Major Revisions to Design Law - Adapting to Meet the Future of Design Management

May 29, 2019

The "Law Partially revising the Patent Law etc." was decided upon by the cabinet on March 1, 2019, approved and effectuated on May 10, 2019 and promulgated on May 17, 2019 as Act No. 3. The revisions made to the Design Law are intended to improve procedures and expand protections regarding designs, with the aim of promoting the JPO's suggestion of "design management" (using designs as a management resource to improve brand and innovation power). The revisions to the Design Law are as follows.

* The above law will come into force within one year from the date of promulgation.

1. Expansion of protections for image designs

(1) The following kinds of images have been made subject to protections.However, protections are limited to images displayed for the purposes of operation of a device and images displayed as a result of use of a device's functions. Further, decorative images or content such as "wallpapers" are not items that directly add value to devices etc. and are therefore not subject to protections.

1. Images not stored in articles themselves Example: Images provided via a network Source: JPO 6th Design System Subcommittee Meeting Resource 1

2. Images displayed on things other than articles themselves Examples: projections of images onto walls or bodies, images displayed in VR etc. Source: JPO 6th Design System Subcommittee Meeting Resource 1

Note: The format for image design applications and the method of handling examinations are currently undergoing consideration.

(2) The acts of uploading images to a server and providing or offering software including images via a network are acts of working a design.

* Transferring media upon which images related to designs are recorded or transferring devices in which images related to designs are included are acts of working a design.

• Background to the Revision The stipulations for protections under the current law are stricter than in the US and Europe. Under the current law, protections are limited to images stored on devices and images displayed by devices etc. Icons, wallpapers, images that are not stored on devices and so on can be registered as designs in the US and Europe, but cannot be registered in Japan. In the current circumstances, there is insufficient return for investments in image designs such as GUIs, which have skyrocketed in importance in recent years. As a result, Japanese enterprises have little incentive to invest in such designs, and it has been suggested that they are falling into a downward spiral of losing out in terms of global competitiveness when compared to European and US enterprises that are investing vast sums in designs. Actions that infringe design rights are limited to the acts of manufacturing, using, transferring, lending, importing and exporting articles. Since providing imitation software including images via the internet is not currently an infringing act, it has been pointed out that protections for GUIs are insufficient. Example of a GUI registered in Europe
  Reg. No. 004634517-0003 (Apple Inc.) Article: Icon

2. Protection for spatial designs

Designs of building exteriors/interiors will be subject to protection under the new design law

* Registrations will be approved for interior designs if they result in a unified aesthetic for the entirety of a building's interior.

* Due to the expansion of protections, the construction, use, transfer, lending, export and import of a building related to a design, or offering the transfer or lending thereof, have been made acts of working a design.

• Designs of Exteriors/Interiors of Buildings Examples: constructing a brand using interior design (au Shop, Ikebukuro Nishiguchi Ekimae Branch） Characteristically-shaped tables and counters etc. are used. They are arranged in a pattern that accentuates their characteristics and colored effectively in orange and white only, creating a uniform style. (Source: JPO "Outline of Law Partially Revising the Patent Law etc.")  
• Background to the Revision Protections under the current law are limited to "corporeal movables", and buildings ("immovables") are not subject to protections. Further, the interior designs of shops or offices etc. cannot be granted design registrations unless they fulfil the requirement of "one design per application." Protections in Japan for the interiors etc. of buildings and shops are insufficient when compared with those in Europe and the US. Moreover, in recent years characteristic spatial designs have become an identifying element of certain brands. In Japan, there have been cases highlighting the heightened need for protections. In one case, the Tokyo District Court issued a provisional disposition injunction prohibiting use of a shop design under the unfair competition prevention law, on the grounds that its exterior was similar to that used by shops in the Komeda Coffee chain. The case was later settled out of court. (Case: 2015(Yo)22042) Komeda Coffee Iwade Branch Source : http://v4.eir-parts.net/v4Contents/View.aspx?cat=tdnet&sid=1428023

3. Expansion of Related Design System

The law will be revised as follows.

(1) The period in which related designs may be filed will be lengthened from "before the publication date of the principal design" to "within 10 years from the filing date of the principal design."

(2) Related designs similar only to other related designs may be registered.

(3) The period of duration of related designs will match that of the basic design (the first-filed design in the group).

* However, registration of a related design will not be permitted if the principal design has already been terminated, invalidated or abandoned.

* Related Design A is similar to a principal design. Related Design B is similar only to Related Design A. Even if the principal design is terminated, Related Design B may be registered providing that Related Design A is alive.

• Background to the Revision Considering market performance and to reflect the reality of decisions to add further designs, a revision in 2006 extended the period in which related designs may be filed to any time prior to the publication of the principal design. However, it remained impossible to obtain protection for additional designs formulated after the publication of the principal design. In recent years, it is becoming the norm to design cars, smartphones and so on based on a design concept formed of multiple consistent articles. In order for designs formulated via such methods to be able to enjoy sufficient protections in Japan, the conditions for filing related designs have been eased. Under the previous system, a design similar only to a related design could not receive protection, and was interpreted as being protected only within the scope of similarity to the related design. The revision to the law will broaden the protections available for designs created after the fact. However, due to concerns regarding whether for example the period of protection for a series of designs would be substantively extended, measures have been taken to avoid granting excess protections to design right holders, such as setting the duration of right for related designs to that of the basic design.

4. Change to the Period of Duration of Design Rights

The period of duration of design rights has been changed from "20 years from the date of registration" to "25 years from the date of application."

• Background to the Revision A revision to the law in 2006 extended the period of duration of design rights from 15 to 20 years. In recent years however, the number of design registrations maintained for 15 years has been increasing, with 22% of designs in 2016 in their 15th year. High-quality, "long-life" designs are a source of added value over a long period and an important resource for building brand value. In Europe, where brand management through designs is advanced, the maximum period of duration is 25 years. This latest revision to the law extends the period of duration in Japan.

5.　Introduction of Single Applications for Multiple Designs

The revision to the law makes it possible to file a single application covering multiple designs.

However, (i) the maximum number of designs per application and (ii) the scope of applications containing multiple designs are currently unclear.

Also, under the following policy, it can be expected that unlike patents, a single design application may result in multiple design rights, i.e. that multiple registration numbers will be issued for a single application. However, this point is also currently unclear.

1. The principles of a single design right arising from a single design will be upheld.

2. As under the present system, substantive examination and design registration etc. should be carried out individually for each design.

• Background to the Revision Under the current system, a single application for multiple designs is not permitted except in cases of a design comprising multiple parts. Conversely, other major countries (US, Europe, China and Korea) have different requirements, but allow multiple designs to be filed in a single application. The Hague Agreement, of which Japan is a signatory, allows single applications for multiple designs. Therefore, the law has been revised to provide greater convenience for users.

6. Revision to table of article classifications

Applications containing written classifications that do not correspond to those in the table of article classifications as determined by government ordinance are subject to reasons for refusal. Since this can cause a delay in acquiring rights, the law has been revised so that reasons for refusal are not immediately issued when written classifications do not correspond to those in the table.

7. Other points (indirect infringement provisions)

Under the revision to the law, restrictions will be applied in malicious cases of manufacture/transfer/import etc. of components (non-exclusive articles) that are assembled to form products that infringe upon design rights. This brings the law into agreement with Article 101 Sections 2-5 of the Patent Law, which is already in force.

• Background to the Revision Until now, the provisions on indirect infringement only allowed for restrictions to be placed on exclusive articles. However, in recent years there have been cases where this has been used as a loophole to evade restrictions, by for example importing products that infringe upon design rights disassembled into their components (non-exclusive articles). This has increased the necessity for a revision to the law. Example: Cosmetic roller (registered design) After revision If certain requirements are met, the separate manufacture or import of ball parts and handle parts that are assembled into infringing products will be treated as infringement of the design right. References: JPO 6th Design System Subcommittee Meeting Resource 1
  Industrial Structure Advisory Council IP Subcomittee, February 2019 Design System Subcomittee Meeting materials