September [Legal] Newsletter

Directions for design protection outlined by the Design System Subcommittee (July 29)

In recent years, with the advancement of VR and AR technologies, the trading of 3D models, avatars, and virtual spaces (worlds) within the virtual world (metaverse) has become increasingly active.
In response, the Japan Patent Office's Design System Subcommittee announced on July 29th its direction for amending the Design Act with the aim of protecting designs in virtual space.
This will have a significant impact on future intellectual property practices, particularly on the rights acquisition of digital content and the investigation of other companies' rights, so we will explain its core principles.

Expanded scope of protection: Avatars and "worlds" are now also considered for protection under design law.

Previous studies had proposed limiting the scope of protection for image designs to those that imitate the shapes of "articles" or "buildings," which is an extension of the existing design law.
However, in response to strong demands for protection from businesses, a direction was proposed to "not limit the objects represented as images to goods and buildings."

This makes it possible to protect avatars (characters) and the interior design (worlds) of virtual stores with design rights.

Approach to determining similarity: Focusing on the "use and function of the image"

In determining the similarity of designs, if the judgment is based solely on similarity of shape (Option B), the rights may extend to completely different services, excessively increasing the burden of clearance (investigating the rights of other companies).
On the other hand, if we adhere strictly to the conventional use of individual items (Plan A), the effectiveness of countermeasures against imitation as a design right will be significantly impaired.

In response to this challenge, a hybrid interim plan has been proposed that focuses on "what kind of service the image displaying the 3D model serves, and what purpose and function it fulfills" when determining similarity. The aim is to balance the effectiveness of rights with the burden of clearance investigations.

Definition of "implementation activities" and their impact on future practical applications

The scope of the design right's effect (implementation activities) at each stage of "production," "distribution," and "use" has also been clarified.
While taking care not to stifle creators' creative activities, efforts are underway to effectively regulate the distribution (data provision) stage of 3D models on the platform.

Regarding the "acts of implementation," a final review is expected to take place after the frameworks for "protected objects" and "determination of similarity" mentioned above have been finalized.

■ Future prospects and practical considerations

The next meeting, scheduled for around autumn 8, will discuss a more concrete framework for legal revisions, including responses to advancements in generative AI technology. Companies considering business expansion into the metaverse domain, or businesses already producing avatars and 3D objects, are advised to closely monitor future legal revisions and incorporate them into their intellectual property strategies as soon as possible.

Draft Revision of the Judgement Manual: Addition of the operation of "cancellation judgments to prevent confusion" in connection with the consent system and assignment back.

The Japan Patent Office has published a draft revision of its Appeals Manual and begun soliciting public comments to reflect changes in practical application resulting from recent legal amendments. While the revisions cover a wide range of areas, the most noteworthy revision for trademark practice is the revision to "Cancellation Trial for Preventing Confusion Due to Transfer of Similar Trademarks (53-04)."

This revised proposal adds that, even in cases where trademark rights relating to multiple similar registered trademarks come to belong to different parties through the consent system and the "assign-back" method, a request for cancellation to prevent confusion can be made.

Background and additions to the revision

The expansion of the application of the consent system and the "cancellation trial for preventing confusion" associated with assignment back was stipulated in Article 52-2, Paragraph 1 of the Trademark Act by the 2023 amendment to the Trademark Act (Act No. 51 of 2023, effective April 1, 2024). This proposed revision reflects this amendment.

With the introduction of the consent system, even trademarks similar to prior registered trademarks can be registered concurrently if certain requirements are met, such as the absence of a likelihood of confusion. In practice, even before the introduction of the consent system, the "assign-back" method was used, in which the names of the applicant and the rights holder of the prior registered trademark were temporarily matched to resolve the grounds for refusal, and then the trademark rights were transferred (returned).

However, it is essential to have safeguards in place in case one of the trademark owners uses the trademark with the intent of unfair competition after co-registration, causing confusion with the goods or services related to the other's business. Therefore, even if the ownership of similar trademarks is divided using the above method, the revised manual will reiterate that anyone can request a trial to cancel the trademark registration if there has been an act of unfair confusion.

Future schedule

The public comment period for the proposed revision of the Trial Procedure Manual, which includes the above content, will run until September 11, 2026. After the public comment period ends, the Japan Patent Office will take the submitted comments into consideration when drafting the final version, which is scheduled to be revised and implemented in 2026.

The National Art Research Center has begun offering free downloads of public domain works.

The National Center for Art Research (NCAR), an independent administrative institution located in Chiyoda-ku, Tokyo, will implement the following changes to its "Comprehensive Catalog Search System for Collections (Comprehensive Catalog of 5 Museums)" starting May 29, 2026.National Museum of ArtWe have begun offering free downloads of image data of works from our collections that are in the public domain (works whose copyright protection period has expired).

A total of 14,063 image data files from 12,190 works held in the collections of the National Museum of Modern Art, Tokyo; the National Crafts Museum (Kanazawa); the National Museum of Modern Art, Kyoto; the National Museum of Western Art (Tokyo); and the National Museum of Art, Osaka.

This is expected to allow public domain works held by national museums to be used in a wide range of applications, including educational and research settings and creative activities.

Public domain

Under current Japanese copyright law, the protection period for copyrighted works is generally "from the time of creation until 70 years after the author's death." Once the protection period has expired, copyrighted works are considered to be in the "public domain" and become public property. Similarly, if the author relinquishes copyright or if there are no heirs, the work also enters the public domain.

However, it is important to note that moral rights do not expire even if a work is in the public domain.

Newsletter translated into English

Direction of Design Protection Indicated by the Design System Subcommittee (July 29)

In recent years, with the development of VR and AR technologies, transactions of 3D models, avatars, and virtual spaces (worlds) themselves in the metaverse have been increasing.

In response to this, on July 29, the Design System Subcommittee of the Japan Patent Office published information regarding the direction of Design Act amendments aimed at protecting designs in virtual spaces.

Since this will significantly affect future IP practices, particularly the acquisition of rights for digital content and searches of third-party rights, the outline of the publication is explained in this article.

Expansion of the Scope of Protection: Avatars and “Worlds” Also within the Scope of Protection under the Design Act

In conventional discussions, the policy was to limit the scope of protection for graphic image designs to those imitating the shapes of “articles” or “buildings”, which is an extension of the existing Design Act.

However, based on strong requests for protection from business operators, “an approach of not limiting the subjects represented as images to articles and buildings” was proposed.

This will enable the protection of avatars (characters), virtual store interiors (worlds), and other such elements under design rights.

Approach to Similarity Judgment: Focus on the “Use and Function of Images”

In judging the similarity of designs, simply basing the judgment on only the similarity of shape (Proposal B) will extent the right even to completely different services, excessively increasing the burden of clearance (search of third-party rights).

On the other hand, if adhering to the conventional strict unit-of-article use (Proposal A), the effectiveness of measures against imitation under design rights will be significantly impaired.

To address this issue, a hybrid intermediate proposal was newly made whereby similarity is judged by focusing on “what kind of service the image displaying the 3D model is used in, and what kind of use and function it performs.” The aim of this proposal is to strike a balance between the effectiveness of rights and the burden of clearance searches.

Definition of “Acts of Exploitation” and Future Impact on Practice

Progress was also made on organizing the scope to which the effects of design rights extend (acts of exploitation) at each stage of “production”, “distribution”, and “use”.

Adjustments are being made with a focus on effectively regulating the distribution (data provision) stage of 3D models on platforms, while taking care not to discourage the creative activities of creators.

Regarding “acts of exploitation”, final consideration is expected to be carried out after the frameworks for the “scope of protection” and “similarity judgment” mentioned above are organized.

■ Future Outlook and Practical Points to Note

Next time, around the autumn of 2026, a more concrete framework for legal amendments will be discussed, including responses that take into account the development of generative AI technology. For companies considering business expansion into the metaverse domain, or operators already producing avatars and 3D objects, it is recommended to closely monitor trends in future legal amendments and reflect them in their intellectual property strategies at an early stage.

Draft Revision of Manual for Appeal and Trial Proceedings: Operations Added for “Trial for Cancelation to Prevent Confusion” in Connection with Consent System and Assign-back

The Japan Patent Office (JPO) published a draft revision of the Manual for Appeal and Trial Proceedings and began inviting public comments in order to reflect changes in practical operations and other aspects resulting from recent legal amendments. Although this revision covers a wide range of areas, what is particularly noteworthy in trademark practice is the revision of “Trial for Cancelation of Trademark Registration to Prevent Confusion in Connection with Transfer, etc. of Similar Trademarks (53-04)”.

In this draft revision, it has been added that a trial for cancellation to prevent confusion can be requested also in cases where trademark rights relating to multiple similar registered trademarks have come to belong to different persons as a result of the consent system or the “assign-back” method.

Background and Details of the Revision

The expansion of the applicability of the “trial for cancellation to prevent confusion” in connection with the consent system and assign-back was stipulated in Article 52-2, Paragraph 1 of the Trademark Act by the 2023 Trademark Act Amendment (Act No. 51 of 2023, enforced on April 1, 2024). The current draft revision reflects this legal amendment.

With the introduction of the consent system, even a trademark that is similar to a prior registered trademark can now be registered concurrently, provided that certain requirements are met, such as there being no likelihood of confusion. In addition, in practice, even before the introduction of the consent system, the “assign-back” method has been utilized, in which the names of the applicant and the owner of the prior registered trademark are temporarily matched via a change of applicant to resolve the reasons for refusal, and then the trademark right is transferred (returned).

However, collateral measures are essential in cases where, after concurrent registration, either trademark owner uses the trademark for the purpose of unfair competition and causes confusion with the goods or services pertaining to the business of the other owner. Therefore, even if the similar trademarks come to have different owners through the above methods, this manual revision newly indicates, as a practical procedure, that any person may request a trial for cancellation of the trademark registration when an act causes unfair confusion.

Future Schedule

The invitation for public comments on the draft revision of the Manual for Appeal and Trial Proceedings, which includes the details mentioned above, will be held until September 11, 2026. After the end of the public comment period, the JPO will prepare the final draft with reference to the submitted opinions, and the revision is scheduled to be implemented/applied within 2026.

Reference:Japan Patent Office, “Invitation for Public Comments on the Draft Revision of the 'Manual for Appeal and Trial Proceedings'”
https://www.jpo.go.jp/news/public/iken/260810_shinpan.html(Partially excerpted and used by our office on August 18, 2026)

National Center for Art Research Starts Providing Free Downloads of Public Domain Works

The National Center for Art Research (NCAR) (Chiyoda-ku, Tokyo) of the Independent Administrative Institution National Museum of Art started providing free downloads of image data of works whose copyright protection periods have expired (public domain) among the collection of the five national museums of art, via the “Union Catalog of the Collections of the National Art Museums, Japan” search system from May 29, 2026.

A total of 14,063 items of image data for 12,190 works among the collections of the National Museum of Modern Art (Tokyo); the National Crafts Museum (Kanazawa); the National Museum of Modern Art (Kyoto), the National Museum of Western Art (Tokyo); and the National Museum of Art (Osaka) will be provided.

This is expected to facilitate the utilization of public domain works held by the national museums of art in a wide range of applications, such as educational and research settings and creative activities.

Public Domain

Under the current Copyright Act of Japan, the protection period for a work is in principle “from the time of creation until 70 years have passed after the death of the author”. Works for which the protection period has expired are positioned as “public domain” and become public assets. The same applies when the author waives the copyright or when there is no heir, and the work becomes part of the public domain.

However, it should be noted that moral rights of authors do not expire even for public domain works.

Reference:National Center for Art Research, Press Release (May 29, 2026)
https://ncar.artmuseums.go.jp/upload/press/pressrelease_ja_260529.pdf

Union Catalog of Collections of the National Art Museums, Japan (Union Catalog of 5 Museums)
https://search.artmuseums.go.jp/