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Regarding letters in designs
There are many objects in the world that have writing on them.
A lot of effort goes into creating the letters to be attached to objects, making them eye-catching and easy to read.
Let's say you add text to an item with a certain design. The only difference between the item and a previous one is that it now has text on it.
Can such designs be protected?
In addition, while fonts and typefaces may be associated with physical objects, there are also fonts and typefaces that are not associated with physical objects, such as those used on the display screens of digital devices.
Recently, user interfaces that appear on the display screens of digital devices have come to be protected under the Design Act under certain conditions.
Are the fonts and typefaces used on digital devices now themselves protected?
Here we will explain how letters, fonts and typefaces are protected under the Design Act.
Text
There is a famous precedent known as the "Cup Noodles Case" which explains how letters are considered as components of a design.
Currently, the Japan Patent Office's handling of text is clearly written into the Design Law Examination Guidelines, which is thought to be a response to the Cup Noodles incident.
Cup Noodle Incident
Summary of the incident
An individual (plaintiff) has filed a request for invalidation trial against the registered design of the familiar Cup Noodles made by Nissin Food Products Co., Ltd. (defendant) (Design Registration No. 359633, design related article: “Packaging container”), alleging that the design is invalid because a design similar to the shape of the container was publicly known prior to the filing of the application.

The difference between the similar designs that were publicly known prior to the filing of the application and the defendant's registered design is the presence or absence of the words "CUP NOODLE" and the horizontal striped band around them.
The Japan Patent Office determined that the packaging containers at issue contained horizontal striped figures and letters, and that the letters themselves were also creative in their composition and therefore could be considered a pattern.
After the Japan Patent Office ruled that the claim was not granted, the plaintiff filed a lawsuit to set aside the decision in the Tokyo High Court, disputing whether the letters were elements of a design.
Judgment
1. Tokyo High Court decision
Even if something was originally written as letters, if it has become patterned and is considered to have lost its original function as a means of transmitting language, it goes without saying that there is room to recognize its creativity as a pattern.
However, looking at the above-mentioned portion of the design in question, CUP and NOODLE are arranged in the usual manner for successive Roman letters, and the product name representing cup noodles (a type of noodle) is displayed as if it were a trademark, leading those who see it to read it as such, and it is considered quite possible to read it, so it cannot be said that the Roman letters have been transformed into a pattern and lost their original function as characters.
Therefore, the decision of the court to determine that this was within the scope of what can be considered a pattern must be deemed an error.
Tokyo High Court Judgment, March 55, 3 (Showa 25 (Gyo-ke) 53)
Following this ruling, the defendant appealed to the Supreme Court.
2. Supreme Court decision
The findings and judgments of the court below on the points at issue can be approved as legitimate in light of the evidence and explanations presented in the original judgment, and there was no illegality in the process as argued.
Supreme Court decision of October 55, 10 (Showa 16 (Gyo-Tsu) 55)
The Supreme Court found the High Court's decision to be appropriate. As a result, the invalidation trial decision was set aside and Nissin Food Products Co., Ltd.'s registered design was invalidated.
Summary
The High Court and Supreme Court's views can be summarised as follows:
- When letters have become "patterned and have lost their original function as a means of communicating language," they can become a component of a design as a pattern.
Conversely, if it cannot be said that "the characters have become so patterned that they have lost their original function as a means of transmitting language," the character portion cannot be protected under the Design Act.
COKE Case (Packaging Can Case)
The Cup Noodle case was a lawsuit to set aside an invalidation decision, but this is a lawsuit to set aside a rejection decision that was filed after the Cup Noodle case.
Summary of the incident
The Japan Patent Office (defendant) issued a refusal decision on the application design for a "packaging can" on the grounds that there was a similar cited design. The plaintiff argued that the design should be registered because it differed from the cited design in terms of the presence or absence of text, etc., and filed a lawsuit against the refusal decision in the Tokyo High Court.
The cited design contained stylized letters "Coca-Cola" and "COKE," which were not present in the design in question.
Judgment
When letters are present in a design, they cannot be recognized as components of the design, except in cases where the letters are recognized as a pattern.
As for the letters Coca-Cola and COKE in the cited design, although the former is admitted to be considerably stylized as pointed out by the plaintiff, both letters can be sufficiently read as Coca-Cola and Coke, and it cannot be admitted that they have yet to be transformed into patterns. Therefore, the letter portion in the cited design should not be taken up as an element in determining whether the designs are similar, and the fact that the decision in this case did not indicate the presence or absence of letters as a difference cannot be said to be an oversight or misconception of the difference.
Tokyo High Court Judgment, March 2, 3 (Heisei 7 (Gyo Ke) 129)
The letters "Coca-Cola" and "COKE" were clearly legible and therefore could not be considered a pattern, and the lawsuit was dismissed (the plaintiff lost).
Current handling
Reiwa 3 Design Law Examination Guidelines "Part III Chapter XNUMX Industrially Applicable Designs"
Letters and signs appearing on an article, etc. are treated as constituting a design, except for those used solely for the purpose of transmitting information.
<Examples of characters used solely for information transmission>
a. Texts from newspapers and books
b. Characters showing ingredients, instructions for use, etc. in a normal format
Consistent with the content and intent of the rulings in the Cup Noodle and Coke cases, in current practice, stylized letters that are not solely for the purpose of conveying information are generally recognized as elements of a design.
Conversely, if you want to submit a photograph of a design instead of a drawing when filing an application, even if the ingredient information is written on the surface of the item, the ingredient information will not be a component of the design (and will not have any effect on the examination), so there is no need to worry about whether you should edit the photograph to remove the ingredient information.
Fonts and Typefaces
Creating a font or typeface takes a lot of time and effort.
As mentioned above, the current treatment of letters is that they constitute designs, except when they are used exclusively for the purpose of conveying information.
In other words, if letters are applied in the font or typeface on an article such as a packaging container, it may become a component of the design (depending on how the font or typeface is stylized).
Fonts and typefaces used on the screen of a digital device may also be protected under the Design Act (depending on how stylized the font or typeface is) if the characters in that font or typeface are written in an image displayed for operating the digital device or as a result of using the device's functions.
However, fonts and typefaces themselves cannot be said to be linked to an article and are therefore not protected by the Design Act.
Protection under other laws
Under the Design Act, which protects the shape of an article, it is difficult to protect a font or typeface in itself apart from the article. However, protection may be available in other jurisdictions, which we will briefly introduce below.
copyright law
The Copyright Act protects copyrighted works (Article 2, Paragraph 1, Item 1 of the Copyright Act).
There is a famous precedent regarding whether fonts and typefaces themselves are copyrighted works, known as the "Gona U" case.
It is necessary for the typeface to have originality, i.e. distinctive features compared to conventional printing typefaces, and it must have aesthetic qualities that make it an object of artistic appreciation in itself.
Supreme Court decision, September 12, 9 (Heisei 7 (Judgment) 10)
It was determined that a typeface can be protected by copyright law if it "has originality, i.e. distinctive features compared to conventional printing typefaces," and "has aesthetic qualities that can be the subject of aesthetic appreciation in and of themselves."
A font or typeface would likely need to be quite decorative to meet this requirement. Most commonly used fonts and typefaces are unlikely to be copyrightable.
Unfair Competition Prevention Law
There is a case where a dispute was filed under the former Article 2, Paragraph 1, Item 1 of the Unfair Competition Prevention Act (acts causing confusion in product indications, etc.) on the grounds that the typeface of another party was similar to that of one's own company (Tokyo High Court Decision, December 5, 12, Hanrei Jiho No. 24, p. 1505).
The question arose as to whether a typeface constitutes a "good" as defined in Article 2, Paragraph 1, Item 1 of the said law, and the court ruled that a typeface falls within the category of a "good" if its economic value is socially recognized and it is the subject of independent trade.
Because "specific typefaces developed by typeface manufacturers are clearly objects of independent trade as things that have economic value," typefaces were deemed to be "goods." The typefaces at issue in this case were also recognized as being well-known, similar, and likely to be confused, and therefore unfair competition was recognized.
In view of the above, protection of type faces under the Unfair Competition Prevention Act may be subject to either Article 1 or 2 of the same Act. In the case of a type face that is well-known or famous, it may be a good idea to also consider filing a lawsuit under the Unfair Competition Prevention Act.
The same law also has Article 2, Paragraph 1, Item 3, which regulates dead copies. However, due to the definition of "product form" in Article 2, Paragraph 4 of the same law, the product form is now limited to the external and internal shapes of the product, and therefore it is currently difficult to apply Article 2, Paragraph 1, Item 3 of the same law.
Trademark law
Under the Trademark Act, a trademark is defined as "anything that can be recognized by human perception, such as letters, figures, symbols, three-dimensional shapes or colors, or any combination of these, ... (omitted) ..." that is used in connection with goods or services by a person who commercially produces goods or provides services (Article 2, Paragraph 1 of the Trademark Act).
In other words, if you use the characters themselves on products as part of your business, those characters can be considered a "trademark" under the Trademark Act, and it is possible to obtain trademark rights by filing a trademark application and receiving registration.
Fonts and typefaces themselves cannot be said to be used in connection with goods or services, so it is considered difficult to protect them under trademark law.
However, there is a possibility that trademark rights may be acquired for the characters expressed in the font or typeface.
Civil law
Article 709 of the Civil Code, which regulates compensation for damages for tort, states that "A person who intentionally or negligently infringes the rights or legally protected interests of others shall be liable to compensate for the damages caused thereby."
In this case, the unauthorized copying and sale of a typeface can be considered a violation of the "legally protected interests" of the typeface manufacturer.
In fact, there is a court decision (Osaka District Court Judgment, March 3, 8 (Wa) No. 58) that states, "Even if a typeface is not recognized as a copyrighted work, if a truly creative typeface is used in its entirety by another person without permission, it is reasonable to conclude that there is room for protection under the doctrine of tort."
However, in this case, the existence of a tort was denied because "the creative content of the typeface in question is not necessarily clear" and "even if it cannot be denied that the defendant's typeface is similar to the typeface in question, it cannot immediately be concluded that it was a complete misappropriation."
For those in need
For example, do you have any of the following concerns?
- There are letters on the design item. Should these be reflected in the drawings?
- The addition of text makes it different from conventional designs, but is it possible to register it?
-Are letters affixed to an article of a registered design also covered by the scope of protection?
- I own a registered design with letters, but does it have effect on designs that do not have letters?
・I would like the text portion to be protected as well, but I am not sure how to design it.
- In which jurisdiction should you seek to obtain rights to effectively protect your characters?
- I would like to know whether fonts and typefaces can be protected in other jurisdictions.
Our firm not only has patent attorneys and staff who specialize in designs, but also has many patent attorneys and staff who are skilled in various legal fields, such as copyright law, the Unfair Competition Prevention Act, trademark law, and patent law.
As strategic advisers, we help you blend the protections of different jurisdictions to obtain stronger, more astute rights.
If you have any problems, please feel free to contact us.