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The subject of protection under the Design Act is the design of products, the exterior and interior of buildings, and images. Although these designs are primarily protected by the Design Act, they may also be protected under other intellectual property laws (Patent Act, Utility Model Act, Trademark Act, Copyright Act, Unfair Competition Prevention Act) in ways not covered by the Design Act (see "Laws that Protect Designs" below).
By understanding that there are means of protection for designs under laws other than the Design Act, you can determine which law is best to use to protect your design.
- Laws that protect design -
Creative aspects:
- Patent law
- utility model law
- Design law
- copyright law
Identification aspects:
- Trademark law
- Unfair Competition Prevention Law
Aesthetic aspect:
- Design law
- copyright law
Design law
The designs of products, the exteriors and interiors of buildings, and images are primarily protected under the Design Act. So what exactly are the "designs" that are the subject of protection under the Design Act?Article 2, paragraph 1 of the Design Act defines a "design" as "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), the shape, etc. of a building (including a part of a building), or an image (including parts of an image, limited to those used for the operation of a device or those displayed as a result of a device performing its function), which evokes a sense of beauty through the eye."In other words, in order to constitute a design, all of the following requirements must be met.
- The photograph must be recognized as an object, building, or image (hereinafter referred to as "object, etc.").
- The shape of the article itself (hereinafter referred to as "shape")
- Appealing to the visual sense (hereafter referred to as "visuality")
- Aesthetics: A product that evokes a sense of beauty through the eyes (hereafter referred to as aesthetics)
1. Equivalence of goods
The items covered by the Design Law are "Among tangible objects, movable property that is circulated in the market" It is stated that.
※About tangible objects
Even if a thing is tangible, if it does not have an inherent form, such as a gas or liquid, or if it is an aggregate of powder or granules and does not have a specific shape, it is not recognized as an item.
However, even if it is an aggregate of powder or granular material, if it has a fixed form it will be recognized as an article.
- (Example) Sugar cube
※About real estate
Even if something becomes real property when it is used, if it is produced industrially and treated as movable property when sold, it will be recognized as an item.
- (Examples) "Gate", "Assembled Bungalow"
* Regarding some items
Any part of an article which cannot be separated without destroying the article is not considered an article.
- (Example) "The heel of your socks"
However, parts that constitute part of a finished product are recognized as articles.
- (Example) "Bicycle saddle"
A building that is subject to the Design Act is defined as "a fixed object on the land and an artificial structure, including civil engineering structures."
*About buildings
With regard to buildings, they have become newly eligible for protection as a result of the major revision of the Design Act in 2019.
Images that are subject to the Design Act are defined as either "(i) the image itself separate from the article, or (ii) an image as part of an article or building."
※About the images
Prior to the amendments to the Design Act in 2019, images used to operate an article were considered to be designs of parts of an article, and only designs that included images as part of an "article" were eligible for protection.
2. Morphology
There are four possible types of shape: shape only, a combination of shape and pattern, a combination of shape and color, and a combination of shape and pattern/color. In addition, the shape must be derived from the characteristics or properties of the product itself, so a caffe latte in a cup with a pattern drawn on the surface using foamed milk and coffee cannot be registered as a "cup beverage."
In addition, even if a shape is intended for sale, if the shape can be maintained, it will be treated as the shape of the article itself.
3. Visibility
A design must appeal to the visual sense. Regarding whether a design that cannot be recognized by the naked eye meets this requirement, the Supreme Court has determined that if it is common to observe the shape of the product by magnifying it with a magnifying glass or by publishing an enlarged photograph in a catalogue when trading, then the design meets this requirement even if it cannot be recognized by the naked eye.
4. Aesthetics
It is sufficient that the design evokes some kind of aesthetic feeling, without requiring lofty beauty like a work of art. Examples of designs that do not evoke an aesthetic feeling include (a) designs that are primarily intended for functionality or effect and evoke little aesthetic feeling, and (b) designs that lack cohesion as a design and give a sense of clutter with little aesthetic feeling, but in practice these requirements rarely cause problems.
Patent Law, Utility Model Law
The Patent Act and the Utility Model Act are laws that protect "inventions" and "devices," respectively. Generally speaking, the protection of inventions and devices (the creation of technical ideas that utilize the laws of nature) and the protection of the exterior design of a product (the creation of an aesthetic appearance) are not easily connected, but if this exterior design falls under the category of an "invention of an object" under the Patent Act or an "invention relating to the shape of an article" under the Utility Model Act, and furthermore meets the requirements for each protection, it will be protected under both the Patent Act and the Utility Model Act.
Examples of overlapping protection under the Design Act and the Patent Act
In the case of a product display case, if the exterior design is completely new and at the same time has a never-before-seen function of making it easier to pull products out towards the front, it may be possible to obtain design rights and patent rights, as in the example below.
(Amix Co., Ltd. Design Registration No. 1041955-1)
(Amix Co., Ltd. Patent Registration No. 3022544)
Examples where protection under the Design Act is not granted but protection under the Patent Act is granted
Designs that consist only of shapes that are essential to ensure the functionality of an article cannot be protected by the Design Act (Article 5, Paragraph 3 of the Design Act), so it is necessary to choose protection under the Patent Act or the Utility Model Act.
For example, it is not possible to obtain a design registration for only the inner part of a parabolic antenna, which consists only of the shape essential to ensuring the function of the parabolic antenna as a reflector.
"Reflector for satellite broadcast receiving antenna"
(Criteria for selection)
Trademark law
The Trademark Act is a law that protects "trademarks," or "marks used by businesses in connection with their goods or services to distinguish their own goods or services from those of others."
This trademark also includes trademarks that consist of three-dimensional shapes, called three-dimensional trademarks. The exterior design of the product isIf it is a three-dimensional trademark and meets the requirements for protection under the Trademark Law, it will be protected under the Trademark Law.However, it is stipulated that a trademark consisting only of a symbol that displays a three-dimensional trademark in a commonly used manner cannot be registered (Article 3, Paragraph 1, Item 3 of the Trademark Act), and therefore it is generally difficult to obtain a three-dimensional trademark registration.
However, a trademark can be registered in the following cases ① or ②.
① Even if the mark displays the exterior design of a product in a commonly used manner, it has acquired distinctiveness through use.
That 1
(The Coca-Cola Company Trademark Registration 5225619)
That 2
(Honda Motor Co., Ltd. Trademark Registration No. 5674666)
② When the three-dimensional shape itself is very distinctive and the shape itself is found to have the ability to distinguish one's own goods or services from those of others.
(CHOCOLATERIE GUYLIAN NV International Registration 0803104 *Expired)
In addition to the above three-dimensional trademarks, there are designsIf a pattern meets the requirements for protection under the Trademark Law, it will also be protected by the Trademark Law.For example, if the design on the surface of a branded bag is distinctive, it may be protected under trademark law.
(Louis Vuitton Marche Trademark Registration No. 2234425)
(Louis Vuitton Marche Trademark Registration No. 2234426)
(Louis Vuitton Marche Design Registration No. 1531569)
copyright law
In the Copyright Act, Article 10, Paragraph 1, Item 4, artistic works are stipulated as one type of copyrighted work. These artistic works are divided into pure art, such as paintings and ceramics, which are intended solely as objects of artistic appreciation, and applied art, which is intended for practical use, and the exterior design of a product is classified as the latter, applied art. In principle, applied art is not protected under the Copyright Act, in order to distinguish it from the Design Act, which has the same purpose of protecting creative works.
However, not all exterior designs are exempt from copyright protection, and anything that can be considered to be an object of artistic appreciation to the same extent as pure art is considered to be an object of artistic appreciation and is therefore protected under copyright law. This artistic quality is judged based on the standards of ordinary people with a certain aesthetic sense, and the product must be an object of aesthetic appreciation independently of its practicality and functionality.
Unfair Competition Prevention Law
Article 2, paragraph 1, item 1 of the Unfair Competition Prevention Act stipulates that "the use of a product or other indication that is identical or similar to a product or other indication that is widely recognized among consumers as the product or other indication of another person (meaning a name, trade name, trademark, mark, product container or packaging related to a person's business, or any other indication of a product or business; the same applies below) or the transfer, delivery, display for transfer or delivery, export, import, or provision through an electric telecommunication line of a product using such a product or other indication" (an act of causing confusion). In other words, the act of using a product or other indication that is identical or similar to a well-known product or other indication of another person and causing confusion with the product or business of another person is defined as unfair competition. Therefore, if the exterior design of a product is well-known and has the ability to distinguish one's product from others, it falls under the product or other indication referred to here, and each act against the exterior design is considered as unfair competition.
In addition, Article 2, Paragraph 1, Item 3 of the Unfair Competition Law defines "the act of transferring, leasing, displaying for the purpose of transferring or leasing, exporting or importing a product that imitates the form of another person's product (excluding the form essential to ensure the function of the said product)" as an act of unfair competition (imitation of product form). The exterior design of a product is protected from imitation (the act of creating a substantially identical product form by relying on the form of another person's product (Article 3, Paragraph 2 of the Unfair Competition Law)) for three years from the date on which the product is first sold in Japan. This provision functions to protect the exterior design of a product until a design right is generated or that has a short life cycle.