To those in the construction industry

(1) Introduction

In recent years, there have been an increasing number of cases in which companies create brand value by elaborating on the appearance and interior of stores to provide services and sell products.
In addition, recently, there have been cases where companies that handle office furniture and related equipment create distinctive office designs while using their own products and provide them to customers.

In response to these trends, the Design Act was drastically revised in 2019, and from April of 2020, building designs and interior designs came to be protected by design rights as building designs and interior designs.

In general, the interior is thought of as decorations of walls, ceilings, and the like. However, under the Design Act, for example, a space itself in which chairs and desks are characteristically arranged is protected as an interior design.

In regard to buildings also, not only those with characteristic appearances serving as landmarks are protected as building designs, but also real estate such as houses and bridges and, for example, the inside of a building may be protected as building designs, provided that the predetermined conditions are met.

Designs of building and interiors, which are often thought to be irrelevant to the design rights in the common sense of this industry, may be protected as design rights from now on.

In this section, we introduce the concept of building design and interior design under the Design Act to those in the construction industry who have not been involved in applications for design registrations.
We hope that this article will help those who are considering filing of design applications.

(2) Protection system for building designs and interior designs

The design right is a right to exclusively use a design by protecting the design so that it cannot be imitated by others.
For example, the following building design and interior design are actually registered.

■ Commercial building

[Design right holder] FAST RETAILING CO., LTD.(Design Registration No. 1671773)

■ Interior of co-creation space

[Design right holder] OKAMURA CORPORATION(Design Registration No. 1673698)

As mentioned above, the appearance designs of building designs and interior designs can now be protected by design rights. By acquiring a design right, it is possible to use the design of a building or interior exclusively.

Meanwhile, however, it is necessary to consider the risk of infringement due to the expansion of subjects of protection.

(3) Risk of infringement due to expansion of subjects of protection for building designs and interior designs

Under the Design Act, even if designs are the same or similar, the designs are determined to be dissimilar designs, provided that the uses and functions of the goods (articles) in question are different from each other, and thus there is no risk of infringement.

Example:

However, in regard to building designs and interior designs, as long as buildings or interiors have the same purposes and functions of allowing people to stay inside and spend a certain amount of time, such buildings or interiors are all determined to be similar in principle.

Example:

In addition to the above examples, for example, although a school seems to be completely different in use and function from a resort hotel, the school and the resort hotel are handled as similar building designs under the Design Act. If such a school and a resort hotel have similar designs, there is a risk of infringement.

(4) Important matters regarding building designs and interior designs

■ Important matter 1: Preliminary clearance search is important

As mentioned above, in principle, all buildings or interiors may be determined to be similar in terms of the uses and functions of the goods (articles).
Under the circumstances, there are risks of infringement across the differences of fields such as house builders, building constructors, interior decorators and design offices thereof.

In the event of infringement of a design right, it may be necessary to make a change to, discontinue the use of, or, in the worst case, demolish the building or interior. For buildings and interiors, which are usually one-of-a-kind, such a situation would cause enormous damage. Therefore, from now on, when handling a new building or interior, it is recommended to carry out a preliminary search and file a design registration application to at least ensure the safe implementation of your own design.
Depending on the results of the search, there may be a case where the possibility of infringement is high and a design change is required or a case where it is recommended to acquire a design right.
At our firm, the staffs with abundant experience in design work will support the search for the building design or interior design and the application for design registration.

■ Important matter 2: The contract needs to be reviewed

In a case of infringement of a design right, a person who "commercially manufactures, uses, transfers", etc. the building or interior is considered as an infringing person.

That is, for example, in a case where a "personal house" that infringes a design right of another company is built and a designer and a builder are different, the builder who built (manufactured) the building is considered as the infringer under the Design Act.

Furthermore, if the building or interior is a "store," not only a builder who built (manufactured) it but also an owner who operates the store using the building or interior is considered as the infringer.

If such a case happens, the designer and the builder will have trouble over the location of responsibility, and the owner, who is the customer, will be involved in the trouble, which may damage the credibility.

Therefore, in regard to the contract between the parties, it is necessary to confirm whether there is an agreement on the design right and, if not, it is necessary to determine in advance the scope of responsibility of each party and who will conduct the design search and/or application.

We also handle contract-related services involved in intellectual property, and we are capable of providing comprehensive services including preparation or review of a contract and subsequent design search and/or application. (Click here for the page of the Strategic Station for Intellectual Contract)

(5) To those who aim to register building designs/interior designs

When aiming to register a building design/interior design, it is necessary to meet various conditions under the Design Act. In particular, the requirement for novelty is important.
The requirement for novelty is a condition that a design which is already known before an application thereof cannot be registered.

Therefore, if a draft design of a building design or interior design is published on a website before application, it would be determined that the novelty has been lost, and in principle, such a design cannot be registered.
*There is a system that can exceptionally prevent the lack of novelty by prescribed procedures, provided that certain conditions are met (e.g., the publication was conducted by the applicant itself within one year before the application (exception to lack of novelty)).

There are various other requirements for design registration. If you are interested in filing an application for a building design or interior design, please feel free to contact us first. The experienced staffs will support you in acquiring design rights.