The Japanese Design
From July 1998 issue of COPYRIGHT WORLD
| On April 24, 1998, the Design Law Amendments bill for strengthening
design protection was passed through the Japanese Diet. This law, which
had not been amended for forty years, shall come into force on January 1,
Background and Introduction to the Design Law Amendments
The current Japanese design law which came into existence in 1959, has remained
unchanged for almost forty years. During this period, with active introduction
and application of Western technologies and concepts, Japan has come to
achieve remarkable growth. In step with this growth, the power of Japanese
industrial designs has likewise made conspicuous forward strides.
However this forty year old law has not only ceased to be applicable to
recent developments in industrial designs, it moreover fails to sufficiently
provide adequate design protection that would be required to foster further
upward expansion in the level of industrial design creativity. It was precisely
the need to provide remedies for these inadequacies that gave rise to the
creation of these amendments to the design laws.
The purpose of these amendments is to; provide more comprehensive and enforceable
design rights to protect the creativity behind highly creative designs,
introduce a system capable of accommodating and responding to the globalisation
of economic activity and, introduce a system whereby the applicant may obtain
comprehensive design rights by carrying out simple application procedures.
In the following discussion, the amendments have been divided into three
sections namely, (1) Amendments to the registration requirements, (2) Introduction
of new systems and, (3) Amendments to the application procedures.
(1) Amendments to the Registration Requirements
1.1 Increase in the level of creativity required for registrability (Amendment
to article 3 section 2)
The current article 3 section 2 establishes that a design may not be registered
if this design, irrespective of its degree of novelty, has been able to
be simply created by a person with ordinary skill in the art, using configurations,
patterns and colouring, either individually or in combinations thereof,
which are widely known in Japan. The current article 3 section 2 forbids
the registration of a design if this design has been able to be simply created
by a person with ordinary skill in the art using widely known designs, motifs
and so forth (configurations, patterns and colouring, either individually
or in combinations thereof) and that essentially, creativity is a prerequisite
However under this current law, it has not been possible to reject the design
application that have been able to be simply created by a person with ordinary
skill in the art using designs, motifs and so forth which are publicly known
(however, not widely known) in Japan. In other words, the level of creativity
required for registrability was too low.
The amendment to article 3 section 2 establishes that a design may not be
registered if this design has been able to be simply created by a person
with ordinary skill in the art using designs, motifs and so forth which
are publicly known in Japan or in other countries. This amendment shall
thus raise the level of creativity of protected designs.
1.2 Removal of Registrability of Designs Based Solely Upon the Functions
of an article (Amendment to article 5 section 3)
The current design law protects those designs in an article which are in
the form of configurations, patterns and colouring, either individually
or in combinations thereof, and which may be considered to have aesthetic
visual beauty. Accordingly, this law is not required to provide protection
to configurations which have been derived as a natural consequence to the
function of an article nor to designs which do not essentially possess aesthetic
creativity. Furthermore, protection of such designs would give rise to cases
when the design law would be used to protect technological designs which
rightfully ought to be regarded as in the jurisdiction of, and protected
by the patent law. In addition, in the event that the article in question
is used connected to another article, there would be functional limitations
placed upon the configuration and dimensions of interconnection members.
Accordingly, design law protection of the configurations and dimensions
and the like of these interconnection members would result in design rights
being inappropriately imparted to their functions.
Therefore, the amendment to article 5 section 3 establishes that designs
based solely upon the functions of an article may not be registered.
1.3 Removal of Prior Application Status for Abandoned or Rejection Confirmed
Applications(Amendment to article 9 section 3)
Due to the current design law providing prior application status to applications
even such as those which have been abandoned or whose rejection has been
confirmed, the following problems have arisen.
Despite a design possessing sufficient creativity and bearing no resemblance
with reference to widely known designs, an application for this design would
be refused if it is found to resemble a prior application for a design that
had been abandoned or whose rejection had been confirmed. In addition, any
subsequent applications based upon this thus refused application would successively
be refused (chain rejection).
A 'black box' problem has furthermore arisen in which a later application
is rejected due to a prior application which was not published.
The amendment to article 9 section 3 solves the above problems in establishing
that applications for designs that had been abandoned or whose rejection
had been confirmed may not be titled with prior application status.
(2) New System Introduction
2.1 Introduction of a Partial Design System with Respect to an Article
Part (Amendment to article 2)
Under the current design law, design rights cannot be obtained for designs
of a part of an article. Therefore, even though a part of an article having
an original and distinctive design is copied by a third party, design rights
for the whole article would not extend to that part unless the third party
copied the entire design of the article.
This amendment provides for registration of a part of an article.
When submitting an application, the part for which protection is required
should be marked on the drawing with a heavy solid line so as to distinguish
it from the remaining part which should be marked with a broken line. It
should be noted that in the event that the design application for a part
of an article resembles that for the entire application, any further applications
shall be rejected. In addition, if an application for the entire article
is submitted prior to the application for a part of that article, even though
they may be dissimilar to each other, the latter shall be rejected (amendment
to article 3 section 2).
2.2 Introduction of Associated Design System (Amendment to article 10)
Under the similar design system in the current design law, an applicant
may register a design which resembles only his own main original registered
design (principal design)(article 10 of the current law). However, as the
similar design Is used to define only the scope of the registered original
design in case of infringement litigation, judgement shall not be made as
to whether infringement against the similar design is constituted or not.
This is due to the fact that the current law does not specify the degree
to which design rights of similar designs themselves may be enforced.
Under the amendment, the similar design system shall be abolished and replaced
by the associated design system which establishes the degree to which design
rights of associated designs themselves (designs similar to the original
design) may be enforced. Accordingly, rights infringements caused by associated
designs shall be able to be redressed.
Caution should be exercised when applications for both the main original
and the associated designs must be submitted on the same day. If the applicant
claims priority right with respect to his application, failure to ensure
that the priority date is the same for both applications shall result in
the associated design application being rejected.
Furthermore, the establishment of design rights transfer, pledge rights
and exclusive licenses for associated designs should be conducted concurrently
with that for the main original design (amendment to article 27 section
2.3 Amendment of the Set of Articles Design System (Amendment to article
The current design law includes a system for registration of the design
of a set of articles (article 8 of the current law). However, this system
only provides design rights to the set of articles as a whole and despite
the non-provision of rights for each individual article, registration requirements
have been determined therefor.
Furthermore, the copying of system designs (designs which are created and
designed by combining different kinds of articles systematically) has been
frequently and insidiously carried out in which little by little, alterations
have been added to the design of component articles resulting in the whole
set of articles no longer appearing as a coherent entity. Consequently,
even though design rights have been obtained for the component articles,
there has been considerable difficulty in exercising these rights.
The current design system for a set of articles has been therefore amended
and under which, the registration requirements for individual component
articles shall not be examined independently and rights may be exercised,
as they were originally, for the set of articles as a whole entity.
It has also been decided to widely increase from the current number of thirteen,
the range of the names of the articles in the set which may be registered.
It should be noted that if an application for the component articles of
a set is submitted subsequent to the submission of the application for the
whole set, this second application shall be rejected, even though the applicant
was the same person for each (amendment to article 3 section 2).
(3) Amendment to the Application Procedures
3.1 The requirements for petition and drawings have been diversified
Under the current law, a set of drawings each drawn up to the same scale
using orthographic projection was required.
Under the amended law, in addition to accepting a wider range of drawings
and drawing expressions, the requirements have been simplified in that a
minimum number of drawings that can adequately and clearly depict the design
should be submitted.
For example, drawings only showing a perspective view would suffice and
the currently not accepted use of shadow shall be accepted. In the petition,
a verbal description of the configuration and so forth shall be permitted.
The choice of drawing expressions shall be left up to the applicant however,
the applicant shall take responsibility for any losses attributed to a protected
design not being sufficiently disclosed.
3.2 The applicant shall be able to state the characteristics of his design.
The applicant shall be able to indicate the characteristic parts of the
design and such statements shall be included in the design publication however,
the examiner shall only use these for reference purposes.
The inclusion of the design's characteristic parts is not compulsory and
may be omitted if desired. In addition, submissions may be made at any time
during the examination or trial stages.
(c)1998 Hideo Furutani. The author is a patent attorney
with the company Furutani Patent Office, Osaka, Japan.
(c)1997 HIdeo FURIUTANI /
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