4 Utilization of Industrial Property Right System for
Design-Centered Brand Building and Maintenance in Companies’
Business Strategies(*)
In a situation where Japan’s competitiveness is sharply falling, the Industrial Structure Vision 2010 was
prepared in order to break through the deadlock of the Japanese economy. The Industrial Structure Vision 2010
raised awareness of the issue that the business model of Japanese companies should be converted to succeed inboth technology and business. There is a growing recognition that utilization of designs is important in order to
win in business.
On the other hand, it has been pointed out that it is necessary to advance consideration on thestrengthening of the protection of key concept designs and the effective application procedures in the case ofpromoting branding through a combination of multiple designs, in order to achieve design-based brand building
and maintenance.
Therefore, we conducted this study for the purpose of considering the design system, which is effective fordesign-centered brand building and maintenance in companies’ business strategies through comparison withother countries and other intellectual property right systems. We also aimed to compile the methods ofstrategically utilizing the design system, etc. and to prepare basic data to be used in considering measures.

Ⅰ Introduction
1

Background and purpose of this study

As viewed from the perspective of theintellectual property strategies of Japanesecompanies, Japanese companies have come toadopt strategies in which they acquire and utilize
rights for technology, appearance, and names,
which are necessary for brand building andmaintenance, in a complex manner, not only on
the CI (corporate identity) level but also on the
product and service level. Furthermore, there is a
growing recognition that the utilization of designs
is important in order to win in business.
On the other hand, the Report of Fiscal 2009
Survey on the Trends of Design Applications
pointed out that it is necessary to advanceconsideration on the strengthening of theprotection of key concept designs, which arecontinuously used, and the application proceduresthat are effective in the case of promoting
branding through a combination of multiple
designs, in order to achieve design-based brandbuilding and maintenance. Moreover, the Expert
Committee in the Intellectual Property Strategy
Headquarters delved into the relationships(*)

between business strategies and mixing ofintellectual property rights (i.e., increasing thecompetitiveness of a company through a
combination of design rights, patent rights, andtrademark rights), and also pointed out thatfurther discussions should be held on desirable
industrial property rights.
Therefore, we conducted this study for the
purpose of considering the design system, whichis effective for design-centered brand building andmaintenance in companies’ business strategies.
We also aimed to compile the methods ofstrategically utilizing the mixing of intellectual
property rights and to prepare basic data to be
used in considering measures.
2

Method of conducting this study(1) Consideration at the committee
In order to achieve consideration, analysis,
and advice regarding this study from thespecialist perspective, a study committee wasestablished consisting of people of learning andexperience, patent attorneys, and intellectuals inindustrial circles. The committee meeting washeld three times in total.

This is an English translation of the summary of the report published under the Research Study Project on Issues
with Industrial Property Rights System FY2010 entrusted by the Japan Patent Office. IIP is entirely responsible forany errors in expression or description of the translation. When any ambiguity is found in the English translation,
the original Japanese text shall be prevailing.
●

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1 ●(2) Survey on domestic and foreign
documents
We gathered relevant information in andoutside Japan with the aim of it being used by thecommittee as basic data in considering problems
and as reference data in the domestic
questionnaire survey and the domestic andoverseas interview surveys.
(3) Domestic questionnaire survey
We conducted a relevant questionnaire survey,
targeting about 300 companies in Japan.
We sent the following two types ofquestionnaires to all companies subject to thesurvey.
Questionnaire for persons in charge ofintellectual property (in particular, design)
A. Outline of the company
B. Obtainment and exploitation of industrial
property rights and requests for the design
system
C. Intellectual property strategy for thecompany’s products for which the company
has succeeded in brand building andmaintenance (hit products)
Questionnaire for persons in charge ofdesigning (persons in charge of development)
D. Brand building and design activities
E. Intellectual property strategy for thecompany’s products for which the company
has succeeded in brand building andmaintenance (hit products)(4) Domestic interview survey
We conducted an interview survey, targeting
30 companies within Japan.
(5) Overseas interview survey
We conducted an interview survey, targeting
12 foreign companies (those in the United States,
Europe, and South Korea).

Ⅱ Design System for DesignCentered Brand Building and
MaintenanceinCompanies’
Business Strategies
1

Situation in JapanThe current Design Act provides for the
related design system as a way to protect key
concept designs (minor changes and derivative
designs). Under the related design system, anapplicant for design registration may register, as adesign that has an independent effect, a design●(related design) that is similar to another design(principal design) selected from the applicant’s
own designs for which an application for design
registration has been filed if the filing date of theapplication for design registration of the related
design is on or after the filing date of theapplication for design registration of the principal
design and before the date when the designbulletin for the principal design is issued. The
time restriction on the filing of applications for
related designs is provided for on the grounds
that it is absolutely appropriate to position
applications for related designs as exceptions toprior application before a design bulletin for the
principal design has been issued. On the other
hand, there is a view that the time restriction
should be relaxed so that applications for related
designs will not be deemed to be violating thenovelty requirement based on the principal designthat has become publicly known, for a few years
or during the duration of the right of the principal
design even after the principal design has become
publicly known through issuance of a designbulletin.
With regard to protection of multiple designs,
some suggested considering the introduction of
the single application for multiple designs system,
although one application per design is theprinciple under the current Design Act and an
application is subject to refusal if classifications of
two or more articles are stated in parallel in the“article to the design” column in the application
or if drawings of two or more articles areindicated.
2

Situation in other countries(1) United States
As a way to protect multiple designs, it isstipulated that a design patent application shall
include a claim for only one design, but may
include multiple embodiments of a single designconcept.
(2) Europe
As a way to protect multiple designs,
applicants are allowed to submit up to sevendrawing for one design. Applicants can describe
the variations of a design in seven drawings
within the scope of the design. In addition, as the
single application for multiple designs system isadopted, applicants are allowed to include
multiple designs that fall under the same class of
the Locarno Classification in one application.

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(3) South Korea
The scheduled partial revision of the South
Korean Industrial Design Protection Act wasannounced on March 31, 2010, in steady responseto the new needs of the industry, i.e., digitizationand globalization. The content of the revision is
supposed to radically change the conventional
concept of design and the scope of design right,
and seems to be intended to contribute tostrengthening the international competitivenessof South Korean companies through a national
effort to realize stronger design protection. This
revision bill did not pass the National Assembly inthe fall of 2010 (originally intended) due tovehement opposition by the Korean Patent
Attorneys Association. However, it passed the
National Assembly in April 2011, and is expected
to be put in force in January 2012.
3

Results of the domestic questionnaire
survey(1) Obtainmentandexploitationofindustrial property rights
We asked persons in charge of intellectual
property questions about (i) the number of
persons in charge of the intellectual property
department, (ii) searches on the designs ofcompeting products and the design rights ofcompetitors, etc. at the intellectual property
department, (iii) strategies for design applications,(iv) exercises of rights and licensing with the useof design rights, (v) relationships between
product planning/development and the design
rights of other companies, and (vi) requests forthe design system.
With regard to (vi) requests for the design
system, we asked what time restriction on thefiling of applications for related designs would bereasonable from the perspective of brand building
and maintenance (Question B-26).
Out of 94 persons that answered thequestion, the largest portion, 45 persons (about48%), selected “Current system (before the datewhen the design bulletin for the principal design
is issued) is reasonable.” Most of them cited “noproblem with the current system” as a reason.
Sixteen (17%) selected “Applicants should beallowed to file applications for related designs fora certain period (X years) after the filing of an
application for the principal design.” As areasonable “certain period,” 10 answered “oneyear” while five answered “three years.” Themajor reason for answering “one year” was that,
under the current system, the time limit changes●

IIP Bulletin 2011 Vol.20

depending on the length of the examination
period and it is thus difficult to plan a schedule,
rather than relaxation (extension) of the time
restriction. On the other hand, the major reason
for answering “three years” was that this lengthof time is necessary in consideration of the modelchange cycle of products.
Seven (about 7%) selected “Applicantsshould be allowed to file applications for related
designs for a certain period (X years) after thedate when the design bulletin for the principal
design was issued.” Among them, the major
reason for answering “within two years from thedate when the design bulletin for the principal
design was issued” was that variations may
increase after the design bulletin for the principal
design was issued. The major reason foranswering “three years or more after the datewhen the design bulletin for the principal design
was issued” was that this length of time isnecessary in consideration of the model change
cycle of products.
Eighteen (about 19%) selected “Applicantsshould be allowed to file applications for related
designs during the duration of the principal
design,” which will relax the time restriction
most. The major reason was response to modelchanges and minor model changes.
In addition, we asked about problems withthe current design system seen from theperspective of brand building and maintenance(Question B-28). A total of 89 answered thequestion, and the largest portion, specifically, 56(about 63%), cited “It is necessary to takeprocedures with respect to each design (costburden should be reduced through introduction ofa system under which multiple similar designs
can be included in one application (single
application for multiple designs)).”(2) Brand building and design activities
We asked persons in charge of designing(mainly those in charge of designs) questions
about (i) brand building, (ii) product design, (iii)
designers’ role in the product development
process in consideration of brand building, (iv)maintenance of brand in making model changes
and minor changes, and (v) products that aredeveloped into overseas business.
In answer to a question about matters towhich importance should be attached in terms of
products themselves and handling of products inorder to enhance the appeal of the products(Question D-5), more than 90% cited “function
and performance” and “design,” respectively.
3 ●In addition, in answer to a question about
designs to which importance should be attachedin brand building (Question D-6), a remarkably
large portion cited “design of a product” (63persons; about 86%) and “design of a group of
products” (57 persons; about 78%).
In answer to a question of to which
importance is more frequently attached in productdevelopment, technology development or design
development (Question D-8), out of 70 persons
who answered the question, about 79% (55persons) selected “technology development”
while about 21% (15 persons) selected “design
development.”
In answer to a question about ingenuity
exercised for design when making model changes
or minor changes to a product in order tomaintain the brand of the product established byprior products or to indicate that the product is of
the same brand as prior products (Question D-18),
many answered “continuing to use the design of a
distinctive part in order to indicate that the
product is the successor of prior products” (16persons; about 38%) or “continuing to use thedesign of a part that is common to the products ofthe company” (13 persons; 31%).
4

Results of the domestic and overseasinterview surveys

In the interview surveys, we also asked
about requests for the design system.
With regard to the time restriction on thefiling of applications for related designs, somecompanies considered that there was no problem
with the current system (before the date when
the design bulletin for the principal design isissued), for the reason that they are exercising
ingenuity, such as utilization of partial designs at
the time of initial filing. However, many
companies requested relaxation of the time
restriction (extension of the time limit) as it is
impossible to respond to model changes andminor changes. In addition, there was an opinion
that, as an application for the principal design isoften filed immediately before the start of selling
the relevant products, it is highly likely to
become unable to use the related design systembecause of related designs ceasing to havenovelty.
With regard to the single application for
multiple designs system, multiple companies
requested the introduction thereof from theperspective of reduction of cost burden. On theother hand, some companies requested the●introduction for the reason that it is advantageous
if it is possible to determine whether to maintainrights in a lump sum. Incidentally, among
companies that agree to the introduction of thesingle application for multiple designs system,some pointed out that there will remain doubts
about whether right holders can exploit design
rights in the same manner as where applications
are filed with respect to each design. Others said
that certain restrictions, such as allowing thefiling of a single application only for designs thatare within the scope of similarity, are necessary
since the burden of monitoring and administration
increases if it is allowed to file a single application
for multiple dissimilar designs.
5

Summary

As it was revealed through the questionnaire
and interview surveys conducted in this study, itis the case that there is a certain level of need forrelaxation of the time restriction on the filing of
applications for related designs and for the
introduction of the single application for multiple
designs system among companies that are theusers of the design system. However, on theother hand, some of the companies that answered
the questionnaire and interview are concerned
about an increase in burden caused by thenecessity of responding to other companies in thecase where the relaxation and the introduction
are implemented. It was also pointed out that if
the system is changed very often, understanding
the content of the changes becomes a burden andit takes time before getting accustomed to andmaking full use of the system.
Furthermore, in the interview survey, there
was an opinion that there are the systems ofsecret designs, related designs, and partial
designs under the current design system and that
it is difficult to determine which system is
effective though it is good that applicants can use
those systems as needed. In addition, it waspointed out that “designs” seem to be lessgenerally recognized compared to “patents.” In
this manner, it cannot be said that understandingof the design system has sufficiently pervaded,
and we can see the current situation in whichusers still cannot make full use of the system inmany cases.
Therefore, it seems to be necessary todisseminate the methods of effectively utilizing
the design system, in addition to continuously
carrying forward the consideration of the design
system for design-centered brand building and
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maintenance, etc. In this regard, the JPO has
been making efforts to disseminate the design
system and introduce the utilization methods
thereof by placing a video that introduces thedesign system and a manual for exploitation ofdesign rights on its website. However, further
efforts are desired.

Ⅲ Methods of Strategically Utilizing
the Design System and Mixingof Intellectual Property Rights
1

General consideration

The Fiscal 2009 Survey on the Trends of
Design Applications, titled “Survey on Strategies
for Filing Design Applications for Appealing
Products and Promoting Services,” reports
know-how of designing and key points ofutilization of the design system with respect toeach purpose of development, and also points out
the importance of building a brand by robustly
protecting designs through a combination ofdesign rights with patent rights and trademark
rights (mixing of intellectual property rights).
2

Relationships
betweenbusiness
processes based on specific individual
products and intellectual property rights(1) Results of the domestic questionnaire
surveyWe requested the responding companies toselect one existing product (hit product) for which
they think that they have succeeded indesign-centered brand building and maintenance,
and asked persons in charge of intellectual
property and persons in charge of designing,respectively, questions about (i) the relevant
product, (ii) involvement of the intellectual
property department and the department incharge of designing in each process of businessfor the relevant product, (iii) development ofdesign of the relevant product, (iv) status of filing
applications for industrial property rights for the
relevant product, (v) model changes and minorchanges to the relevant product, (vi) measuresagainst counterfeit goods and goods similar to therelevant product, and (vii) the effect of the design
adopted for the relevant product. Incidentally, we
asked the companies to select a common productfor both persons in charge of intellectual property
and persons in charge of designing.
Answers to the questions about the degreeof involvement of the intellectual property●

IIP Bulletin 2011 Vol.20

department and the department in charge ofdesigning in each process of business for the
relevant product (Questions C-7 and E-7)
revealed that the department in charge ofdesigning is significantly involved in businessprocesses from their initial stages while theintellectual property department is little involvedin the initial stages of the processes.
In answer to a free-answer question about
the advantages of the intellectual property
department’s involvement in “consideration of
product planning” and “decision of productplanning” (targeting persons in charge ofintellectual property who answered that they “gotinvolved” at least in either process) (Question
C-8), many cited “avoidance of the risk of
infringing other companies’ intellectual property
rights.” In addition, some cited “consideration ofa design strategy” or “planning of a businessstrategy in consideration of the intellectual
property power.” In addition, in answer to aquestion about the advantages of involvement of
persons in charge of designing (targeting persons
in charge of designing) (Question E-8), thepersons in charge of designing cited “being
skilled at analyzing user needs” and “making the
product concept visible.”
In answer to a question about whether
industrial property rights concerning the relevant
product have had the effect of putting brakes
on/preventing entry of other companies (targeting
persons in charge of intellectual property)(Question C-32), more than half answered “yes.”
In answer to a question about which industrial
property right has had such effect (QuestionC-33), 90% cited “design right” and thepercentage was higher than that for “patentright.”(2) Results of the domestic interview
surveyIn the domestic interview survey, we hadinterviews about business processes fromplanning to selling (in particular, the design
development process) and the involvement of theintellectual property department in the processes,
focusing on the individual products of companies.
We analogized the status of strategic
utilization of industrial property right systems (inparticular, the design system) in businessprocesses for individual products and typified it
into the following six types based on the point towhich particular attention is attached.
Type A:5 ●Making the scope of protection visible

Type B:

Type C:Type D:
Type E:

Type F:through utilization of partial designs
and related designs
Obtaining rights while focusing
attention
on
the
key
points(distinctive parts) of product designs
Obtaining rights for the entire
appearance of products
Obtaining rights early at the stage ofconcepting product designs
Obtaining rights (not only design
rights but also patents, etc.) for
product
designs
that
expressfunctions in a complex manner
Using a common design for multiple
products(3) Results of the overseas interview
surveyIn the overseas interview survey, we hadinterviews about business processes fromplanning to selling (in particular, the design
development process) and the involvement of theintellectual property department in the processes,
focusing on the individual products of companies,
in the same manner as the domestic interview
survey.
3

Design-centered brand building andintellectual
property
activities
ofcompanies utilizing the design system(results of the domestic and overseasinterview surveys)(1) Strategies for filing applications forintellectual property rights
Many domestic companies decide thenumber of applications to file for design
registration based on cost-effectiveness. Though
the same is true of overseas companies, someoverseas companies file many design applications,
including those for designs that they do not work,
while attaching more importance to strategies
than costs, to prevent other companies from
imitating their design concepts.
(2) Utilization of the related design system,
partial design system, and secretdesign system
There were companies that utilize therelated design system for the purpose ofencompassing protection rather than point-likeprotection. There were also companies that filedesign applications with the aim of making it
possible to widely develop designs for the brandin the future by strengthening rights through the●filing of applications for partial designs as needed,
and companies that will think of filing applications
for partial designs if a design that expresses thedistinctive part of the company well was createdfor part of a product and the company decides tocontinue to use the design for a long period oftime. However, many companies express theirintention to make full use of the related design
system and the partial design system in the
future. For example, some companies stated thatthey have not obtained design rights in a net-like,or encompassing, manner through utilization ofrelated designs and that the strategic obtainmentof rights is a future task. Others stated that they
intend to aim at multifaceted design protection in
the future by utilizing related designs, partial
designs, etc. though the intellectual property
department is trying to obtain rights for final
designs, that is, the whole designs of products on
which the designs are worked (mass-produced
products).
(3) Mixing of intellectual property rights
Many companies are implementing themixing of intellectual property rights. For
example, some companies are aiming at
multifaceted protection, which is neither
protection of only designs nor protection of only
technologies, through utilization of patent rights,
trademark rights, etc. as well as design rights.
Other companies are making sure to protect
products through a combination of patent rights
and design rights, as it is difficult to protect
products based only on design rights since thescope of similarity is sometimes unclear, though
they think that design rights serve as a deterrent
against infringement by counterfeit goods and areuseful on the occasion of disputes.
(4) Involvement in business processes for
products
With regard to the involvement of theintellectual property department (mainly persons
in charge of designs) in business processes for
products, the department is often involved in theprocesses for taking application procedures after
a design is completed. For the stages prior to that,at many companies, the intellectual property
department conducts search on other companies’
rights upon special request from the design
development department.
(5) Prior design search
There were companies where the division ofroles between persons in charge of designing and
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persons in charge of intellectual property is clear.
For example, some companies make sure that it is
not the creation department but rather theintellectual property department that conducts
search on other companies’ design rights asdetermination of similarity is difficult. At someother companies, persons in charge of designing
conduct search on goods placed in competitors’
catalogs and persons in charge of intellectual
property conduct search on patent bulletins anddesign bulletins.

Therefore, it is considered necessary todisseminate examples of utilization of the design
system, which were gathered through interviews,
including “encompassing” protection by design
rights, so that companies that are feeling a gap
between the scope they ideally want to protect
and the scope that can actually be protected canachieve ideal protection based on design rights.
Moreover, it is desired that cases to bedisseminated will be continuously gathered andenriched.

(6) Measuresagainstcounterfeit
goods/similar goods
Many companies evaluated the effects ofdesign rights. For example, some companies said
that a design right was a strong weapon in
exercising rights as infringement of a design rightis clear in many cases. Some other companies
said that they felt the effects of possessing design
rights, as a business operator selling productsthat appear to counterfeit goods stops selling thegoods immediately after receiving a letter of
warning. However, there were also companies
which stated that they did not think of taking any
measures (including institution of a lawsuit andcustoms suspension) against counterfeit goods oftheir products in Japan based on design rights, asJapanese design rights are narrow in their scope
and are thus difficult to exercise (however, thecompanies conduct negotiations between theparties as needed).

(2) Brand building using designs
According to the results of the interviews,
there were companies which evaluated design
rights as contributing to building product brands.
In addition, it was pointed out in discussions at
the committee that it is important that the
intellectual property department prepares adesign map (right map) at an early stage ofbusiness processes in order to build thecompany’s own brand. In this manner, it can besaid that intellectual property rights (in particular,
design rights) and the intellectual property
department play a very important role incompanies’ brand building.
On the other hand, according to the resultsof the domestic questionnaire survey, there wasno major difference between technology
development-oriented companies and design
development-oriented companies in terms of theitems to which importance should be attached toincrease the appeal of products and designs, etc.
to which importance should be attached in brandbuilding. However, there was a difference
between them in terms of the awareness ofingenuity in designs for brand maintenance.
Although it is not necessarily clear how suchdifference in the awareness affects brand buildingby using designs, it is necessary to giveconsideration to this point in considering thedesign system from the perspective of brandbuilding in the future.
In this regard, the committee pointed out asfollows: it is conceivable, for example, to extend
the duration of design rights in order to promote
design-based brand building and maintenance;
however, in that case, long-term monopolistic
protection will be granted not only to designs that
contribute to brand building but also to designs
that are integral with and inseparable fromfunctions that should be opened to the public
after passing of a certain period of time in thesame manner as inventions; therefore, it isnecessary to note that negative effects may occur

4

Summary(1) Specific methods of exploiting design
rightsAlthough the effects of design rights are notdirectly visible for the holders of design rights inmany cases, design rights can be said to have thestrong effect of putting brakes on/preventing
entry of other companies.
It seems that many persons believe thatdesign rights cannot protect the “scope in which
they do not want other companies to manufacture
products” and the “scope for which they do notwant other companies to obtain rights,” which
they want to protect by design rights.
Example cases where a company exercises
ingenuity in obtaining design rights, which weregathered through the interview, can be said to becases where the company is taking actions tobridge the gap between the scope it ideally wants
to protect by design rights and the scope that canactually be protected by design rights.
●

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7 ●thereby.
(3) Involvement of designers and persons
in charge of intellectual property inproduct development
According to the questionnaire survey, theintellectual property department is little involvedin the initial stage of business processes while
the department in charge of designing is actively
involved therein. On the other hand, there werecases in which persons in charge of intellectual
property are involved in the initial stage ofbusiness processes not only for avoiding othercompanies’ rights but also for considering theconcept of product development. Furthermore,some cited, as the advantages of involvement of
the intellectual property department in the initialstage of business processes, “consideration of adesign strategy” or “consideration of a businessstrategy in consideration of intellectual property
power” becoming possible.
Therefore, involvement of the intellectual
property department in the initial stage ofbusiness processes can be said to be the way
which many companies should aim for, though theform of involvement differs depending on theenvironment surrounding the company.
(4) Conclusion
It can be said that intellectual property rights(in particular, design rights) and the intellectual
property department play a very important role incompanies’ brand building. In particular,
involvement of the intellectual property
department in the initial stage of businessprocesses can be said to be the way which many
companies should aim for, though the form of
involvement
differs
dependingontheenvironment surrounding the company.
Moreover, it is considered necessary todisseminate examples of utilization of the design
system, which were gathered through interviews,
including “encompassing” protection by design
rights, so that companies that are feeling a gap
between the scope they ideally want to protect
and the scope that can actually be protected canachieve ideal protection based on design rights.
(Researcher: Yasuyuki IKAWA)●

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