The Japan Patent
Office employs several strategies in order to protect designs and reduce the
costs associated to do so. There are five main categories or systems in place
under the current Design Law that make
1.
Related Designs
Designs which are similar to
another design (often referred to as the “principal design”) may be registered.
This system is often used when there are numerous design variations. The
application for one design needs to be specified as being the principle design,
and the other application(s) is selected as the related design. The related
design application(s) must be filed prior to publication of the principle
design in the Design Bulletin.
Related design rights expire
twenty years after the registration of the principle design.
2.
Partial Designs
In order to
protect designs for which only one aspect or part of a design has been
infringed upon, the Design Law was amended in 1998 to include the registration
of partial designs. Under this
system, the distinct parts, shapes, and forms of a larger design may be
registered, thus preventing a defendant in an infringement lawsuit from simply
claiming that even if one aspect of the two designs are the same, the overall
configurations or designs are different, and thus, there is no infringement.
3.
Secret Designs
This section of the
Design Law protects and delays the disclosure and publication of a registered
design in the Deign Gazette for a set period of time after registration. Often, this is useful for designs which are
trends or involve fashion both of which generally are temporary. After a set period
of time has elapsed, the design is published in the Design Gazette.
4.
Design of a set of articles
In most cases, the
design law applies to one design – one article. However, there are designs which may be
applied to several articles provided that the articles are commonly used or
sold together and hence, may constitute a set. Table 2 of the Design Law provides
several examples of what constitutes a set, i.e., a set of accessories used for
a sole purpose (for example, a set of sofas), a set of silverware or a set of related
appliances.
5.
Screen designs
In 2006, the
Design Law was amended to include operation screens (devices having screens
mounted thereon, such as phones, printers, televisions, washing machines,
etc.). These screens constitute a part of the entirety of the product, may
provide functionality to the product, and thus, may be protected.
II.
Points to Consider regarding the Design Law
There are relatively
few judgments in lawsuits seeking injunctions or damages for infringement of a design
right. Between 2014 and 2016, five judgments were issued for lawsuits involving
partial designs.
Generally, by
obtaining a registration for a partial design, products and articles which
appear quite dissimilar when viewed as a whole may actually have parts that
infringe on a partial design right. Multiple partial design registrations
should be considered to properly protect a product or an article, as numerous products
and articles are comprised of parts which are strikingly similar in design. The function and the purpose of the other
parts of the product or article may also be used in infringement litigation.