table of contents
Use of image design
1. Expansion of scope of protection for image designs
Under the previous Design Act, image designs were only protected if they were images recorded on the device, i.e. the article itself, such as the operation screen of a device, and, with some exceptions, were images displayed on the article itself. However, in recent years, images stored in the cloud and provided via a network, or images displayed on walls or the human body, have become common. Many of these images require a large amount of development investment, and in order to make it easier for companies to recover their development investment and strengthen their market competitiveness, the definition of design has been expanded to include image designs that do not require integration with the article as a new object of protection.
2. Types of image designs and registration requirements
(1) Registration requirements
The revised law also requires the use of operation images (see below).A) Display image (see below)B) is required. Decorative images such as wallpapers, and content images such as movies and games are not yet permitted to be registered.
(2) Two ways of protection
① How to obtain protection as an image design (the image itself separate from the article)
*From the Japan Patent Office “Design Examination Standards and Examination Practices - Responding to the 2019 Design Law Amendments”
Application and drawings
Item name: State the purpose of the image by stating "Image for...".
Drawings: [Image drawings] only. As the images are separate from the item, six-sided drawings of the item are not necessary.
② Designs including images as part of an article or building (designs integrated with the article)
*From the Japan Patent Office “Design Examination Standards and Examination Practices - Responding to the 2019 Design Law Amendments”
Application and drawings
Name of item: Enter the name of the item or the purpose of the building.
Drawings: A six-sided drawing showing the shape of the item or building is required.
3. Changing images
(1) Requirements
Even if there are multiple images, if they are images for the same function, they will be recognized as a unique design as changing images.
1) When the image is deemed to change
The following examples qualify as changing images because all of the images are for a music playing function.
*From the Japan Patent Office “Design Examination Standards and Examination Practices - Responding to the 2019 Design Law Amendments”
② If the image is not recognized as changing
In the example below, the image on the left is for a music playback function, and the image on the right is for a route guidance function. Since the functions are not the same, they are not recognized as changing images.
*From the Japan Patent Office “Design Examination Standards and Examination Practices - Responding to the 2019 Design Law Amendments”
4. Image design set
(1) Requirements
Used at the same time, these elements create a unified whole piece.
(2) Types of Braids
There are three possible combinations:
① A set of multiple images
② A set consisting of an item and an image
3) A set of buildings and images
*The figure is from the Japan Patent Office's "Design Examination Guidelines and Examination Operations - In Response to the Revision of the Design Law in 2019"
5. Judging whether image designs are similar
When determining whether image designs (the images themselves, separate from the article) are similar to each other, the use and function of the article on which they are displayed are not taken into consideration. Therefore, while there is a possibility that the scope of rights may be recognized broadly, there is also a high possibility that image designs with unexpected uses will be rejected as references.
In the following examples, even if designs appear to be dissimilar when considering the use and function of the goods, such as an "image for selecting a product" and an "image for selecting a conference room," and an "image for entering a password" and an "image for entering a phone number," they will be determined to be similar as a "selection image" and an "input image."
It is necessary to carefully consider in advance whether it would be more advantageous to file an application for an image design (the image itself separate from the article) or a design including an image as part of an article or building (a design integrated with the article).
6. Strategic application of image design
Even if a product cannot win in the market with high quality or functionality alone, if it has an original and excellent image design, it can often attract customers and create new market value. Such excellent designs need protection through design rights because there is a risk that they will be copied by competitors as soon as they are sold.
In addition, there are some inventions that are difficult to obtain rights to as patents because they are not recognized as inventive, but it may be possible to obtain rights to the distinctive image parts of the product as designs that protect the aesthetic appearance of the item.In addition, when the quality and performance of an invention are closely related to the image displayed on a screen, it is possible to provide overlapping and multifaceted protection through patent rights and design rights.
In this way, by protecting image designs with design rights in addition to patent rights, it is possible to differentiate your products from those of your competitors and gain an advantageous position in the marketplace.
7. Conclusion
Due to the expansion of the scope of protection for image designs, it is expected that companies that have not previously been subject to the Design Law will obtain design rights for image designs. Therefore, if you do not take measures against design rights, you may suddenly be sued by other companies for infringing on the design rights of your image designs. From now on, you will need to take some measures against the design rights of other companies' image designs, including obtaining design rights for your own image designs. Our firm will provide you with accurate advice to protect your valuable intellectual property. Please feel free to consult us if you are considering filing a design application for an image design.