Changes in Japanese Design Law

Tomoya Kurokawa Japan Patent Attorneys Association

Introduction The Japanese Design Law was amended in 2019, and is awaiting enforcement. The main points of the amendments are covered in the following sections, specifically: (1) Enlargement of the Scope of Protection (2) Enhancement of Related Design System (3) Extension of Protection Period (4) Multiple Designs in a Single Application

(1) Enlargement of the Scope of Protection Under the current law, protectable “design” means the shape, patterns or colors, or any combination thereof, of an article (including a part of an article), which creates an aesthetic impression through the eye (Article 3). On the other hand, under the amended law, protectable “design” means the shape, patterns or colors, or any combination thereof, of an article (including a part of an article), or of a building (including a part of a building), or a graphic image (including a part of a graphic image), which creates an aesthetic impression through the eye (Article 3). Although protectable “graphic image” is limited to one (i) which is provided for use in the operation of equipment, or (ii) which is shown as a result of performing the function of the equipment, there are no limitations such as “displayed on the article” or “recorded in the article” as with the current law. Here are some examples of protectable design for buildings under the current law and the amended law. Under the current law, although building exterior/interior design is basically outside of the scope of protection, design for prefabricated house is protectable because it can be mass produced in the same manner as other industrial products.

Here are some examples of protectable graphic images under the current law and the amended law.

(2) Enhancement of Related Design System Under the current law, an applicant of a design (“principal design”) may file a design(s) that is similar to the principal design (“related design”) for better protection of a series of designs. However, the time period for filing a related design is limited to the period up until the publication of the registered principal design. Also, a related design can only be filed for a design that falls within the similarity scope of the principle design. The amended law allows the applicant of a principal design to file related design(s) up to 10 years from the filing date of the principal design. Also, a related design is not restricted to one that falls within the similarity scope of the principle design, but can also be filed for one falling within the similarity scopes of other related designs.

(3) Extension of Protection Period A registered design right shall expire 25 years from the date of filing the application under the amended law, instead of 20 years from the date of registration under the current law.

(4) Multiple Designs in a Single Application Multiple designs can be included in a single application under the amended law.

Date of Enforcement of the Amended Law “(1) Enlargement of the Scope of Protection”, “(2) Enhancement of Related Design System” and “(3) Extension of Protection Period” will be enforced within a year of the date of publication of the amendments (May 17, 2019). “(4) Multiple Designs in a Single Application” will be enforced within two years of the date of publication of the amendment (May 17, 2019).

Please note that a working group for the design examination guidelines under the amended law is now discussing the guidelines, and will finish by the end of the year. Changes in Japanese Design Law

Japan Patent Attorneys Association Tomoya Kurokawa

Overview

 Enlargement of the Scope of Protection

 Enhancement of Related Design System

 Extension of Protection Period

 Multiple Designs in a Single Application

 Date of Enforcement of the Amended Law

1 Enlargement of the Scope of Protection (Protectable subject matter) Current law “Design” means the shape, patterns or colors, or any combination thereof, of an article (including a part of an article), which creates an aesthetic impression through the eye.

Amended law “Design” means the shape, patterns or colors, or any combination thereof, of an article (including a part of an article), or of a building (including a part of a building), or a graphic image (including a part of a graphic image), which creates an aesthetic impression through the eye.

Enlargement of the Scope of Protection (Protectable under both of the current law and amended law)

Current law & amended law

Reg. No. 1216695 Reg. No. 1357592 Reg. No. 1223673

Reg. No. 1158732 Reg. No. 1365682 4

2 Enlargement of the Scope of Protection (Building exterior and interior design) Amended law

Current law

Building exterior design

Prefabricated house

Building interior design 5 * The pictures above are cited from the JPO website.

Enlargement of the Scope of Protection (Graphic images) Current law 1. A graphic image on a screen of an article, wherein (1) the graphic image is for making necessary indications for performing the functions of the article, and (2) the graphic image is recorded in the article. Examples

Wrist watch body Digital camera (level indication) 6 *The pictures above are cited from the JPO website.

3 Enlargement of the Scope of Protection (Graphic images)

Current law 2. A graphic image on a screen of an article, wherein (1) the graphic image is provided for use in the operation of the article in order to enable the article to perform its functions, (2) the graphic image is displayed on the article itself or another article that is used with the article in an integrated manner, and (3) the graphic image has been recorded in the article. Examples

Magnetic disk recorder (Graphic image displayed on a television monitor) Mobile phone 7 *The pictures above are cited from the JPO website.

Enlargement of the Scope of Protection (Graphic images)

Amended law “Graphic image” is only limited to one which: (1) is provided for use in the operation of equipment, or (2) is shown as a result of performing the function of the equipment.

* There are no limitations such as “displayed on the article” or “recorded in the article.”

4 Enlargement of the Scope of Protection (Graphic images) Amended law

Current law

Graphic image stored on the cloud and provided via networks

Graphic image recorded and displayed on the article Graphic image projected on road 9 * The pictures above are cited from the JPO website.

Enhancement of Related Design System (What is the “related design system”?)

System for protecting variation in a design

Scope of similarity Principal design

Related design

The scope of protection can be expanded beyond the scope of similarity of the principal design to the scope covered by related designs. 10

5 Enhancement of Related Design System (Example of usage of the related design system)

Reg. No. 1377280 Reg. No. 1388978 Principal design Related design

Enhancement of Related Design System (Time and scope for filing related design) Current law Time Related design application can be filed

Filing of Registration of Publication of principal design principal design principal design (about 8 months from filing date)

Scope similar similar

Princip Relate al d design design 12

6 Enhancement of Related Design System (Time and scope for filing related design) Amended law Time Related design application can be filed

Filing of Registration of Publication of 10 years from principal design principal design principal design filing of principal design

Scope similar similar similar similar … Princip Relate Relate Relate Relate al d d d d design design design design design 13

Enhancement of Related Design System (Usage of the related design system under the amended law)

Relate d design Relate d design Relate d design Relate Designs developed based on d consistent concepts over time can be appropriately protected. design Princip al * The pictures above are cited from the JPO website. design 14

7 Extension of Protection Period

Current law A registered design right shall expire 20 years from the date of registration.

Amended law A registered design right shall expire 25 years from the date of filing the application.

Multiple Designs in a Single Application

Current law A single design can be included in a single application.

Amended law Multiple designs can be included in a single application.

8 Date of Enforcement of the Amended Law

• Enlargement of the scope of protection • Enhancement of related design system • Extension of protection period - within a year of the date of publication (May 17, 2019)

• Multiple designs in a single application - within two years of the date of publication (May 17, 2019)

*Working group for the design examination guidelines under the amended law is now discussing the guidelines, and will finish by the end of the year.

Thank you for your kind attention!

Tomoya Kurokawa [email protected]