table of contents
What is design similarity?
Design Law Article23Article text
The owner of a design right has the exclusive right to commercially work the registered design and designs similar to it.
"Similarity" of a design is a core concept that determines the scope of the effect of a design right. This is because the effect of a design right extends not only to the registered design itself but also to "similar designs." Therefore, whether a design is "similar" or not is extremely important when determining whether or not there is a design right infringement.
In addition, according to Article 3 of the Design Act, a design similar to a design that was publicly known before the application cannot be registered, and according to Article 9 of the same Act, a design similar to a design filed earlier cannot be registered.
Situations where similarity judgment is required
The following are some examples of situations where the similarity of designs becomes an issue. Note that as the similarity is determined in a written opinion, a search for registrability at the time of application is not included.
- When you discover a registered design that may be problematic during the preparation stage or after the start of manufacturing and selling your company's products
- If you receive a warning or are sued for infringing another company's design rights on a product you are already manufacturing or selling
- Conversely to 1. and 2., when you want to determine whether another company's product falls within the scope of your company's design rights
- When another company requests invalidation of your design rights, or when an invalidity defense is made during an infringement lawsuit
- When determining whether there are grounds for invalidation of another company's registered design
As mentioned above, the similarity of designs can greatly affect the success or failure of your business and your company's future.
Basic methods for determining similarity of designs
Design Law Article24Article2term
The determination of whether a registered design is similar to another design shall be made based on the aesthetic impression evoked by the consumer's visual sense.
The similarity of designs is determined by whether or not they give the impression of being aesthetically identical or similar when viewed from the consumer's perspective. The premise is that the products are identical or similar, but the basic procedure for determining similarity is to follow the three steps below.
[Stage 1] Understanding the design structure
The overall composition of each design (combination of shape, pattern, and color) is objectively and specifically recognized.
Analyze the components based on the target item (use and function).
For example, for the design of an "electric kettle," extract the shape of the body, the placement of the handle, the shape of the spout, and the design of the lid.
[Second stage] Certification of key parts
Identify the parts of the whole that are likely to attract the consumer's attention. These become the "essential parts for creating the aesthetic appeal of the design." Conversely, parts that are naturally required for functionality and therefore do not allow for freedom of design choice, inconspicuous parts, or parts with common shapes are excluded from the essential parts.
[Step 3] Compare the two designs and judge their aesthetics
We compare the entire design, focusing on the key parts, extracting commonalities and differences and evaluating them individually. We then make a comprehensive judgment on the aesthetic impression received by consumers, taking into consideration the following points, for example:
Overall impression Overall unity and balance when viewed
Commonality of key parts: Consistency of key part proportions, size, shape, placement, and line flow
Salience of differences: To what extent do differences influence impressions and have a significant impact on similarity judgments?
Actual transaction situation and usage conditions, the level of attention of the consumer, and the areas that the consumer pays attention to
Judging the results:
Similar: The overall impression is similar and gives a similar aesthetic impression.
Dissimilar: The overall impression is clearly different, giving a distinct aesthetic feeling.
In addition, we also consider the so-called relationship of use for the registered design of parts. In this case, we identify the part of the product that corresponds to the registered design of the part, compare the registered design of the part with the design of the corresponding part of the product, and determine whether they give the impression of being aesthetically identical or similar.
About our written opinions
The similarity of designs is generally determined in the manner described above, but to actually make a reliable judgment on similarity, specialized knowledge and experience are required.
In addition, you can request a decision from the Japan Patent Office regarding the scope of similarity of a registered design, but the decision results will be made public and you cannot appeal even if an unfavorable decision is made.
If you request us to prepare a "written opinion on the determination of similarity of designs," our experienced patent attorneys specializing in designs will prepare a confidential, reliable, and persuasive written opinion and provide it to you.