14

Designs - the Underestimated Weapon
against Product Piracy(*)
Invited Researcher: Stella PADOVANI(**)

Designs are Intellectual Property rights meant to protect the aspect of industrial products and play afundamental role in the society, encouraging innovation and increasing market’s competitiveness. They are vitalfor companies, as they add value to industrial products and stimulate the demand for new appealing items, andfor consumers, as they enable the assortment of various similar products satisfying the demand of appealing
items as much as possible and enlarging the possibility of choice among price differentiated industrial products.
Design rights are exclusive absolute rights, excluding all third parties from their commercial exploitation. They
thus are the suitable tools to effectively protect against imitation of products. Nevertheless these rights represent alimitation to the competition, which is based on the undisputed principle of freedom. The balance between thefreedom of imitation and the exclusive right onto the shape of industrial products is essential for the healthy
growth of the globalized market and the protection of all interest involved. It is therefore essential to understandthe requirements allowing the rise of the exclusive design right and determine its scope of protection. European
design law and Japanese design law seem to set forth different requirements allowing the protection of design
and most of all its enforcement. Both jurisdictions, though, seem not to have clearly determined yet therequirements set forth by the respective design systems. The purpose of this research is to comparatively analyze
how the scope of protection of design right is established within European Union and Japan, highlighting the
problematic aspects, if any, and trying to establish whether the protection recognized to designs is satisfactory
against the product piracy.

Ⅰ Introduction

and whether some adjustments should be needed
to enhance designs’ protection and enforceability.

Design rights are competition tools, enhancing
innovation and industrial development. They
concern the outward aspect of industrial products,
combining appearance and functionality.
The role of the appearance of products on themarket is undeniable: consumers refer to it tojudge the benefits they gain from purchasing
products.
Designs recognize their owners the exclusive
rights to commercially use the designs and represent
exceptions to the principles of competition.
Taking inspiration from the state of art iscommon. It is tough to establish when this act
becomes something proceeding. The unlimited
possibility to imitate third party’s products would
not incentive innovation.
For the healthy growth of economy and toenhance designs’ strength as market tools is
important to clearly determine the requirements
for the rising and enforcement of these rights.
Aim of this research is to analyze design
rights’ protection as achieved in Europe and Japan,
verifying whether it is satisfactory for companies

Ⅱ European Design Law
1

Law framework

European Union (following referred as EU)
achieved a certain level of harmonization between
the Member States through the European
Directive 98/71/EC on the legal protection ofdesigns (following referred as the Directive) andthe European Council Regulation on Community
Design No. 6/2002 (following referred as CDR),
establishing a unitary Communitywide law ofregistered and unregistered designs.
CDR objectively defines designs focusing on
their outward appearance, without any reference
to aesthetic or artistic values, as it was the casesof the previous design laws of Italy and Germany.
Design is the “appearance of the whole or apart of a product resulting from the features of, inparticular, the lines, contours, colors, shape, texture,
and/or materials of the product itself and/or
ornamentation”1.

(*) This is a summary of the report published under the Industrial Property Research Promotion Project FY2012
entrusted by the Japan Patent Office.
(**) Attorney at Law, Italian and European Trademark Attorney before IPTO and OHIM, Jacobacci & Partners, IP Law
and Consulting Firm, Italy●

IIP Bulletin 2013 Vol.22

1 ●Requirements giving raise to design rights
are novelty and individual character, similarly
defined by the Directive and CDR and by thenational laws of the Member States, following thecommon principles of the Directive.
Novelty is defined in terms of relative
novelty; individual character is the different
overall impression produced on the informed user,
taking into consideration the degree of freedom of
the designer2.
Designs’ protection extends to any shapes
characterized by a non different individual character.
These concepts determine designs’ validity
and scope of protection and represent new
requirements in respect to the provisions set
forth by the previous national laws of EU Member
States.
2

Scope of protection: new introduced
requirements

Designs’ enforcement is based on individual
character, overall impression, informed user anddegree of freedom of the designer.
The EU Acts do not concretize theserequirements and there is still uncertainty as totheir concrete meaning and to a consistent set ofprinciples to refer when applying CDR andnational design laws deriving from the Directivein the most possible harmonized way.
(1) Individual character, overall impression,
evaluation criteria
The individual character is the set ofcharacteristics allowing the design to distinguishitself from the shapes of products already existingon the market.
It is given when the overall impression
arising from the relevant design and perceived by
the informed user differs from the one given to
the same informed user by known designs or byalleged infringing products.
The overall impression shall not communicate
the informed user the feeling of something alreadyseen.
Aim of this requirement is to ensure a time
limited protection for shapes having an impact on
the market, leaving common or neutral shapes
lacking in individuality to the public domain.
Determining the individual character is thehardest and crucial challenge in infringement
judgments.
The reference to the overall impression
suggests that designs shall be considered as awhole throughout a synthetic judgment. The●

comparison has to be made from the point of viewof the informed user who is expected to be able tocatch differences in the shapes which would
escape to the average consumer’s attention, andshall consider each shape as a whole in order toestablish whether their overall impression isdifferent.
The different overall impression shall be
determined by the most attractive features of thedesigns.
The informed user is someone that uses the
product according to its intended purpose and is
attracted by those features distant from common
shapes and most exposed to user’s feelings
during the normal use.
EU design system focuses on the overall
impression and does not explicitly refer toproducts as a parameter to consider in validity or
infringement judgments.
If the market through the informed user
perceives that the overall impression of theenforced design is not different from the one of
the allegedly infringing design, an infringement
has to be found even if the nature of products towhich both designs refer is different.
In the Japanese system products are strictly
considered in the judgment of infringement. In
these terms EU system seems abstractly more
flexible than the Japanese one, relying only on theperception of the overall appearance perceived by
the informed user.
(2) The informed user
He is the yardstick on which design ’ s
individual character is target and determines
designs’ scope of protection. He seems to recall
the average consumer known by the trademark
law. Nevertheless the adjective “informed” recall
as well to the expert, known by the patent law,whose level of knowledge and attention is higher
than the one of the average consumer.
To be informed the user should know theexisting design corpus “taking into consideration
the nature of the product to which the design isapplied or in which it is incorporated, and inparticular the industrial sector to which it belongs3.
In various decisions rendered by the Court ofJustice of the European Union (following referred
as ECJ) this hypothetical character has been
defined in a negative way: he is neither a designer
nor a technical expert, manufacturer or seller ofthe products in which the designs are intended to
be incorporated4.
He has knowledge of the designs and theirfeatures in the sector concerned and shows a
2 ●IIP Bulletin 2013 Vol.22

relatively high degree of attention when using therelevant products because of his interest.5
This character is someone between the
average consumer and the expert, whose specificfeatures is assessed on a case by case.
In the lack of EU common principles, theabove might be detrimental to the legal certaintyof the scope of protection of design right and tothe outcome of infringement actions.
(3) Influence of the degree of freedom on
the scope of protection
The degree of freedom of the designer indeveloping the design is considered whenassessing the individual character.
The space for the development ofcharacterized designs might be narrowed by thecrowded art or by functional features necessary
for the products to perform their functions.
Prevailing consumer demand, trend of the
field, ergonomic factors, manufacturing andproduction costs shall not be considered limiting
the degree of freedom. It is indeed the distancefrom common or expected features that leads
designs to be strongly individually characterized.
The reference to the degree of freedom
enables protection of shapes having a low
individual character and allows enforcement ofthese rights against almost identical shapes.
3

Critical considerations

It is questionable whether the requirements
set by the current design law, responding to thedemand coming from the industries for a wider
protection of the appearance of industrial
products, are satisfactory for design rights’owners, especially in technical fields.
In order to enhance designs’ protection andto satisfactory protect their market value, it
seems proper to reconsider them under a stricter
approach: by specifying the degree of individual
character necessary for shapes to access todesign protection, determining their scope ofprotection in terms of “significant difference” anddefining the informed user as the user of therelevant product, averagely informed on thedevelopment of the state of the art, excluding a
too high knowledge.
Only those shapes significantly distinguishthemselves from prior art, also in crowded andtechnically characterized fields, would be worth
to be object of exclusive rights, gaining
consequently a broader scope of protection.
Infringement would be excluded only in case of●

IIP Bulletin 2013 Vol.22

significant different overall impression.
The above would seem to comply with theprinciples ruling competition, as shapes notstrongly characterized could be protected throughunfair competition law if its requirements are met.
Interest of the general consumer to quality andpriced competitive products of the same type
would also be ensured, as well as innovation.
Companies would be forced to develop particularly
characterized shapes in order to obtain the time
limited exclusive right to commercially exploit
industrial products bearing them.

Ⅲ Protection of design in Japan
Act No. 125 of April 13, 1959 establishes theprotection of industrial designs (following referred
as JDA), imprinted on the patent approach6.
The purpose of protecting designs is tocontribute to the development of industry, as
explicitly recognized by the JDA.
Designs are defined with reference toaesthetic impression, border line differentiatingthem from utility models. Aesthetic impression issomething able to capture consumers’ attention
towards the industrial product and seems similar
with EU individual character.
JDA provides for formal and substantive
examination
proceeding,setting
strengthrequirements for the establishment of the right.
Unregistered design is not contemplated and isprotected through unfair competition law.
1

Novelty

Absolute and objective novelty is defined interms of identity or similarity with prior disclosed
designs .. Reference point is the consumer’s
aesthetic perception.
It is still disputed what shall be the basis of
the judgment on similarity. Reference is usually
made to the aesthetic of the elements to which
the general consumer would pay attention.
There are different views on who should be
the yardstick of this judgment, relevant todetermine design’s validity and scope of protection.
JDA refers to “juyosha”, closed to theEnglish words “observer” or “user” of the productincorporating the design. In validation andinfringement cases the yardstick shall thus be theobserver, the user, the industrial buyer, the trader,whose level of attention and knowledge is higher
than the one of the general consumer.
Identity and similarity of products are also
considered in the judgments of novelty or
3 ●infringement, though no reference is made by JDA.
2Creativity

Creativity excludes from registration those
designs that a person ordinarily skilled in the art
would have been able to easily create based on
the outward appearance of prior publicly known
designs.
Since it is not considered in the judgment on
infringement, there seem to be a discrepancy
between the establishment of the right and its
enforcement.
3

Scope of protection

Design right is the exclusive right tocommercially exploit the registered design anddesigns similar thereto. Similarity refers to theaesthetic impression created by designs in theeye of the consumer.
The judgment on infringement considers
identity or similarity of designs and identity orsimilarity of products, not creativity. No
infringement is to be found in the lack of similaraesthetic impression, even if the alleged
infringing product could have been easily createdby the person ordinarily skilled in the art.
This judgment faces the same concerns ofnovelty as to the definition of aesthetic impression,
consumer, similarity and relevance of products.
In particular, the theories of creation, confusionand demand side, have been trying to highlightthe base of the judgment on similarity7.
Most of the Case Law seems to share thetheory of confusion, stating that the purpose of
the design act is to prevent confusion towards
consumer and/or traders.
Controversial issues are the reference only
to the requirements of identity or similarity, therelevance of products and the reference toconsumer, those characteristics are not generally
determined but evaluated on a case by case withthe consequence of legal uncertainty on theoutcome of judgments and on design’s scope ofprotection.

Ⅳ Case Law
1European Case Law

Case Law of EC is still rare and thus there is
uncertainty and ambiguity how individual
character, informed user and overall impression
shall be uniformly interpreted and applied.
●

ECJ ruled on CDR and stated some common
principles only 10 years after its coming into
force, ruling in case C-281/10 8.
In this decision the ECJ identified theinformed user as someone familiar with therelevant products, having some awareness of theprior art and being between the average
consumer and the expert of the sector.
The comparison between designs might bebased on the imperfect recollection of theelements constituting the questioned design andnot necessarily has to be a direct comparison9.
Similar principles were applied also in afurther decision concerning the shapes of a sitting
figure10.
This research analyzes as well cases holdbefore the General Court of the European Unionand the national Courts of Italy and Germany.
2

Japanese Case Law

JDA defines the scope of protection in termsof similar aesthetic impression to the eyes of theconsumer.
The broader protection which would seem tobe recognized to registered designs by JDA thanthe one accorded by EU law is tempered by thesubstantive examination applied by JPO.
When it comes to enforcement, it isquestionable whether the scope of protection ofregistered designs is as broad as the law leads tothink.
From the analyzed Case Law it seems thatthe parameters to consider in judgments on
infringement are unclear, depending to a large
extent on the concrete cases.
Especially in respect to the yardstick toestablish similarity and to his level of knowledge
and attention in examining designs there are nocommon rules.
Courts seem to adopt different definitions ofconsumer: operator, end-consumers, general
consumer, purchaser, spectator, trader, user11.

Ⅴ Comparison of design systems
Relevant differences between EU andJapanese systems concern novelty, similarity andthe yardstick to consider in the validation andinfringement judgments.
Japan grants registrations after a substantive
examination.
Absolute novelty and creativity seem to giverise to protection to designs that represent
significant improvements in respect to prior art.
4 ●IIP Bulletin 2013 Vol.22

Designs seem though to be strictly bounded
to the product referred to in the application. The
examination is based on a rigid approach,evaluating the relationships between shapes andproducts with reference to consumer and the noneasy creation for the person skilled in the art. On
the side of enforcement, protection is recognizedon the sole base of lack of identity or similarity ofaesthetic impression for the consumer, without
reference to creativity.
The characteristics of the consumer are not
fixed by JDA and depends on the concrete case sothat is not possible to reasonably predict theoutcome of the judgment, unless in case ofidentity or almost identity of both designs andproducts.
In evaluating the aesthetic impression
Courts consider the identity or similarity
between the products to which the enforced
designs refer and the alleged infringing products.
The items to which the designs refer are
deemed to be identical or similar according toeither their purpose of use or function.
Japanese Courts seems thus to refer to
confusion between products as perceived byconsumers.
The Directive and CDR did not introduce a
substantive examination procedure and designs
are granted after a formal examination. It seems
though easier for applicants to obtain a registered
design right in EU than in Japan.
Novelty is defined in a more narrow way thanthe JDA, namely in terms of relative novelty andlack of identity between the applied design andthe prior art or the alleged infringing product.
Excluded from novelty are differences concerning
immaterial details.
Though through the individual characterfeatures not affected by novelty might become
relevant, still the former seems more exposed tosubjective evaluations. In the infringement
judgment is up to the ability of the parties todetermine Courts’ convincement on the different
overall impression.
The indication of products made in theapplication is not per se relevant for determining
the scope of protection: in the EU system central
is the individual character of the shapes asperceived by the informed user. Design rights
theoretically extend to all later designs notproducing on the informed user a different overall
impression, irrespectively from the industrial
fields.
Though in practice the informed user islikely to consider products in order to establish●

IIP Bulletin 2013 Vol.22

the overall impressions, nevertheless infringement
is not ex ante excluded because of different
products.
The level of knowledge and attention of theinformed user is higher than the one usuallyconferred to the consumer.
The consequence of informed user’s vague
characteristics, defined depending on the specificcase, brings to legal uncertainty of designs’ scopeof protection, detrimental for design right owners
and third party.
It would seem that the same design is more
likely to be enforced according to JDA, referringto the consumer who is not likely to perceive
differences between designs under comparison,
which would be on the opposite caught by the EU
informed user.
The above seems though to be tempered by
Japanese substantive examination.
The strict reference to products, the solereference to identity or similarity and theconcretization of consumers’ characteristics on acase by case, lead to conclude that design rights’owners struggle to successfully enforce theirrights also in Japan.

Ⅵ Conclusion
EU and Japan base the requirement
establishing design’s protection on similar
concepts, though differently expressed in therespective Acts, and face similar difficulties indetermining them.
Japanese aesthetic impression created by thedesign to consumers is comparable to EU overall
impression; the features of the Japanese
consumer are defined on a case by case basis as
the ones of the EU informed user.
Common in both jurisdictions is the lack ofcommon principles, especially concerning thecharacteristics, level of knowledge and attentionof the yardsticks to refer to in determining
designs’ scope of protection.
In both countries the discussion is open on
these issues, extremely relevant to consider
design as tool protecting the outward appearanceof products and to recognize satisfactory
protection to design’s owner based on clear andsettled principles, avoiding reference toconfusion.
The risk to consider the informed user or
juyosha too close to the general consumer is toenlarge the protection of design and to base thejudgment of overall impression or similaraesthetic impression on confusion, with5 ●

detriment to the value of designs as competition
tool.
On the opposite, qualifying the characters of
the informed user or juyosha as particularly
careful observers, with high knowledge of therelevant field and able to catch the differences
between features, narrows design’s scope ofprotection, leading to its protection mostly in caseof identical shapes, which is detrimental for
design owner.
The need for a balance between a satisfactory
enforcement of exclusive designs rights as market
tools and the rules of competition is felt by bothjurisdictions.
At EU level, after the ECJ’s decision C-281/10
is clear that the informed user is someone in
between the general consumer and the expert.
It is now to see how the IP Specialized
Courts of the Member States will apply ECJ’s
principles.
Japan seems as well aware of the opportunity
to refer to a character between consumers andexperts, avoiding references to general
consumers, though it would be helpful having theSupreme Court clearly stating this.
Designs in the terms analyzed by thisresearch seem to be good tools to protect shape’s
attractiveness against identical or almost identicalproducts, which is a satisfactory result, since
taking actions on the base of registered designs iseasier in terms of burden of proof than enforcing
unregistered designs or acting on the base of
copyright or unfair competition.
Nevertheless designs could recognize theirowners a broader scope of protection both in EU
and in Japan, extended to designs giving
respectively raise to non different overall
impression and to similar aesthetic impression.
Render this scope effective would strengthen
designs as competitive market tools, enhancing
the protection of companies’ investments.
For the above purpose it might be proper toregain a stricter interpretation of the requirements
giving raise to design rights and to theirenforcement, by for instance: requesting asignificant different overall or aesthetic impression
to exclude infringement; avoiding protection
strictly bounded to products; clarifying that the
informed user/juyosha is someone between
consumer and expert, establishing ex ante his
average characteristics and determining concrete
categories to refer in concrete cases (web forum
belonging to the relevant fields; journalists of the
fields; subscribers of magazines of relevant fields,
ect).
●

The issue is challenging. The self awarenessof EU and Japan on these issues, the results
achieved so far towards harmonization and theongoing comparative studies between EU andJapan are though the right steps for a more
unified and smooth designs’ protection andenforcement.
1

Article 3, I, a) CDR.
Article 5 of the Directive; Article 6 CDR.
3
Whereas No. 13 of the Directive and No. 14 of the CDR.
4
EU General Court's decision in Case T-10/08, ofSeptember 9, 2011. Source:
http://oami.europa.eu/ows/rw/resource/documents/RC
D/case-law/jj080011_en.pdf.
5
ECJ's decision in Case C-281/10P, of October 20, 2011.
Source:http://oami.europa.eu/ows/rw/resource/documents/RCD/case-law/jj100281_2_en.pdf .
6
See Design Law, by P. Ganea, op. cit., p. 461.
7
See Establishing Infringement of Design Rights and thenecessity of visibility of the protected design - Limits to theeffect of design Rights to Components, Kenji Yamaguchi,
in A.I.P.P.I, vol. 30, No. 2/2005, pp. 70. The Author
proposes to rename the sub-category of the theory of
confusion in “Theory of the Demand Side”. See op. cit., p.
72. Furthermore Similarity of designs, Tomoji Yamada,Shin Saiban Jitsumu Taikei 4 Chiteki Zaisan Kankei
Soshôhô, pp. 374.
8
Decision of October 20, 2011. Source
http://oami.europa.eu/ows/rw/pages/RCD/caseLaw/appe
alsCFI.it.do as per March 1, 2013.
9
PepsiCo argued that the EUGC had failed in relying on
the imperfect recollection of the questioned designs on
the side of the informed user, rather than on a directcomparison.
10
Cases C-101/11P and C-102/11P, H. Neumann, A.
Galdeano and OHIM vs J.M. Baena Grupo SA, decided
on October 18, 2012. The cases involve a figurative
TM. In the decisions, though, designs' requirements
were applied. Source:
http://oami.europa.eu/ows/rw/resource/documents/RC
D/case-law/jj110101_2_en.pdf.
11
Reference is made to the following judgments, kindly
provided by Mr. Chikashi Yoshida, Patent Attorney atSuzuye & Suzuye, Tokyo: Osaka District Court,
February 20, 2001 Heisei 11 No. 11203; Osaka District
Court, April 5, 2001, Heisei 12 No. 2240; Tokyo High
Court, June 27, 2002, Heisei 13 No. 5158; Tokyo
District Court, August 28, 2002, Heisei 13 No. 26362;
Tokyo District Court, January 31, 2003, Heisei 14 No.
5556; Osaka District Court, December 15, 2005,
Heisei 16 No. 6262; Intellectual Property High Court,
October 31, 2005, Heisei 17 No. 10079; Tokyo District
Court, March 16, 2007, Heisei 18 No. 9943; Tokyo
District Court , April 18, 2007, Heisei 18 No. 19650;
Tokyo District Court, October 30, 2008, Heisei 20 No.
1089; Osaka District Court, November 5, 2009, Heisei
21 No. 2726.
2

6 ●IIP Bulletin 2013 Vol.22