Advice For Those Engaged In The Housing Equipment Industry

(1) Introduction

Housing equipment is undoubtedly essential for our living. It has a direct bearing on the convenience of the living environment and everybody benefits from it every day.

Since there is always a demand for reconstructions and an economic recovery after earthquake disasters, there has been a trend of growth of the housing equipment industry in recent year. Also, like LIXIL Group and Panasonic (Eco Solutions business) there are companies that achieved better business results by reconsidering their management through reorganization.

As you may know, there is a clear connection between "housing equipment" and "designs (=design rights)".

Needless to say, the quality of "design" of interior equipment, furniture, etc. for general households is a very important factor and usually of high interest to consumers.

Furthermore, special features on interior are regularly put together by the media. In recent years, for example, restaurants with stylish interior designs who aimed to distinguish themselves from others have grown in popularity, and consumer interest in interior equipment and furniture with a high level of design has increased.

There are all kinds of housing equipment, but within the design classes the patent office has drawn up, the groups they belong to are fixed.

Below are the articles which are classified into the design classification code "D group (housing equipment)":

• D0: Other housing equipment that does not belong to D3-D9
• D3: Lighting apparatus and lighting equipment
• D4: Heating and cooling equipment or air-conditioning and ventilation equipment
• D5: Kitchen equipment and sanitary appliances
• D6: Furniture and tools for indoor organizing
• D7: Furniture
• D9: General purpose housing equipment and accessory
  ※Mainly textile indoor equipment like floor coverings, curtains, etc. is classified into the design classification code "C group"; fitting are classified into the design classification code "L group".

"HARAKENZO ^more " set up this webpage as we are keen to support every one engaged in the housing equipment industry in their intellectual property activity. "HARAKENZO ^more " would be delighted if this article is helpful to those who are considering a design application.

(2) Designs for housing equipment

• The main purpose of housing equipment is to improve the convenience and comfort of living. However, by having both at the same time, especially products that are elaborately planned by having an "interior" with an exceptional design are gaining popularity Exceptional functionality is of course the reason to by housing equipment, but it seems that the group of people who put the focus on design when they decide one a purchase is steadily growing. 《Source: Publication of results of an questionnaire about "interior" — ouchi*club》 Accordingly, in order to remain successful in the competition with other companies in the housing equipment industry, it is very effective to create an original "design" and aim at distinguishing oneself from the other companies. However, designs also have the weakness of being a visible external feature. Therefore, different from something like a patent which is hard to imitate at first sight, there is a high possibility that a design can be easily imitated after having a just glance at it.

By protecting such a design, a "design right" is the right to use a design exclusively so that others cannot copy it.

Below we introduce several example designs which have been obtained by Japanese housing equipment manufactures.

★Chair

Right holder(s): OKUMURA CORPORATION
(Japanese design no. 1444386)

★Bed

Right holder(s): PARAMOUNT BED CO., LTD.
(Japanese design no. 1541258)

★Bidet toilet seat

Right holder(s): TOTO LTD.
(Japanese design no. 1558420)

★Storage shelf

Right holder(s): Ryohin Keikaku Co., Ltd.
UCHIDA YOKO CO., LTD.
(Japanese design no. 1564935)

★Towel rail

Right holder(s): SUGATSUNE KOGYO CO., LTD.
(Japanese design no. 1544590)

★Sink

Right holder(s): Cleanup Corporation
(Japanese design no. 1562266)

(3) Not only the entirety can be protected but "partial designs" and "related designs" are also possible

Partial Designs

Designs are a system for the protection of the rights regarding an entire good. However, if a housing equipment design has a part with a characteristic feature, and if a third party uses "a cleverly imitative design that does not resemble the design in its entirety by taking in the part with the original feature to", the effect of the design right does not extend to this third party.

In order to avoid such situations, it is possible to not just register a design for the whole housing equipment, but to register a design of a part with a special feature as a "partial design".

Through partial designs it becomes possible to exercise design rights even against acts of imitation of parts with characteristic features. Further, it is possible to protect various variations or series of housing equipment that use common characteristic part(s)".

Below we introduce several examples of partial designs which have been obtained by Japanese housing equipment manufactures.

★Drawer for furniture
※The solid lines mark the scope of right of the partial design.

Right holder(s): SUNWAVE CORPORATION
(Japanese design no. 1342075)

★Washing counter with a faucet
※Everything apart from the "part colored in red" is the scope of the design right.

Right holder(s): LIXIL CORPORATION
(Japanese design no. 1550176)

★Furniture adjuster
※The solid lines mark the scope of right of the partial design.

Right holder(s): SUGATSUNE KOGYO CO., LTD.
(Japanese design no. 1435088)

★Toiled with cabinet
※Everything apart from the "parts marked in blue" is the scope of the design right.

Right holder(s): LIXIL CORPORATION
(Japanese design no. 1510236)

Related Designs

The related design system allows the protection of designs of variations that were created from a single design concept. From a creative point of view, these designs are of equal value as the principal design and the right of each design can be exercised. If a design is registered under the related design system, it is possible to extend the scope of right to the similar scope of the related designs.

(4) Is there protection through other intellectual property rights?

Regarding the question whether or not a designs of an article can be protected through intellectual property rights other than design rights which expire after 20 years, below we introduce examples of "generic furniture" which have been popular in recent years.

★"Generic furniture"

Generic furniture refers to third party counterfeit goods of furniture with designs that entered public domain after the duration of design right expired (20 years from the date of registration). The term became popular due to the association with drugs getting called generic drugs after the expiration of the patent rights. The price of original furniture that gets imitated can be several hundred thousand yen. Generic furniture can sometimes be bought for the low price of a tenth of that amount and can have advantages like improvements made through third parties. On the other hand, if generic furniture only mimics the design, caution is advised, as it may well be an inferior good with diminished quality and compromised safety.

Also, if there are issues with such generic furniture, there might also be repercussion for the manufacturer of the original goods.

◎Are manufacture and sales of generic furniture not illegal?

If the design right of the furniture that is imitated has lapsed (20 years after registration), manufacture and sales are not illegal.

Furthermore, as long as the furniture that is imitated is not acknowledged to be "copyright work", there seems to be no problem with manufacture and sales.

※If it is a copyright work, the copyright lasts until 50 years after the death of the creator.

※Please note that there is the possibility of infringement under the Unfair Competition Prevention Law and/or the Trademark Law.

★Case in which work was acknowledged to be copyright work

◎The TRIPP TRAPP case (IP High Court, 2014, (Ne), No. 10063 (Decision of April 14, 2015))

- Hitherto, as a general rule, copyright law protected "artistic work" and did not conflict with "designs of utility goods that can be mass-produced" that are subject to protection under design law.

- However, in the "TRIPP TRAPP case", the IP High Court ruled to acknowledge a "child seat (hereinafter 'appellant's product)" to be copyright work which caused a big debate (infringement was denied).

- Of course, this decision is merely an "individual decision for a particular case". This ruling does not mean that after it all utility goods become copyright work. However, it can be said that due to this decision the hurdle for utility goods to be viewed as copyright work has been considerably lowered.

- This decision will affect future judicial rulings. Manufactures who produce and sell original furniture also welcome that it "became easier to exercise rights against manufactures of generic furniture".

◎Measures for manufacturers of original works against generic furniture

As explained above, other than protecting design rights through copyright—which can last up to 50 years after the death of the creator—after the design right has expired, there are cases in which sales can be stopped and damages can be claimed based on the following rights.

- Protection based on the Trademark Law

Designs of furniture, etc. can be protected as "three-dimensional trademarks" with respect to the Trademark Law. The duration of design rights is 20 years, whereas trademark rights can be maintained semipermanently as long as they are continually renewed.

To receive protection as a three-dimensional trademark, it is necessary to have achieved sufficient distinctiveness through exclusive use over are certain period of time.

Furthermore, designs that only comprise of features which have to be there to realize a function cannot be registered.

- Protection based on the Unfair Competition Prevention Law

In order to guarantee fair competition between business persons, acts of creating confusion or misunderstanding of another business' credibility with that of oneself by using an indication of goods or business that is identical or similar to said person's indication of goods or business that is well known are forbidden, and the function of origin indication of goods or businesses that are well-known to consumers has to be protected.

A. Does it have particular distinctiveness?

If the design is distinguished from those before, it is easier to achieve particular distinctiveness.

B. Has the state of being well-known been achieved?

Whether or not to be acknowledged by consumers as an origin indication through continuous and exclusive use over a long period of time is important. Therefore it is necessary to prove "the period of commercial use, the frequency of use, and the circumstances of use".

The period differs for each specific case. For example, in fields with short lifecycles like toys or for things which cause a certain boom, the period until a state of being well-known is acknowledged tends to range from a few months to a few years.

In order to receive protection under the Trademark Law or the Unfair Competition Prevention Law, a certain period of use is required. Thus, in the end it is fundamentally difficult to receive protection under the Trademark Law/Unfair Competition Prevention Law during the period of a design registration.

※Since rights are established through the registration of design rights or trademark rights, legal security and the potential to deter others is high. On the other hand, with regard to three-dimensional shapes, the legal security is low since generally for copyright protection and Unfair Competition Prevention Law protection, it is not clear whether or not legal protection is possible before it comes to a trial. Also, in the case of protection under the Unfair Competition Prevention Law a right is not established.

(5) After imitations appear in foreign markets it is too late!

When a housing equipment, furniture, etc. becomes popular, it can happen that imitations from foreign countries, especially East Asian countries, enter another country and appear on the market. Also, often applications for designs or trademarks have been already concluded in said foreign countries.

After having been confronted with these circumstances, it becomes a very harsh situation even if finally protection of rights is sought in foreign countries. Therefore, we strongly advise to simultaneously file design applications in various foreign countries while obtaining design rights at home. Please feel free to contact our firm at any time and ask for advice when you consider expanding into foreign countries.

From advanced IP nations like the European countries and America, recently East Asian and various Southeast Asian countries, to other countries, designs are handled in various ways for each country. Therefore, please feel free to contact our firm at any time to ask for advice, since our firm also possesses the necessary know-how regarding the how of registering designs,

(6) "HARAKENZO ^more " assist those who are engaged in the housing equipment industry

In the equipment industry where functionality of the goods is a given, it is very important invent original designs in order to distinguish oneself from competitors. On the other hand, bootlegs that imitate these design will easily enter circulation and one will be pressure for countermeasures at the own national border will increase, if the designs are not properly protected by intellectual property.

Therefore, you may face situations where you have no other choice but to take some measures for intellectual-property-related problems. "HARAKENZO ^more " are all prepared to do our utmost in order to protect your intellectual properties. Please feel free to contact us.