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"Related designs" protect product variations
In the design process, it is common for many variations of a design to be born from a single concept. The related design system is a system that protects a group of designs created by the same applicant as having equal value and enables the enforcement of rights for each design.
Below, we will provide an overview of the related designs system, a clear explanation of the registration requirements, examination criteria, advantages and utilization methods of the system, and provide information on how to utilize related designs.
Overview of the related designs system
During the development process of an industrial product, there are times when variations are introduced into the product design, or when variations are added later.
The related designs system protects all variations of a product design as a group of designs.
Under the related design system, designs that inherit the design concept of a basic design are allowed to be registered as related designs. This is stipulated as an exception to the provision on first application (Article 9 of the Design Act), and even if a design is similar to a prior design, it can be protected as a related design.
Article 10 (Related Designs)
Notwithstanding Article 9, paragraph 1 or 2, an applicant for design registration may obtain a design registration with respect to a design (hereinafter referred to as a "related design") that is similar to a design related to an application for design registration or a design selected from among the applicant's registered designs (hereinafter referred to as the "principal design"), only where the application date for the related design is on or after the application date for the principal design and is prior to the date on which ten years have passed since the application date for the principal design.
Registration requirements and examination criteria for related designs
"Principal design" and "basic design" of "related design"
In order to receive a related design registration, you must select one of the designs related to your own design registration application or your own registered design. This selected design is called the "principal design" (Article 10, Paragraph 1 of the Design Act). The first selected principal design, that is, the one that is not a related design of another design, is called the "basic design" (Article 10, Paragraph 7 of the Design Act). In addition, the related design of the basic design and the related design that is linked to the related design in stages are called "related designs related to the basic design".
Requirements for obtaining a related design registration
If the applied design is to be registered as a related design, in addition to the usual requirements for registration of a design, we will also determine whether the design satisfies the following requirements (1) to (3) for obtaining a design registration as a related design.
*From the Japan Patent Office Examination Guidelines
(1) The application must be made by the same applicant for design registration as the original design.
The applicant for the related design must be the same as the applicant for the principal design (or the owner of the principal design if a design right has been registered for the principal design). This must be the same at both the time of examination and at the time of registration.
(2) The application is for a design similar to the original design.
In order for an applied design to be registered as a related design, it must be similar to the principal design. If the related design and the principal design are identical, they cannot be registered as related designs.
【point】
A design that is similar only to a related design can also be registered as a related design, with the related design being deemed to be the principal design.
(3) The application must have been filed more than 10 years after the application date for the basic design.
The filing date of the related design application must be after the filing date of the basic design application and before 10 years have passed since the filing date. If the effect of the priority claim is recognized for both the filing date of the basic design application and the filing date of the related design application, the priority date will be used for the determination.
Requirements that the principal design must meet
When examining whether an applied design can be registered as a related design, the examiner will determine whether the principal design, etc., meets the following requirements (1) and (2) in addition to the requirements that the related design itself must meet.
(1) The design right of the original design has not expired.
If, at the time of the registration of the establishment of a design right for a related design, the design right for the principal design has been extinguished, a decision to invalidate the principal design has become final, or the principal design has been abandoned, the related design cannot be registered.
In this case, it is not necessary that the design right of the basic design is maintained. Even if the design right of the basic design has expired, the related design application can be registered as long as the main design is maintained.
【point】
In the examination of related designs, designs among the applicant's own designs that are identical or similar to the principal design (basic design) are excluded from the materials used as the basis for judging novelty and ease of creation.
However, if the right of the principal design is extinguished, the self-design that is identical or similar to the principal design will not be excluded from the materials used to judge the novelty and ease of creation of the related design, which means that if the principal design has already been exploited, the right of the principal design must be maintained until the related design is registered.
(2) No exclusive license has been granted for the design right of the design
A related design, whose principal design is a design for which an exclusive license has been granted, cannot be registered.
If the exclusive licenses for the principal design and related designs were granted to different persons, there would be an inconvenience in that multiple persons would be given exclusive rights to the overlapping parts of the principal design and related designs.
An exclusive license must be granted to the same person simultaneously for the principal and all related designs.
Even if an exclusive license has been granted for a principal design, if the cancellation of the exclusive license has been registered, it will be possible to register a related design.
Duration of related designs
For a normal design registration, the term of a design right is 25 years from the filing date (due to a 2020 amendment to the law, the term of a design right has changed from 20 years from the registration date to 25 years from the filing date).
On the other hand, the duration of a related design is determined as follows:
- The basic design was filed before the revised law came into effect (before March 2020, XNUMX).
⇒ Basic design: "20 years from the date of registration" - The basic design is applied for after the revised law comes into effect (on or after April 2020, XNUMX)
⇒ Basic design: "25 years from the filing date"
The principal design must exist at the time of the registration of the related design. Since the related design is also recognized as an independent design right, the related design will continue to exist after registration even if the principal design is abandoned, the registration fee is not paid, or the related design is invalidated.
Patent Office Fees for Related Designs
The filing fees paid to the Patent Office when filing a related design application, and the registration fees paid to the Patent Office when registering a related design application, are the same as the filing fees and registration fees for a regular design registration application.
Amendments to related designs and ordinary designs after notice of rejection
Even if you file a design application without designating it as a related design, the Japan Patent Office may issue a notice of reasons for refusal during examination because it is similar to your own earlier design application. In that case, you can register both similar design applications by making an amendment to add a statement that the design of the earlier application (either one, if the application is filed on the same date) is the principal design and the design of the later application (a design other than the principal design, if the application is filed on the same date) as the related design (an amendment to add a statement of the principal design to the application for the related design).
Conversely, if a design application is filed for a related design and the examination by the Japan Patent Office determines that the related design is not similar to the original design, an amendment can be made to convert the related design into a regular application.
Partial designs and related designs
The partial design system (Article 2 of the Design Act) is a system introduced to prevent third parties from imitating original and distinctive designs relating to parts of an article.
It is possible to apply for a partial design as a principal design or related design.
It may also be possible to apply for a whole design and a partial design as a principal design and related designs.
Benefits of related designs
The objects of protection under the Design Law are the shape, pattern, and color that appear on the exterior of an item, etc. Therefore, the scope of design rights is narrower than that of patent rights, and even slight differences in shape or design may be deemed dissimilar, meaning that even if you obtain a right, it may not be possible to use it effectively.
In such cases, it is possible to expand the scope of your design rights by effectively using the related designs system to obtain rights for multiple related designs.
How to use related designs
Brand Strategy Advantages
Brand strategies are becoming increasingly important in corporate activities.
A typical corporate brand strategy involves continually developing designs with the same concept and increasing the sense of unity of the company's brand, in order to improve consumer recognition and expand sales.
The related designs system provides comprehensive protection for a broad and continually evolving family of designs, helping businesses achieve their business goals of establishing their brand and maintaining a competitive advantage.
Responding to model changes after product launch
Newly developed products may undergo model changes from the initial model to the second and third generations. In this case, even if the design change is minor, you can obtain design rights for the successor model by utilizing the related design system.
Anti-infringement measures
As mentioned above, design rights have a narrower scope than patent rights, and infringement can be easily avoided by even a slight change in shape, making it difficult to deal with infringing products. Therefore, by utilizing the related design system and obtaining design rights for multiple original and related designs that can be used to deal with counterfeit products, it is possible to avoid counterfeiting by other companies.
We will introduce some examples of related design registrations.
・Examples where the entire design and partial design of an article were registered as the principal design and related designs
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| Design Registration No. 1673669 (Main Design) | Design Registration No. 1673994 (related design) |
*The solid line indicates the part for which the design is to be registered. The dashed line part is considered to have been recognized as similar to the original design as it has little impact on the judgment of similarity.
・Examples of designs that include an image as part of an article and image designs that have been registered as principal and related designs
(The solid line indicates the part for which the design is to be registered.)
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| Design Registration No. 1675446 (Design: Electronic computer) |
Design Registration No. 1675496 (Related design: image) |
・Examples of registered designs related to buildings
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| Design Registration No. 1721535 (Main Design) | Design Registration No. 1732986 (related design) |
Summary
If you can strategically utilize the related design system to obtain broad and strong design rights, it will be a great help in establishing your company's brand.
However, when filing multiple design applications for a design with variations, it is important to consider which design should be the principal design (basic design) and which should be the related design, and when multiple variations of the principal design and related designs have been registered, which design should be selected as the principal design for a new application. In such cases, we recommend that you seek advice from an expert.
The related designs system may also be available for international applications for designs filed under the Hague Agreement.
In an international application, a maximum of 100 designs can be included in one application. If you designate Japan or Korea, which has a related design system, you can indicate related designs when filing an international application.
In addition, at the examination stage in Japan, it is also possible to treat the Hague application and the direct Japanese application as the principal design and related designs.
Our firm has many legal attorneys who specialize in design matters.
If you are considering filing a related design application, please feel free to contact us.