table of contents
How to utilize designs
How to use (utilize) designs
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).
The creation of a design is an act of seeking to create a more beautiful and user-friendly appearance for an article, building, or image (hereinafter referred to as "article, etc."). However, since the appearance of an article, etc. can be understood by sight and can be easily imitated even by others, the spread of designs that imitate originals can cause hindrance to the healthy development of industry.
Therefore, the purpose of the design system is to encourage the creation of designs and contribute to the development of industry by protecting newly created designs as the property of their creators and facilitating their utilization.
This article will introduce how to utilize the design system (design rights), as well as explain how to file design applications according to your needs and how to utilize the international design registration system.
What is a design under the Design Act? (Objects protected by design rights)
The designs of all products, from mobile information terminals and packaging bottles to electric washing machines, rings, chairs, passenger cars, and instant noodles, are protected as "designs" by design rights.
Regarding the “design” that is the subject of the protection of this design right, Article 2, Paragraph 1 of the Design Act states:
In this law, "design" means
- The shape, pattern, color, or combination of these (hereinafter referred to as "shape, etc.") of an article (including a part 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.
This refers to.
is defined as
In a partial amendment in 10, "parts of an article" was newly added as a component of a design, making partial designs (such as the shape of a part of an article) eligible for design registration.
In addition, a partial amendment to the Design Act in 1 expanded the scope of protection to newly include images that are not recorded or displayed on objects, and the exterior and interior designs of buildings.
For details on the newly protected designs, please see the following article:
· "Use of image design'
· "Protection of architecture and interior design'
How to utilize the design system (design rights)
Many people today recognize the importance of strategically using design in business to increase the value of products, services, and companies. However, having the perspective of strategically protecting and utilizing designs that have been created with a lot of time, money, and effort through intellectual property rights is also essential to leading a business to success.
The most typical effects expected from a design right are, first and foremost, the effect of preventing others from imitating the design and eliminating counterfeits.
In reality, in addition to these effects, users of the design system in various positions are trying to utilize the design system in the hope of taking advantage of the diverse effects of design rights in accordance with their own business and other objectives.
The main ways to utilize the design system, which plays a central role in design protection, are as follows:
① Restricting other companies
・Issuance of design gazette
- Publicizing registered designs
② Elimination of counterfeit and similar products
·caveat
・Import suspension at customs
- Dispute resolution in court
3) Gaining an advantage in foreign examinations and disputes
・Dispute resolution in non-examination countries
・Appeal to the government office that is delaying the examination
④Improved reliability
・Proof of originality
・Appealing design skills
⑤ Expansion of business opportunities
・Creating licensing opportunities
・Appeal to investors, financial institutions, etc.
⑥Improvement of creative motivation
・Proof of true creator
・Company rewards for creators
⑦ Complementary technology protection
- Protection of forms that are not dependent on patentability
- Parts form protection
・Protection until patent rights are obtained
・Protection after patent rights expire
⑧ Brand creation
- Protection of continuous use
- Common forms of protection across products
・Protection of promotional items
・Protection until obtaining a three-dimensional trademark
Please also refer to the following page for the advantages and disadvantages of design registration.
· "What are the benefits of design registration?'
How to file design applications according to your needs
The design system offers a variety of methods for filing design applications to meet various needs, including designs for which you wish to obtain a design registration for part of an article, etc.; sets of designs to protect the design of sets such as knives, forks and spoons used for eating and drinking; interior designs to protect the interior design of an interior consisting of multiple articles, buildings or images; and associated designs to protect the design of products, etc. based on a consistent design concept.
In addition, for designs that you wish to keep secret for business strategy reasons, there is a secret design system that allows you to keep the contents of rights such as drawings secret for a certain period of time.
A design for which a design registration is sought for a part of an article, etc. (Article 2, Paragraph 1 of the Design Act, in parentheses)
Traditionally, "articles" were considered to be tangible objects circulating in the market, and therefore, at the time the current law was enacted in 34, parts of articles that could not be traded independently were not considered "articles" under the Design Law, and designs relating to parts of articles were not subject to protection. However, with an increase in clever imitations that incorporate original and distinctive parts while avoiding infringement of the design as a whole, it became impossible to adequately protect investments, and therefore, a partial revision of the Design Law in 10 made designs relating to parts of articles subject to protection.
A design registration for a part of an article is effective when you want to prevent a third party from imitating a part that is physically inseparable from the whole of the article and that is original and distinctive (if it can be physically separated and is an independent subject of trade in the market, it is possible to register it as a design for the whole of the parts and accessories).
It can also be used in cases where the concrete creation of a part has already been completed, but the whole has not yet been completed, and that part can be filed as the "part to be registered as a design" and rights obtained.
In addition, in the case of a design for which a design registration is sought for a portion of an article, etc., it is necessary to express the portion for which the design registration is sought in relation to the entire article, etc. The method for doing so is to specify the portion for which the design registration is sought by drawing the "portion for which the design registration is sought" with a solid line and the "other portions" with a dashed line, etc.
Design of a set of articles (Article 8 of the Design Act)
When a set of two or more articles, which are generally used at the same time according to accepted social standards, is composed of designs of any of the 43 items specified in the Appendix to the Enforcement Regulations of the Design Act (e.g. a set of eating and drinking utensils, a set of furniture, etc.) and has a unified look as a whole, it is eligible for a design registration as a set of designs.
In addition, it is also possible to obtain a design registration for the design portion of the assembly.
Interior design (Article 8-2 of the Design Act)
Interior designs consisting of multiple items (desks, chairs, etc.), buildings (decorations on walls, floors, etc.), and images can also be registered as interior designs if there is a sense of unity throughout the interior.
In addition, it is also possible to obtain a design registration for the interior design portion.
Related designs (Article 10 of the Design Act)
The design system grants exclusive rights to the creation of designs for a certain period of time, and therefore does not allow two or more overlapping rights for one creation (Article 9 of the Design Act). However, companies are increasingly making efforts to build their own brands by evolving the design of their products over the long term based on a consistent design concept and increasing the added value of their products.
The related designs system is a system in which similar designs can be registered as related designs if they are applied for by the same applicant and certain requirements are met. Designs registered as related designs can each be registered independently.
From April 2, 4, the filing period for related designs has been extended to 1 years before the date of application for the principal design. In addition, it is now possible to register designs that are similar only to related designs as new principal designs. However, the filing period for such related designs will be extended to 10 years before the date of application for the first principal design.
For more information on the related designs system, please also see the following page.
· "Utilizing the related design system'
Secret design (Article 14 of the Design Act)
The secret design system allows the contents of a registered design to be kept secret for up to three years from the date of registration.
Normally, when a design application is registered, the design is made public in the Design Gazette, but if you use the secret design system, the drawings showing the contents of the design, as well as information such as the article related to the design and the design classification, will not be published in the Design Gazette. After the secrecy period specified by the applicant has elapsed, a new Design Gazette will be issued containing the contents of the application, drawings, etc.
A design has the characteristic that once it is disclosed, its contents can be understood at a glance and it is easily imitated. Therefore, by using the secret design system to prevent others from seeing one's own designs for a certain period of time, it is possible to carry out business activities to an advantage, such as adjusting product development schedules and the timing of new product announcements.
In addition, procedures for keeping a design secret can be taken not only at the time of filing an application for design registration, but also at the time of payment of the first year's registration fee. In addition, a request can be made to extend or shorten the period of confidentiality up to a maximum of three years.
In addition, design rights relating to secret designs may also be subject to civil and criminal remedies for infringement, but are subject to the following restrictions:
① When exercising the right to seek an injunction, a prerequisite is to issue a warning by presenting a written document that lists the matters published in the public gazette and is certified by the Commissioner of the Japan Patent Office (Article 37, Paragraph 3 of the Design Act).
② When claiming damages (Article 709 of the Civil Code), negligence is not presumed and, as a general rule, the right holder must prove the negligence of the infringer.
Utilizing the international design registration system
With the globalization of the economy, an increasing number of Japanese companies are expanding their business overseas and relocating their manufacturing bases overseas, and the number of cases where they are victim of counterfeiting overseas is also increasing. In order to reduce such risks, it is important to obtain design rights in each country and protect product designs.
On the other hand, the effect of intellectual property rights is limited to the territory of the country in which the rights are acquired, and does not extend to foreign countries, due to the principle of territoriality. In order to protect intellectual property overseas, it is necessary, in principle, to go through the procedures for acquiring rights in each country.
By utilizing the international design registration system based on the Geneva Act of the Hague Agreement, you can obtain the same effect as if you were to file simultaneously in multiple countries (contracting states) with one language and payment procedure to the International Bureau of the World Intellectual Property Organization (WIPO), making it easier to obtain design rights than if you filed in each country (contracting states of the Geneva Act of the Hague Agreement) individually, and making it possible to eliminate counterfeit products more economically and efficiently. By appropriately eliminating counterfeit products both domestically and internationally and creating an environment for stable business development, the scope of corporate activities and business opportunities will also expand.
<Major benefits of the international design registration system>
1) Simplified application procedures (no need to prepare application documents for each country, filing multiple designs at once)
2) Cost reduction (no need to pay for appointing an agent or for translation)
3) Simplified rights management (rights for international registrations will be managed centrally by WIPO)
④ Rapid review (the time when you will know whether or not your application will be accepted is clear)
It should be noted that while the international design registration system makes it possible to obtain design registration through a single procedure, costs may not be reduced if the number of countries in which you wish to obtain rights is small.
Please also see the following page for more information on the international design registration system.
· "The Hague International Application'
If you are considering registering a design, please feel free to contact us for a cost estimate.
We can provide reliable assistance in protecting your distinctive designs, as well as protecting the brand power and value of your valuable products.