15 Nov
2019

Protecting and enforcing design rights: Japan

Shiga International Patent Office

Legal framework

Designs protection is stipulated in the Design Law (separately from the Patent Law) and is implemented by the Enforcement Law and the Enforcement Regulations of the Design Law. The Design Law is set to be revised in 2020.

Regarding the international protection of designs, Japan is a member of:

  • the Paris Convention for the Protection of Industrial Property;
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights;
  • the Locarno Agreement; and
  • the Hague Agreement.

Since Japan joined the Hague Agreement in 2015, foreign applicants can now file design applications through the Hague system.

Unregistered designs

Unregistered designs can be protected by the Unfair Competition Prevention Law under certain conditions. This law regulates acts that fall under unfair competition and contains some IP-related matters.

The sale of goods that imitate the configuration of another person’s goods is prohibited if three years have not passed from the first date of sale of the authentic goods in Japan (Articles 2(1)(iii) and 19(1)(v)). This provision is stipulated to prevent free riding on another’s efforts and capital investment. The sale date from which protection begins refers to a sale made to a Japanese consumer. If a foreign design owner sells goods online, indications for the Japanese market and the language of the advertisement, among other things, will be considered when determining whether the sale was made to Japanese consumers. Imitation is an act of creating goods of practically identical configuration as that of another person’s goods. In order for an act to constitute imitation, requirements such as “access to another person’s goods” and “substantial identicalness of the result” must be satisfied. In cases where goods are originally developed without access to the original goods, the requirements for imitation are not met.

Even after three years have elapsed from the first date of sale in Japan, an act that causes confusion with another person’s well-known goods or other indications is prohibited (Article 2(1)(i)). The term ‘goods or other indications’ refers to indications that show the source of goods or a business entity related to the goods or services. The term also covers containers, packages of goods and configurations of goods. In order to make a claim based on this provision, a plaintiff must prove the fame of the configuration and likelihood of confusion.

Where violating the Unfair Competition Law, it is possible to seek an injunctive order, demand damages or demand measures for the recovery of reputation. Further, if the infringement case turns criminal, the alleged infringer may be found to be punishable by criminal court procedures.

Registered designs

Subject of protection

Under the current law, ‘design’ refers only to the appearance of an article. However, following the 2020 revisions to the Design Law, the ‘configurations of buildings’ and ‘graphic images’ will also be added to the subject of protection. ‘Graphic images’ are limited to images that are used in the operation of a device or displayed as a result of the function of the device. Further, ‘interior decorations’ will be protectable after the revisions.

An applicant can seek protection for a portion of a design; in other words, unnecessary portions can be disclaimed.

There are no restrictions to enforcing the design rights of spare parts in Japan, unlike in other jurisdictions. Spare parts can be protected by design rights in the same manner as any other article.

Requirements for registration include:

  • industrial applicability;
  • novelty; and
  • creative difficulty.

In design examination, the determination of similarity:

  • compares the articles and evaluates their similarity;
  • compares the designs and finds their similarities and dissimilarities;
  • evaluates separately each similarity and dissimilarity between the designs; and
  • determines the similarity of the overall designs.

Designs that could have been easily created include:

  • designs of replacement;
  • designs of aggregation;
  • designs constituted by changing the layout;
  • designs constituted by changing component ratios or by increasing or decreasing the number of units of a continuous constituent element;
  • designs that merely represent shapes, patterns or colours, or any combinations thereof, that were publicly known almost as they are; and
  • designs converted to a business practice.

Unregistrable designs include:

  • designs which are liable to damage public order or morality;
  • designs which are liable to create confusion with an article pertaining to another person’s business; and
  • designs solely consisting of a shape that is indispensable for securing functions of the article.

Related design system

If a design owner creates a modified design which is similar to a previous design of its own, it can register the later design by using the related design system; in other words, the same owner’s previous design applications/registrations will not be an obstacle to a later similar design application. By using this system, the design owner can obtain comprehensive protection for variation designs which are derived from the same design concept and are created in a different period. Modified similar designs need to be filed within 10 years of the application date of the original design (following the 2020 revisions). If there is an earlier design by another party, it will bar registration to the modified design.

Multiple design application

Currently, it is not possible to include plural designs in a single application. However, following the 2020 revisions, it will become possible. Although details are yet to be announced, the enforcement date is expected to be a little later than other revisions.

Although the concept is different from that of the multiple design system, in cases where plural articles are used together and their designs are coordinated as a whole, it is possible to include plural articles in a single application as a set of articles. Acceptable sets of articles are prescribed in a ministerial ordinance (eg, a set of sofa components or a cutlery set including knives, forks and spoons).

Conversion of application

Patent applications and utility model applications can be converted into design applications under certain conditions. If conversion is allowed, the design application will be deemed to have been filed on the date that the initial patent or utility model application was filed. Design applications can also be converted into patent or utility model applications.

Grace period for novelty

There is a one-year grace period for loss of novelty. In order to enjoy the benefit of the grace period, the applicant must request the grace period at the time of filing and submit evidence to demonstrate that the applied for design has lost novelty.

Deferment of publication

It is possible to defer the publication of a design for up to three years from the registration date. A request must be made at the time of filing or at the time of paying the registration fee.

Where the owner of a design right wishes to seek an injunction during the deferment period, they cannot enforce the right unless they send a warning letter disclosing the content of the design right. Further, presumption of negligence is not presumed in the case of claiming damages.

Statement of features

An applicant can optionally submit a statement describing the features of a design. This is to express the subjectivity of the applicant and it does not affect the scope of protection.

Priority certificate

From 1 January 2020 it will be possible to use the WIPO Digital Access Service for design applications. If an applicant’s country does not participate in the service, the applicant must submit a priority certificate on paper.

Drawings

Drawings, photographs and computer-generated graphics are acceptable.

Duration

The term of a design right is currently 20 years from the registration date, but following the 2020 revisions it will be 25 years from the filing date.

Annuity

Once a design is registered, an annual payment of annuities will be required to maintain the right.

Procedures

Examination will be conducted automatically once a design application is filed. After a formality check, the examiner will conduct an examination for substantive requirements such as novelty and creative difficulty. The examination period is approximately six to seven months.

Where an office action is issued, the applicant may file a written argument and/or amendments in order to overcome the rejections. Amendments which change the gist of the design are not allowed.

If the reasons for rejection cannot be resolved after an applicant’s argument, a decision of rejection will be issued. Applicants can file an appeal against a decision of rejection if they disagree with it. Appeals will be judged by a board of appeal examiners. If an applicant disagrees with the appeal decision, they can file a lawsuit against it at the IP High Court. If the applicant disagrees with the IP High Court decision, the suit will be brought to the Supreme Court.

Enforcement

Scope of protection

An owner of a design right has the exclusive right to work the registered design and similar designs as a business. The ‘working’ of a design means the manufacturing, usage, assignment, lease, export or import, or offer of assignment or lease of an article to the design.

The scope of a registered design is determined based on the design stated in the application and depicted in the drawings.

Whether a registered design is identical or similar to another design is determined based on the aesthetic impression that the designs would create through the eyes of their consumers.

Remedy

Design owners can:

  • seek an injunctive order against infringement;
  • demand damages;
  • demand restitution for unjust enrichment; or
  • demand measures for the recovery of reputation.

Further, if the infringement case turns criminal, the alleged infringer may be found to be punishable by criminal court procedures.

Recent case

In a recent case a major weight-scale manufacturer fought for the design of a body composition analyser. Design infringement was recognised and damages of approximately $1.2 million were ordered in a first trial. The case was settled during a second trial.

Customs seizure

It is possible to request customs seizure based on a design right. Once customs recordation is accepted, a customs officer will search for design-infringing cargo. In order for officers to find infringing products, it is necessary to submit a detection guide on how to distinguish counterfeit products at the time of recordation. The validity of customs recordation lasts for four years and is renewable. The number of customs seizures based on design rights has been increasing in recent years.

Takedown notice

Depending on the online platform, the procedure and effectiveness of a takedown notice will vary. Some platforms are active in deleting information which contain design-infringing products.

JPO advisory opinion

It is possible to request the Japan Patent Office (JPO) to provide an advisory opinion regarding the scope of protection. The system is designed to judge cases from a neutral position. An advisory opinion is considered to be an expert opinion but is not legally binding. The procedure is similar to that of an appeal.

Invalidation

There is no opposition system in Japan and the only means of revoking a design registration is an invalidation trial. A request for invalidation may be filed with the JPO by any person. If the registration of a design becomes invalid, the design right will be deemed never to have existed.

Prior use defence

If a defendant proves that they had been using or preparing to use a design at the time of filing without knowledge of the plaintiff’s design, they will have a non-exclusive licence on the design right.

Ownership changes and right transfers

The transfer of rights takes effect on registration with the JPO (excluding inheritance and general succession).

There are two types of licence:

  • non-exclusive; and
  • exclusive.

An exclusive licence is not effective unless it is registered with the JPO.

The design rights of related designs cannot be transferred independently of each other. Exclusive licences on related designs are granted to the same person at the same time.

Related rights

Trademarks

The shapes of famous products can be registered as three-dimensional (3D) trademarks. An applicant must prove that the shape of a product itself became famous, although products are usually sold bearing trademarks. Coca-Cola’s bottle, Yakult’s bottle, the Wishbone Chair of Carl Hansen, Super Cub of Honda and the shape of confectionery have all been registered as 3D trademarks by successfully proving the shape’s fame.

Copyrights

Traditionally, industrial designs are not eligible for copyright protection. The Japanese Court requires a high level of creativity in order for applied art to be protected as copyrightable works and many industrial designs have been denied protection. However, a recent IP High Court case recognised the copyrightability of a baby chair ‘Tripp Trapp’, but infringement was not recognised because the scope of protection was narrowly interpreted.

Unfair competition

Designs can be protected by the Unfair Competition Prevention Law under certain conditions.

Shiga International Patent Office

GranTokyo South Tower

1-9-2 Marunouchi, Chiyoda-ku

Tokyo 100-6620

Japan

Tel +81 3 5288 5811

Fax +81 3 5288 5831

Web https://www.shigapatent.com

Hirohisa Suzuki

Vice president

[email protected]

Hirohisa Suzuki joined Shiga in 1995. Since then, he has specialised in designs and trademarks and has expanded his practice to surrounding legal areas. One of his specialties is providing brand (including design) consultation at a global level, such as portfolio analysis, brand strategy, worldwide prosecution, taking legal action against brand misuse and anti-counterfeiting. Against design copy products, he recommends using costeffective measures, such as a take-down notice for online platforms and customs seizure. Shiga is one of the top design and utility patent filers in Japan.