Investing in Japan
How to Set Up Business in JapanSection 5. Trademark and Design Protection Systems
5.7 Protection of designs
5.7.1 Scope of protection
Under Japan's Design Law, protection is available for the form, pattern or color of an object or a combination of these, which appeals visually to the viewer's sense of aesthetics. Put simply, Japan's system protects the shape, form and external appearance of an object.
- Visual appeal to aesthetic sense
Objects whose form cannot be recognized by the human eye, such as a single grain of powder, do not meet this criterion.
- Industrial usability
The design must be able to be recreated using an industrial (mechanical or hand-based) process and must be able to be mass-produced.
- Visual appeal to aesthetic sense
- Examination criteria
No identical or similar design must have been in existence before the application was made; in other words, the design must be completely new.
- Ease of creation
No design that is adjudged to be lacking creativity will be registered, regardless of whether or not it is new.
Designs that are either identical or similar to other designs for which applications have been filed or which have been registered are not deemed to be newly-created designs, and will therefore not be registered (except for the application filed by the same person).
From a standpoint of public interest, the following designs will not be registered.
- Designs that may breach public order and morals.
- Designs that may cause confusion with any item pertaining to the business of any other person.
- Designs consisting of only the minimum form necessary to ensure the functions of the object.
- One design per application
Discrete applications must be made for each design. In some cases, however, several objects may be deemed to comprise a "design of a set of objects" as long as certain criteria are met.
If more than one application is filed for the registration of two identical or similar designs, the application filed first will be eligible for registration. If the same person files two identical or similar design applications within a certain period, one of which is deemed as the original design and the other is deemed as a related design, both designs will be eligible for registration under the related design system.
5.7.2 Term of protection
Protection of design rights begins once a design is registered, and continues for 20 years. However, it is important to note that, contrary to trademarks, it is necessary to pay an annuity each year in order to maintain protection. Furthermore, while design rights generally lapse upon the passing of 20 years, if the form of the registered object becomes famous, it is possible to receive protection under the Unfair Competition Prevention Law even after design rights lapse.
5.7.3 A protection system unique to Japan
Japan's Design Law provides a system of protection that is very unique to this country. Below are some major examples of this.
- Related design system
Under Japan's Design Law, not only are designs originally registered in relation to a certain object protected, but similar designs related to that object and filed in a certain period are also protected. However, if you feel that official advance confirmation is required regarding the extent to which your design is similar to the one registered, you may register your design as a "similar design."
- Design of a set of objects
Under the provisions of Japan's Design Law, design applications and registration usually follow a one-design-per-object principle, however there is an exception to that rule. This exception allows for discrete objects that common sense dictates are usually sold as a set—a knife, fork, and spoon, for example—to be registered as a single design of a set of objects. Intelligent use of this system has the advantage of helping keep costs to a minimum.
- Secret designs
When a design is registered, it is generally published in the Design Gazette, however Japan offers a system that allows a registered design to be kept a secret for a certain period upon application. This is known as the "Secret Design" system. Because designs are influenced so strongly by fads and fashions, and because some products' periods of popularity tend to end sooner than others', this system aims to protect the rights of the design-owners for a certain period of time. It should be noted, however, that this system tends to limit litigators' options when suing for infringement of rights, and so the system is used infrequently at best.
- Partial designs
Because traditionally design rights have protected an entire object, protection could not be guaranteed against infringement by people who copied only parts of a design. However, under a revision to the law in 1998, the partial design system was introduced allowing registration of parts of shapes or forms with distinct characteristics. Thus, while it used to be that if somebody copied only part of a design they would escape prosecution as long as the overall design was not similar, the new system allows registration of partial designs, meaning that infringements can be prosecuted. Indeed, this is one of the most important aspects of Japan's Design Protection system.
- Protection of screen designs
According to a revision of the Design Law in 2006, screen designs (such as the designs of operation screens for programming DVD recorders, operation screens for selecting a person to call on a cellular phone, and photo printer setup screens) under the certain conditions are now protected within the scope of designs which forms a part of goods.