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Difference between design and trademark
What is the difference between a design and a trademark?
Both design rights and trademark rights are included in the "industrial property rights" administered by the Japan Patent Office.
Design rights are generally thought of as something that protects designs. On the other hand, trademark rights can also be used to protect the design of figures and three-dimensional shapes such as logos and characters.
For example, when the automobile manufacturer Honda's motorized bicycle "Super Cub" was first released, it was registered as a design to protect its novel and original design. Later, the design itself became established as Honda's mark, that is, as a brand, and gained fame, and it was protected and registered as a three-dimensional trademark.
In addition, Otsuka Pharmaceutical has obtained a trademark right (Trademark Registration No. 4739252) for the name of its soft drink "Amin-Value," as well as a design right (Design Registration No. 1208174) for the container design.
In this way, even for the same product or use, the method of protection can be strategically chosen depending on whether the design is positioned as a creation or as a sign.
Below we take a closer look at the differences between designs and trademarks.
Difference between designs and trademarks ①: Purpose of the law
Purpose of the Design Law
The Design Act stipulates that "the purpose of this Act is to encourage the creation of designs by promoting the protection and utilization of designs, thereby contributing to the development of industry" (Article 1 of the Design Act).
There are several possible aspects regarding the relationship between designs and industrial development. Firstly, the application of superior designs to products can lead to increased demand and the rise of industry. Secondly, superior designs can also be technologically superior, and technological progress and industrial development can be directly achieved by the design itself.
Purpose of Trademark Law
The Trademark Act stipulates that "The purpose of protecting trademarks is to maintain the business credibility of those who use trademarks, thereby contributing to the development of industry, and at the same time protecting the interests of consumers" (Article 1 of the Trademark Act).
Those who use a trademark gain goodwill in their business by continuously using the trademark on items related to the provision of goods or services (note), and this goodwill has economic value in the same way as tangible property.
(Note) Under the Trademark Act, a service provided for another person is called a "service."
Therefore, manufacturers or sellers of goods or providers of services must always pay close attention to the trademarks used on their goods or services, and try to prevent acts by dishonest competitors using trademarks that are confusingly similar to their own trademarks, which may cause confusion with their goods or services (for example, acts that dilute the source indication function of a well-known or famous trademark, or damage its credibility, reputation, customer attraction, etc.). The Trademark Act exists as a legal regulation against the dishonest acts of such dishonest competitors, and trademarks are protected through the government's administrative disposition of establishing trademark rights.
In addition, protecting a trademark ensures that goods or services using a certain trademark are always provided from a consistent source. Therefore, maintaining a trade order in which goods or services using a certain trademark are provided from a consistent source protects the interests of consumers and others, and at the same time, by maintaining a trade order for goods and services, contributes to the development of industry.
Difference between designs and trademarks ②: What is protected?
Subject of protection under the Design Law
Article 2, paragraph 1 of the Design Act states:
"Design" means
- The shape, pattern, color, or combination of these (hereinafter referred to as "shape, etc.") of an article (including parts of an article; the same applies below)
- Shape, etc. of a building (including parts of a building; the same applies below)
- or images (including image portions only if they are used to operate the device or are displayed as a result of the device performing its functions. <Omitted>)
and which evokes a sense of beauty through the visual sense.
is defined as
The Design Act protects the original and aesthetically pleasing shapes (designs) of industrial products, etc.
Subjects protected by trademark law
Article 2, paragraph 1 of the Trademark Act states:
"Trademark" means:
"Among those that can be recognized by human perception, characters, figures, symbols, three-dimensional shapes, colors, or combinations of these, sounds, and other items specified by government ordinance"
- (1) Those used by those who commercially manufacture, certify, or transfer goods;
- ② Those that provide services as a business or those that are used by the person providing the services
is defined as
The Trademark Act protects marks (letters, figures, etc.) used to distinguish your own products or services from those of others.
There are various types of trademarks, and with the amendment of the Trademark Act, from April 27, the following new types of trademarks can be registered: motion trademarks, hologram trademarks, trademarks consisting only of color, sound trademarks, and position trademarks.
Differences between designs and trademarks③: Registration requirements
Because trademark registration and design registration are separate systems, there are many differences in the registration requirements. The most important difference in practice is the requirement of "novelty."
In the case of design registration, novelty is a requirement for design registration. In other words, a design must be new in order to be registered. Therefore, although there are certain exceptions, it is not possible to register a design for a product that has already been released. This point should be noted when considering design registration.
On the other hand, in the case of trademark registration, the trademark must be particularly distinctive (distinctive), but there is no requirement for novelty. Therefore, even if you are using a trademark that is not novel, you should be aware that there is a risk that someone else may register a similar trademark later.
Requirements for design registration
The main requirements for registering a design are as follows:
① Industrial applicability (Article 3, Paragraph 1, of the Design Act)
The Design Act is a system established for the purpose of industrial development, so in order to receive a design registration, the design must be capable of industrial use. Specifically, the following applies:
- It must constitute a design.
- The design must be specific
- The invention is capable of industrial application.
② Novelty (Article 3, Paragraph 1 of the Design Act)
In order to obtain a design registration, a design identical or similar to the design of the application must not have been publicly known in Japan or abroad prior to the filing of the application, i.e., the design must be novel. Designs that are publicly known prior to the filing of the application, designs published in publications (design gazettes, books, magazines, newspapers, catalogs, pamphlets, etc.), designs published on the Internet, and designs similar to these designs are not considered to be novel.
If a design has been made public before filing an application, you must go through a procedure to apply for the "Exceptions to loss of novelty" at the same time as filing the application (※The application must be filed within one year of the publication of the design).
③ Lack of creative ability (Article 3, Paragraph 2 of the Design Act)
Granting exclusive rights (design rights) to designs that can be easily created by a person with ordinary knowledge in the field of design (a person skilled in the art) may hinder industrial development. Therefore, designs that can be easily created by a person skilled in the art cannot be registered.
5. Designs that cannot be registered (Article XNUMX of the Design Act)
Designs that are contrary to public order and morals, such as those that use statues of heads of state, national flags, the Imperial chrysanthemum emblem, or coats of arms of foreign royal families, or that are likely to cause confusion with articles, buildings, or images related to the business of others, cannot be registered from the perspective of the public interest.
In addition, designs consisting only of a shape that is necessarily determined in order to ensure the functionality of an article, designs consisting only of a shape that is essential for the intended use of a building, or designs consisting only of an indication that is essential for the intended use of an image are excluded from protection under the Design Act, as they are technical ideas that should be protected under the Patent Act and Utility Model Act.
⑤ One design, one application (Article 7 of the Design Act)
In principle, a design registration application must be filed for each design. In addition, since a design is established for each article, etc., separate applications must be filed for different articles, etc.
As an exception, it may be possible to apply for a single design for two or more items used simultaneously, such as a "set of eating and drinking utensils," as a set of designs for a set of items, and for interior designs consisting of multiple items, buildings, or images, as an interior design.
⑥ Prior application (Article 9 of the Design Act)
If two or more applications are filed for the same or similar design, only the design filed by the earliest applicant (either one of the applications filed on the same date) will be eligible for design registration.
Trademark registration requirements
Trademarks that fall under any of the following categories ① to ③ cannot be registered.
① Those that cannot distinguish your goods or services from those of others (Article 3 of the Trademark Law)
A trademark is used to distinguish your goods or services from those of others. Therefore, the following trademarks cannot be registered:
- Trademarks indicating only the generic name of the goods or services (Article 3, Paragraph 1, Item 1 of the Trademark Act)
- A trademark that is commonly used in relation to goods or services (Article 3, Paragraph 1, Item 2 of the Trademark Act)
- A trademark that merely indicates the place of origin, place of sale, quality, or other characteristics of a product, or the place of provision of a service, quality, or other characteristics (Article 3, Paragraph 1, Item 3 of the Trademark Act)
- Trademarks showing only a common surname or name (Article 3, Paragraph 1, Item 4 of the Trademark Act)
- A trademark consisting of only a very simple and commonplace mark (Article 3, Paragraph 1, Item 5 of the Trademark Law)
- A trademark that cannot be used to identify goods or services related to any other person's business (Article 3, Paragraph 1, Item 6 of the Trademark Act)
② Anything that is confusingly similar to the mark of a public institution or is otherwise contrary to the public interest
A trademark that is confusingly similar to a sign used for public purposes or that is likely to harm the interests of consumers cannot be registered.
3) Anything that is confusingly similar to another person's registered trademark, well-known trademark, etc.
A trademark used by another person or a trademark that is confusingly similar to another person's name or title cannot be registered.
Difference between designs and trademarks ④: Duration
Duration of design right
The duration of a design right is 25 years from the date of application for design registration (Article 21 of the Design Act), and the right cannot be renewed.
Even if it is the same industrial product, if the design is novel and cannot be easily created, the design system aims to protect the creation of such designs. However, even if a design is novel when it is first created, its novelty fades over time, and so the term of the design right expires 25 years from the date of application for design registration.
Duration of trademark rights
The duration of a trademark right is 10 years from the date of registration (Trademark Act, Article 19). However, since the purpose of a trademark is to protect the trust accumulated through the business activities of a business operator, the trademark right will remain in existence as long as the trademark continues to be used, and the 20-year duration can be renewed any number of times by applying for renewal registration of the duration (Trademark Act, Article 10), making it possible for the trademark right to exist semi-permanently.
Should characters and logos be protected as designs or trademarks?
Taking characters as an example, if you use a certain character as a mascot character for your company, it would be a good idea to trademark the character by listing the products and services offered by that company as the designated goods and services.
On the other hand, if you are manufacturing and selling a doll of a certain character and want to protect the design of that doll, it is considered appropriate to register the design of the article as a "doll." Since "novelty" is emphasized in the examination of design rights, it is preferable to register the product before it goes on sale, if possible.
Depending on the character, it may be possible to protect it with both a design right and a trademark right (registering the three-dimensional shape of the doll as a "three-dimensional trademark"). If you want to protect your character rights more firmly, consider filing for both.
If you are considering trademark or design registration, please feel free to contact us for a cost estimate. We will provide you with reliable assistance in protecting your distinctive designs and the brand power and value of your valuable products.