Major Revision of the Design Law - Towards the Future of Design Management -

April 8, 2020

The "Act to partially revise the Patent Act, etc.", which was approved by the Cabinet on March 31, 3, was passed and enacted on May 1, 5, and promulgated as Law No. 10 on May 5. Of these, the amendments to the Design Act aim to expand design protection under the Design Act and improve procedures in order to promote "design management" (management that utilizes design as an important management resource to improve brand power and innovation power) proposed by the Japan Patent Office. Below, we will introduce the main contents of the revised Design Act.

*Items 1 to 5 and 8 below came into effect on April 1, 2020, and items 6 to 8 came into effect on April 1, 2021.

1. Expansion of scope of protection for image designs

(1) The following images are now protected:However, this is limited to images used for operating the device (operation images) or images displayed as a result of the device performing its function (display images). Previously, the registration requirements included "images recorded on the article" and "images displayed on the article (or on the device used simultaneously with the article)", but these requirements have been abolished,Designs that are images separated from the article are protectedHowever, decorative images and content such as wallpapers do not directly increase the added value of devices, etc., and so continue to be exempt from protection.

 

*Please note that attention must be paid to the application format for image designs.

(2) The act of uploading an image to a server and the transfer of a recording medium or a device incorporating an image related to a software design including an image via a network are also implementation acts.

*The transfer of a recording medium on which an image relating to a design is recorded or a device incorporating such an image is also considered an implementation act.

Background of the revision

Under the old law, the protection of image designs was strictly regulated compared to Europe and the United States, requiring that the image be recorded on an article or displayed on an article, and icons, wallpapers, images not recorded on an article, etc., which can be registered in Europe and the United States, could not be registered. As a result, investments in image designs such as GUIs, which have become increasingly important in recent years, cannot be fully recovered, and there is no incentive for Japanese companies to invest in design, and Japanese companies are losing out to European and American companies that invest heavily in design, resulting in a negative spiral in which they are unable to maintain their international competitiveness. In addition, acts of design infringement were limited to the manufacture, use, transfer, lease, export, and import of articles related to the design. It was pointed out that under this law, the act of imitating software containing images and providing it on the Internet does not constitute an infringement, so the protection of GUIs is insufficient.

Example of GUI registration in Europe
Registration number: 004634517-0003 (Apple Inc.)

Learn more about using image designClick here for the guidelines.please look at

2. Protection of spatial design

The exterior and interior designs of buildings are now subject to new protection under the Design Law.

*Regarding interior designs, registration will be permitted if the interior as a whole creates a unified aesthetic impression.

*As a result of the expansion of protection, the acts of constructing, using, transferring or leasing, or offering to transfer or lease, a building to which a design pertains have been added to the acts of working a design.

Exterior and interior design of buildings

What is the subject of architectural design protection?

Interior design protection

Background of the revision

Under the old law, protection was limited to "tangible movable property," and buildings (real estate) were not protected.
In addition, the interior designs of stores, offices, etc. did not meet the requirements for a single design application and could not be registered.

There was a problem that protection in Japan was not sufficient compared to Europe and the United States, where the protection covers the interiors of buildings and stores.
Furthermore, as you are aware, in recent years distinctive spatial design has become an element of brand differentiation.

In Japan, too, the Tokyo District Court issued a provisional injunction to stop the use of a store building based on the Unfair Competition Prevention Act on the grounds that the exterior appearance of the store was similar to that of Komeda Coffee (the case was ultimately settled), and there was a growing need for protection.

(Heisei 27 (Yo) No. 22042)

For more information on the protection of architecture and interior designs,Click here for the guidelines.please look at

3. Expansion of the related designs system

The following legal changes have been made:

① The period during which a related design application can be filed has been extended from “before the publication date of the principal design” to “before 10 years have passed since the filing date of the basic design.”

②Registration of related designs that are similar to related designs only will be permitted.

③ The duration of a related design is 25 years from the filing date of the basic design (the earliest principal design in the group).

*However, if the principal design has already lapsed, been invalidated or abandoned at the time of the registration of the related design, or if an exclusive license has been granted for the principal design, the registration of the related design will not be permitted.

* In the case of a design (related design B) that is similar only to a design (related design A) that is similar to the basic design, even if the basic design has disappeared, registration will be allowed as long as the related design A exists.

Background of the revision

Reflecting the reality that additional designs are determined based on market sales, the amendment in 18 extended the period during which related designs could be filed before the publication date of the main design. However, additional designs created after the publication date were still not protected.

In recent years, the method of designing multiple product groups, such as automobiles and smartphones, based on a consistent design concept has become mainstream. In order to ensure that designs based on such methods can receive sufficient protection in Japan, the JPO has relaxed restrictions on related design applications.

In addition, under the old system, designs that were similar only to related designs could not be protected, and could only be interpreted as being protected within the scope of similarity of the related designs.

The amendment is expected to expand protection to such designs that are created retroactively.

However, there were some concerns, such as the effective extension of the protection period for a series of designs, so measures were taken to avoid overprotecting design owners by aligning the duration of related designs with the basic design.

*Please note that in the case of related designs whose basic designs are designs applied for before the enforcement of the revised law, the expiration date of the basic design (20 years from the date of registration) is different from the expiration date of the related design (25 years from the date of application of the basic design).

For more information on utilizing the related designs system,Click here for the guidelines.please look at

4. Changes to the duration of design rights

The duration of a design right has been changed from "20 years from the date of registration" to "25 years from the date of application."

Background of the revision

The amendment in 18 extended the duration of design rights from 15 years to 20 years, but in recent years, the number of design registrations that have been maintained for 15 years has been increasing, and in 28, the rate of designs still in their 15th year was 22%. Excellent designs, known as long-life designs, are a source of added value over the long term and an important resource for building brand value. In Europe, where design-based brand management is advanced, the duration is set at 25 years at the longest, and in Japan the duration has also been extended.

5. Design of Composition

The design of a set of objects was a system for protecting the unified aesthetics of the entire set, so partial designs were not recognized as being inconsistent with the purpose of the system. However, with this revision,Partial designs are also permittedIt began.

　　　　　　　　　　　　　　　　　

In line with this amendment, Schedule 2 of the Enforcement Regulations of the Design Act, which defines articles related to group designs, has been revised to add "a set of buildings" and "a set of images," as well as to expand the scope of protection.

Example: A set of golf clubs ⇒ A set of sports equipment
　　 A set of drums ⇒ A set of musical instruments

6. Introduction of Multiple Designs in One Application　Effective from April 1, 2021

Due to a change in the law, it is now possible to file multiple designs at the same time.

In a multiple design application, up to 100 designs can be included in one application, with no restrictions on whether the designs must be in the same Locarno classification or how similar they must be.

Therefore, up to 100 non-similar designs can be freely filed at once. However, each design will be examined and a design right will be issued for each design, as shown in ① and ② below.

① The principle that one design generates one design right will be maintained

② Substantive examination and design registration will be conducted on a design-by-design basis, as under the current system.

Background of the revision

Under the old system, it was not permitted to include multiple designs in one application, except for designs for sets of objects. In contrast, major countries (the United States, Europe, China, and Korea) allow multiple designs in a single application, although the requirements differ. In addition, the Hague Agreement, of which Japan is a member, also allows multiple designs in a single application. Therefore, the system is being reviewed from the perspective of improving user convenience.

7. Revision of the Item Classification Table　Effective from April 1, 2021

Applications that do not state a classification equivalent to the classification of goods listed in the Article Classification Table (Appendix 1 of the Design Law Enforcement Regulations) prescribed by ministerial ordinance were subject to reasons for refusal. In this regard, a legal amendment was made to not immediately state that this is a reason for refusal, as it would lead to delays in the granting of rights. The classification table will be abolished, but the Commissioner of the Japan Patent Office plans to publish notices similar to the Article Classification Table as a reference for users.

In practice, an application is deemed appropriate when the use and function of the article, etc. to which the design pertains can be clearly recognized from the other descriptions in the application, including the “Article to which the design pertains” section, and from the drawings.

8. Expansion of procedural relief provisions　Effective from April 1, 2021

The Amendment Act makes the following three procedural remedies available by applying the Patent Act mutatis mutandis:

① Extension of the designated period upon request after the designated period has elapsed
If it is within two months after the expiration of the period specified in the amendment order or notice of reasons for refusal, a two-month extension can be requested (only once per procedure). In addition, in accordance with this, domestic residents and overseas residents can request a two-month extension within the specified period. Please note that if you request an extension within the specified period, you will not be allowed to request an extension again within the specified period or after the specified period has elapsed.

② Application for design registration with a priority claim after the priority period has expired (a valid reason is required)
If you were unable to file a design registration application within the priority period (six months from the earlier application) and have a valid reason, you may be able to claim priority for an application filed within two months after the priority period has expired. However, a valid reason must be provided, and in principle, a foreseeable reason will not be granted.

3) Submission of priority documents after receiving a notice of non-submission of priority documents
If the priority certificate is not submitted within the submission period (three months from the date of application), the JPO will issue a notice to alert the applicant. Applicants who receive the notice can submit a certificate or a document stating the DAS code within two months from the date of the notice.

The expanded relief provisions will apply to design applications for which the designation period, priority period and submission period for priority documents expire on or after April 2021, 4.

9. Others (Indirect Infringement Provisions)

Due to the revision of the law, acts such as manufacturing, transferring, importing, and providing of parts and programs (non-exclusive items) that constitute finished products that infringe design rights can now be regulated in cases where the act is done in bad faith (knowing that the infringement is involved). This is in line with the already-enforced Patent Law Article 101, Paragraphs 2 and 5.

Background of the revision

Under the previous indirect infringement regulations, only exclusive products could be regulated. However, in recent years, import methods have become more sophisticated, such as dividing a finished product that infringes a design right into its component parts (non-exclusive products) and importing them. For this reason, there has been an increasing need for revision.

(Reference) Document 6 of the 1th Design System Subcommittee of the Japan Patent Office
　　　　February 31 Industrial Structure Council Intellectual Property Subcommittee Design System Subcommittee Materials