direct infringement is the act of manufacturing or selling, without authorization, a design that is identical or similar to another person's registered design.
Indirect infringement refers to preparatory actions that are likely to result in infringement.
direct infringement
A design right is the right to exclusively exploit in a commercial capacity designs that are identical or similar to a registered design.
Therefore, if a person who does not have a design right implements not only a design that is identical to a registered design, but also a similar design, this constitutes design right infringement. This is called direct infringement.
In determining whether or not a design right has been infringed, the key point is not only to determine the scope of the design right, but also to determine whether the design of the infringing product is similar to the registered design.
Regarding the determination of similarity of designs
The method for determining whether a design related to an infringing product is similar to a registered design is the same as the method for determining similarity in the examination guidelines established by the Japan Patent Office.
■ Similarity of items
In determining whether designs are similar, the first step is to consider whether the articles are similar. If the uses and functions of the articles related to the compared designs are the same or similar, the articles are deemed to be identical or similar. If the articles are dissimilar, the two designs are dissimilar designs, and no design infringement is constituted.
<Case where items were determined to be dissimilar (Heisei 17 (Ne) No. 10079)>
Plaintiff/Appellant's Design (Registration No. 1156116) | Defendant/Appellee's Design | |
article | Carabiner | Heart Carabiner Keychain |
---|---|---|
design | ![]() | ![]() |
For example, in this case, the articles were a "carabiner" and a "heart carabiner key chain", but while a "carabiner" is mountain climbing equipment, the appellee's design was an accessory, and it was clear that they had different functions and uses. It was difficult to find that general consumers would confuse the two products with a "carabiner" in the trading field, and the court determined that there was no infringement of a design right because the articles were dissimilar.
Examples of non-material items
The above are examples of so-called general items, but the Design Act was amended in 2019 to allow registration of designs for images and designs for buildings and interiors in addition to general items.
In the case of image designs, the similarity of use and function is also determined. For example, in the following example, the use and function are considered to be similar because they are both "devices for inputting numerical values."
article | Password input image for access control | Image for entering phone number |
---|---|---|
design | ![]() | ![]() |
From the Japan Patent Office Design Examination Guidelines
The design of a building and its interior is similarly judged based on its use and function.
However, in the case of buildings and interiors, the criterion for judgment is whether people spend a certain amount of time inside, so it is important to note that in many cases, their uses and functions are deemed to be similar, as described below.
An example | judgment | |
Architectural design | "House" ⇔ "Hospital" ⇔ "Restaurant" ⇔ "Office" | There is a commonality in use and function in that people enter and spend a certain amount of time inside.is judged to be similar |
"Bridge" ⇔ "Housing" | Civil engineering structures have a variety of unique uses, so they are often called "houses" etc.It may not be considered similar | |
of the interior design | "Residential bedroom interior" ⇔ "Hotel guest room interior" | Since they are used by people to spend a certain amount of time inside, there is generally a commonality in their uses and functions.In principle, all interior designs are deemed to be similar in purpose and function. |
■ Similarity of form
Now, if the articles related to the designs are similar, the similarity of the designs (shape, etc.) is then considered.
When determining whether designs (shape, 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 value.
<A case where the design form was determined to be dissimilar (Heisei 13 (Ne) No. 5158)>
Plaintiff/Appellant's Design (Registration No. 1031423) | Defendant/Appellee's Design | |
article | Two-handed pan | Two-handed pan |
design | ![]() | ![]() |
*The red dotted lines are our additions
In this example, the shape of the overlapping part of the lid and the pot body, surrounded by a red dotted line in the defendant/appellee's design, is a key part (a distinctive part that attracts the viewer's attention at first glance), and since this differs from the registered design, it was determined to be a dissimilar design.
<A case where the design form was determined to be similar (Heisei 1997 (Ne) No. 404)>
Plaintiff-Appellee Design (Registration No. 766928) | Defendant/Appellant's Design | |
article | Self-propelled crane | Self-propelled crane |
design | ![]() | ![]() |
*The text in red is our addition
In this example, the key elements are the relationship between the boom, cabin, and lower running structure, and since these are common, it was determined that the designs are similar and constitute a design infringement.
In this case, a judgment was made ordering the appellant to pay approximately 450 million yen in damages equivalent to the royalties.
For the above reasons, when considering infringement of a design right,Whether the two items are similar,Whether the designs (shapes, etc.) are similarThis will require careful consideration.
In addition, when filing a design application, you need to consider the item and scope of your rights, taking into account whether your rights can be exercised if a counterfeit product is produced. For example, you need to be careful whether the name and description of the item written in the application adequately describe the product that will actually be used, and whether the shape you wish to protect is clearly expressed in the drawings, etc. In order to effectively obtain a wide scope of rights, you should also consider utilizing the partial design and related design systems.
Usage relationship
Even if the overall aspects are different, if a relationship of use is established between the two, it constitutes an infringement.
A relationship of use is, for example, between the design of a part and the design of a finished product, when the design of the finished product exactly incorporates the design of the part. If the design of the part is a registered design of someone else, using the finished product will infringe the design right of that other person.
The following incidents are particularly well known:
<A case in which a relationship of use was determined to have been established (Judgment No. 507 of 1970 (Wa))>
Plaintiff's design (Registration No. 284774) | Defendant's Design | |
article | desk | student desk |
design | ![]() | ![]() |
*The red text is our addition
Although the two designs are considered not to be similar overall, the bookshelf section (upper half) and the desk section (lower half) of the defendant's design are not integrated and can be distinguished, and it was determined that the desk section (lower half) was similar to the plaintiff's registered design.
The defendant's design incorporated a desk part similar to the registered design as an exact part, and it was determined that a relationship of use was established and constituted an infringement of a design right.
If you incorporate the design of another company's product directly into your own products and manufacture and sell them, etc., you must be very careful as a relationship of use may be established.
Indirect Infringement
Even if it does not constitute direct infringement, conduct that is likely to infringe will be considered infringement.
This is called indirect infringement.
An example of indirect infringement would be producing a product that is used solely to produce infringing goods.
In recent years, a practice has been to avoid infringement by dividing infringing products into parts and importing them.
In response to this, the act of transferring, importing, etc. a part of an infringing product while knowing that it is a part of an infringing product (Article 38, Paragraph 2 of the Design Act) was newly established as a type of indirect infringement in the amendment to the Design Act in XNUMX.
Relief in the event of design infringement
We have explained above the cases in which infringement occurs legally, but if you are the victim of design right infringement, what specific claims can you make?
Injunction (Article 37 of the Design Act)
It is possible to request an injunction against a person who infringes a design right, requesting that the person cease or prevent infringing acts, or destroy infringing goods. The types of injunctions are as follows:
① Request for the cessation of infringing acts
You may require the infringer to cease engaging in such conduct, whether direct or indirect, as described above.
② Request for prevention of acts that may infringe
An act that may constitute an infringement is said to be one in which there are concrete facts that are objectively deemed to be likely to result in an infringement.
3) Request for the destruction of any objects that constitute the infringement, the removal of any equipment used in the infringement, or any other measures necessary to prevent infringement
You can request the destruction of the infringing goods and the removal of the equipment used to manufacture the infringing goods. Note that you cannot request item ③ alone. You can request it together with item ① or ②.
Claims for damages (Article 709 of the Civil Code)
Those who infringe design rights may claim compensation for damages caused by the infringement.
Normally, a claim for damages based on Article 709 of the Civil Code requires extensive proof regarding the infringer's intent or negligence, the amount of damages, etc.
Therefore, the Design Act contains provisions that make it easier to prove claims for damages, as follows:
① Presumption of negligence (Article 40 of the Design Act)
A person who infringes a design right is presumed to have been negligent in causing the infringement.
In order for an infringer to claim that it is not negligent, it must prove this.
In addition, the presumption of negligence does not apply to infringement of design rights involving secret designs.
② Calculation of damages (Article 39, Paragraphs 1 to 3 of the Design Act)
There are special calculation rules for the amount of damages. The amount calculated in accordance with these rules can be regarded as the amount of damages.
Request for credit restoration measures (Article 41 of the Patent Act, as applied mutatis mutandis under Article 106 of the Design Act)
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 sale of inferior products by the infringer, the court may request measures such as publishing an apology advertisement.
Claim for return of unjust enrichment (Civil Code Article 703)
If a design right is infringed, it may be possible to exercise a right to recover unjust enrichment.
Penalties, etc. (Design Act Articles 69, 69-2, and 74)
The Design Law stipulates that anyone who infringes a design right may be punished with imprisonment of up to 10 years or a fine of up to 1000 million yen, or both. Furthermore, anyone who commits indirect infringement may be punished with imprisonment of up to 5 years or a fine of up to 500 million yen, or both. Regarding corporations, if an infringement is committed in the course of its business, in addition to the punishment of the perpetrator, the corporation that is the main body of the business may also be fined, which is known as a double penalty provision.
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We have outlined above the cases in which design right infringement is established under the law and the remedies available for such infringement. As mentioned above, careful judgment is required as to whether or not a design right is infringed.
If you find that another company is selling counterfeit products of yours, or if you are worried that your own products may be infringing on another company's design rights, or if you have suddenly received a warning letter of design right infringement, please contact us first.
We will provide you with expert advice on whether or not infringement may have occurred and what measures you can take. Estimates are free of charge.the Inquiry FormPlease feel free to contact us via the form below.