2

Desirable Form of Design System Suitable forStrategic Utilization of Designs

In the Intellectual Property Policy Outline, it is recommended that specific measures be considered todevelop an environment for providing products and services of greater value by using attractive designs. It isalso decided in the Strategic Program for the Creation, Protection and Exploitation of Intellectual Property that“the Government of Japan（GOJ） will extensively study new subject matters, such as designs of operational
screen pages (icons, etc.) used on computer networks, and will draw a conclusion during FY 2003.” Following
these trends, we should immediately review the existing design system, considering whether it is suitable forstrategic utilization of designs and appropriate to the actual condition of designing activities.
Under such circumstances, a research study committee was formed to discuss a wide range of issues: (1)protection of screen page designs (whether to expand the statutory scope of designs to protect screen page designs,
the contents and methods of such protection, the direction of institutional arrangements, etc.); (2) expansion of
the scope of the effect of a design right (whether the current scope is appropriate, to what extent the effect of adesign right should be acknowledged, etc.); (3) other issues

Ⅰ Introduction
Background of This Research Study
In recent years, China and other Asian
countries have acquired the capability to produce alarge quantity of products at a low cost with therapid advancement in technical standards and low
labor costs. Accordingly, it has become an urgent
task for Japan to maintain its industrial
competitiveness on a global scale and revitalize its
economy and society as a whole. In thesecircumstances, Japan has placed emphasis on efforts
for production of differential products andhigh-value-added products. An effective way toachieve this is to aim at “establishing brand names”
and “improving brand images” through strategic
utilization of designs.
In the Intellectual Property Policy Outline
formulated by the Strategic Council on Intellectual
Property, it is recommended that “the GOJ willconsider specific measures to develop an
environment for providing products and services ofgreater value by using attractive designs and brandnames, including the establishment of ideal design
and trademark systems, and will draw a conclusion
by FY 2005.” In the Strategic Program for theCreation, Protection and Exploitation of Intellectual
Property, which was formulated following the policy
outline, it is also stated that: “the GOJ will consider
concrete measures to develop an environment forproviding products of higher value by creating
attractive designs, along with consideration of adesirable from of design system, and will draw aconclusion by FY 2005; the GOJ will also
extensively study new subject matters, such as
designs of operational screen pages (icons, etc.)

IIP Bulletin 2004

used on computer networks, and will draw aconclusion during FY 2003.”
The design system is a fundamental structure
for protecting economic value created by priorinvestment in the creation of designs against
imitations and establishing it as a clear unit ofproperty right, thereby promoting the utilization anddistribution of such right. In order to ensure proper
protection of designs, it is necessary to review adesirable form of design system in line with thechange of the position of designs in industry.
Considering the circumstances mentioned
above, we should immediately start discussion on adesirable form of design system that is suitable forstrategic utilization of designs.

Ⅱ Discussion on the Protection of
Screen Page Designs
1

Background of the Discussion

Along with the advancement of the informationand network-based society, the scope of subjects ofdesign development have expanded to include not
only conventional designs of the appearance andconfiguration of devices but also software designs
such as screen page designs, or designs of
information that is indicated and used via the display
screen of a device. In other words, designers havestarted to exercise their talents to improve theoperability of screen pages such as ease to see, use,
and understand, or develop screen page designs
with elaborate visual or perceptual appeals such as
fun and aesthetics, with the aim of increasing thevalue of a software product which contains such
screen pages.
Under the Japanese design system, design● 10 ●

registration has been granted for a screen page
design only in the case where the design is
indispensable for constituting the article (device),by regarding the design as a part that forms thedevice. It is pointed out that the scope of screen
page designs to be protected under the Japanesedesign system is narrower than the scope under
foreign design systems in the United States andEurope.
In the Intellectual Property Policy Outline
formulated by the Strategic Council on Intellectual
Property and the Strategic Program for the Creation,
Protection and Exploitation of Intellectual Property
developed following the policy outline, it isrecommended that “the GOJ will also extensively
study new subject matters, such as designs ofoperational screen pages (icons, etc.) used oncomputer networks, and will draw a conclusion
during FY 2003.”
Based on recognition of the background factors
mentioned above, this research study committee
comprehensively discussed to what extent thescope of protection for screen page designs should
be expanded under the design system.
2

Direction ofCommittee

theDiscussion

at

the

If a new scheme of design protection that is
specialized in screen page designs is assumed,
institutional arrangements would be required withrespect to various issues, such as the unit of subject
matter to be protected, the matters to be examined,
and the nature and scope of a design right. Whenintending only to expand the scope of protection forscreen page designs, we should avoid causing
unnecessary confusion in the framework of theexisting design system, which is based on therequirement that a design must be applied to anarticle (“requirement for a design to be applied to anarticle”).
In the United States and European countries,
design registration is granted according to more
flexible theories than in Japan from the perspectiveof the requirement for a design to be applied to anarticle. However, even in these countries, courts
have yet to issue an injunction based on a design
right for a screen page design, and therefore it isstill unclear against what subject an injunction will
be issued in the case of an infringement of suchdesign right.
In light of such a situation, the research study
committee discussed in detail a feasible scheme ofprotection within the framework of the existing
design system based on the requirement for adesign to be applied to an article, with the aim ofdrawing a conclusion by the end of FY2003 in
respect of a desirable way of protecting screen page
designs under the design system.

The core factors for the framework of theexisting design system are as follows:[1]the design system is intended to protect
configuration elements of a specific product;[2]the administrative office confirms, prior to
granting a design right,
whether therequirements for registration such as novelty aresatisfied;[3]the substance of a design right is an absolute
exclusive right.
3

Specific Direction of Protection of Screen
Page Designs

Under the existing design system, a design
right shall be granted for a product in the market,
and on such presupposition, it is clearly recognizedthat an injunction will be issued against a product in
the case of an infringement of a design right. In this
discussion, the secretariat of the committee
presented a draft proposal concerning a specificdirection for protecting screen page designs underthe existing design system. The draft proposal
contains the following basic factors:[1]Following the principle on an article under the
existing Design Law, a computer program that isplaced in the market and has a certain economic
value shall be regarded as a product, and visualelements relating to the program shall beprotected as a design;[2]The methods to select and transmit multiple
screen pages shall not be protected under the
Design Law because they cannot be identified as
specific visual elements;[3]In order to describe, in the request anddrawings attached thereto, visual elements of acomputer program for which design registration
is sought, screen pages that are necessary forachieving the purpose and functions of the
program shall be described in the request anddrawings, and an additional classification of
product shall be mentioned in the section of “theproduct to which the design is applied”;[4]The administrative office shall confirm, prior to
granting a design right, whether the screen page
designs claimed in the application for design
registration satisfy the requirements forregistration such as novelty;[5]A design right for screen page designs shall bean absolute exclusive right, and the mattersnecessary for defining the design right shall be
published in a design gazette;[6]An injunction and other measures shall be
issued and taken against the program for which
the design right has been granted.
4● 11 ●

Opinions Heard at the Committee
Summarizing

opinions

presented

bythe

IIP Bulletin 2004

committee members concerning the draft proposalof the committee secretariat, the members, ingeneral, agreed to establish a scheme for protecting
screen page designs, but they strongly pointed out
that, if the current draft proposal were adopted,
protection means, including an injunction against acomputer program itself, would be too strong
compared to the interests to be protected by the
Design Law (the value of screen page designs). The
members required further discussion while
reviewing the overall design system in order toestablish a specific scheme of protection.
5

Conclusion of the Discussion

As a result of the current discussion regarding
a desirable way of protecting screen page designs
under the design system, the research study
committee drew the following conclusions.
Screen page designs are fruits of humanactivities of intellectual creation, and they are
frequently used for information devices and home
appliances, playing an important role in our socialand economic activities. Screen page designs thatare inseparably integrated with the device havealready been included in the scope of subject matterto be protected under the Design Law. The
committee found sufficient necessity to consider adesirable way of protecting, under the Design Law,
screen page designs that were not integrated withthe device, as intellectual property relating toindustrial activities.
However, if screen page designs that are notintegrated with the device are protected within theframework of the existing design system in which adesign is regarded, as a prerequisite, as theappearance of an article, balance would not be
secured between protection of screen page designs
and protection of the program that produce suchdesigns. If at all screen page designs themselves
were to be protected under the Design Law, it
would be necessary to review the framework of theexisting design system which has been established
for the purpose of protecting the appearance of anarticle.
In the Strategic Program for the Creation,
Protection and Exploitation of Intellectual Property,
which was formulated by the Strategic Council onIntellectual Property in July 2003, it is stated that
the GOJ will consider concrete measures to develop
an environment for providing products of higher
value by creating attractive designs, along withconsideration of a desirable from of design system,
and will draw a conclusion by FY 2005.
It is appropriate to continue, while reviewing
the overall design system, discussing a desirable
scope of subject matters to be protected including
screen page designs and an appropriate way ofprotecting such designs, based on the opinions
presented in the discussion at the committee.
IIP Bulletin 2004

Ⅲ Discussion on the Expansion of
the Scope of the Effect of a
Design Right
1

Background of the Discussion

In the report of the Strategic Design Utilization
Study Group (dated June 2003) established within
the Manufacturing Industries Bureau of the
Ministry of Economy, Trade and Industry, it points
out as follows: Consumers have become more
severe in appreciating designs and brands, and thegap has been widening between companies thatexert their ability to develop highly-creative designs
and their established brand names, and those mainly
engaged in producing mere imitations of designs andproducts of others; in light of such situation, thescope of similar designs under a design right should
be expanded in order to effectively prevent
imitations and encourage the creation of outstanding
designs. In Japanese industry, several companies
have often manufactured the same type of product,with the tendency to develop, in a short period, anumber of products to which designs that are lesscreative and similar to one another are applied,
while trying to acquire a large market share throughprice competition. The report of the study groupexpects that such companies that have only followed
others will shift their company strategies and place
more importance on originality and creativity, so as
to produce more attractive products.
In the course of considering a desirable scopeof the effect of a design right, the research study
committee, while taking into account not only thescope of similar designs but also intellectual
creations produced in states in the process fromdevelopment to marketing of products, extensively
discussed what would be a desirable form of design
system, which was not constrained by theframework of the existing design system and was
suitable for the substance of design protection.
2

Discussion on the Issues to be Reviewed

The committee discussed the following sevenissues to be reviewed when expanding the scope ofthe effect of a design right:(1) Protection of designs including the ideas
supporting the creation;(2) Protection of designs that are highly creative;(3) Protection with emphasis on features such as
patterns, colors, materials, and quality of materials;(4) Protection of a registered design where it isapplied to an article that is not similar to the article
to which it should be applied;(5) Value of creation and misleading/confusion;(6) Absolute exclusive right and relative exclusive
right;(7) Clarification of the methods and standards for
judging the similarity of designs● 12 ●

In the discussion of the committee, themembers pointed out that current protection was
not sufficient in respect of (i) the overall goal of
product development, (ii) the atmosphere andfeatures created and provided by the configurationof a product, (iii) the unified elements applicable toall items of a product series or product group, and(iv) the brand image established in the distribution
process. The members also pointed out that it was
not clear whether the Design Law was intended toprotect the fruit at the time of creation or theoutcome after sales, and which was more importantunder the law.
3

Concepts and Methods for Expanding the
Scope of the Effect of a Design Right

The scope of the effect of a design right asprescribed under the existing Design Law is basedon a registered design that is defined by a specificconfiguration, and only includes designs that are
similar to the registered design. Therefore, thecurrent scope does not broadly protect intellectual
creations that are produced in phases in the productdevelopment process.
In order to protect intellectual creations thatwere criticized in the discussion as not being
protected sufficiently, it is necessary to change thecurrent perspective, with the aim of protecting
intellectual creations according to the phases in the
product development process. In this respect, if thescope of protection were shifted from intellectual
creations protected under the existing Design Law
to those produced in phases nearer to the start ofthe process (upstream phases), protection would be
provided for the creative value of a design, with theemphasis being placed on its conceptual orfunctional aspects relating to product development.
On the other hand, if the scope of protection isshifted from intellectual creations protected underthe existing law to those produced in phases nearer
to the end of the process (downstream phases),
protection would be provided for the ability to
distinguish one’s products from others and thecredit guaranteed by the product.
The research study committee discussed an
appropriate scope of the effect of a design right forthe purpose of expanding the existing scope,according to the following proposals.
The committee roughly divided intellectual
creations produced in phases in the productdevelopment process into (1) intellectual creations
produced in upstream phases, (2) intellectual
creations at the point of completion of productdevelopment, and (3) intellectual creations producedin downstream phases, and then categorized them indetail as follows.
(1) Intellectual creations produced at the
upstream phases[1]Category of intellectual creations indicating theconcepts of product development[2]Category of intellectual creations consisting ofcompositions for performing new functions andpurposes[3]Category of intellectual creations consisting ofparts newly created[4]Category of intellectual creations including
those by which the persons skilled in the art cancreate the design concerned.
(2) Intellectual creations produced at the
point of completion of production
development[5]Category of intellectual creations consisting of
abstract authentic impressions(3) Intellectual creations produced at thedownstream phases[6]Category of intellectual creations forming
signs to indicate the ability to distinguish one’s
product from those of others
Taking variations of these proposed categories
into account, the committee discussed to what
extent the scope of the effect of a design rightshould be expanded. The following opinions were
presented in the discussion.
(i) Whether to expand the scope of the effect toinclude the concepts
Acceptance was generally obtained for the
proposal of expanding the scope of the effect of adesign right to include the category of intellectual
creations indicating the concepts of productdevelopment, but at the same time, problems werepointed out as to protection of the concepts thatwere expressed only by words irrespective of theconfiguration, concern over negative impact ofmonopoly that might occur in the case where thescope of the effect of a design right included theconcepts, and how to apply for design registration in
respect of the concepts.
(ii) Protection according to the level of creativity
Some members argued that the scope of adesign right should depend on the level of creativity,
providing broad protection for highly creative
designs while providing narrow protection for
designs that were produced by many companies incompetitive relationship based on common concepts
in the matured industrial fields. It was also argued
that the issue of the width of the scope of a design
right was an operational issue.
(iii) Designs that the persons skilled in the art caneasily create
Some members raised concerns about
including, in the scope of a design right, designs thatare not created by the creator relating to the design
right.
(iv) Other issues in general
Opinions were also presented with respect toother issues in general: a desirable scope of theeffect of a design right should not be unified but
diversified as appropriate; designs should beprotected while also taking into account designs● 13 ●IIP Bulletin 2004

created by designers that are not indicated on
display screens; it might be appropriate to adopt
psychological methods when judging the similarity
of designs.

Ⅳ Discussion on Other Issues
1

Discussion on the Framework of the
Design System

It was pointed out that, for the purpose ofincluding intangible designs such as screen page
designs in the scope of designs to be protectedunder the Design Law, we should fundamentally
review the design system beyond the framework of
the existing system, with respect to the definition ofdesigns, the requirements for granting a design
right, the contents of an infringement, and thetiming of examination.
In the Strategic Program for the Creation,
Protection and Exploitation of Intellectual Property,
it is requested that “the GOJ will consider concretemeasures to develop an environment for providing
products of higher value by creating attractive
designs, along with consideration of a desirable fromof design system.” In order to establish a design
system that encourages the creation of attractive
designs, protects intellectual creations as
appropriate, and ensures effective and smoothutilization of intellectual property relating to designs,
it is necessary to broadly review and discuss thedesign system as a whole, including the nature of adesign right, the time of a design right coming into
existence, the scope of designs to be protected, therequirements for protection, the scope of the effectof a design right, and the contents of an
infringement
The committee suggested problems and issues
from a comprehensive perspective, without focusing
on particular issues, concerning the design system
as a whole and the framework of the design system,
while making reference to designs that werecurrently protected under other intellectual
property laws and frameworks of foreign design
systems. The committee thus built a bridge to thereview and discussion of the design system to befinished by the end of FY2005.
2(1) Emphasis should be placed on pre-grant
examination by the administrative officeSome users of the existing design systemsuggested that the advantage of the design system
rested in the procedural scheme in which theadministrative office should, prior to granting adesignright,
adjustoverlapping
product
development projects in the industry and confirm
the non-existence of infringement of rights of others,
by using a certain period of time and at the expenseof users. It was also requested that the standards
and methods applied by the administrative office for
judging whether the requirements for design
registration was satisfied should be clearlypresented to the parties concerned.
(2) There were concerns about the existing
design systemThe
pre-grant
examination
bytheadministrative office under the existing design
system was criticized as follows: for the purpose of
ensuring efficiency and fairness in the examination,
there was no option but to only adopt methods forfiling applications for design registration by which it
was difficult for individual applicants to state theirown opinions on the designs; due to the adjustment
conducted through the pre-grant examination, theexercise and utilization of designs rights became
rigid.
(3) The design system should be reviewed
while giving due consideration to thesubstance of a design
Designers argued that discussion should beheld about a desirable way of protecting not only
screen page designs but also designs as a whole,
without being constrained by the framework of theexisting design system.
(4) Consideration should be given to thevalue to be protected under the DesignLaw
A question was raised as to whether the value
to be protected under the Design Law was thecreation of a design or the distinctiveness of adesign.

Opinions Heard at the Commission

Important opinions expressed at thecommission include: (1) emphasis should be placedon pre-grant examination by the administrative
office; (2) there were concerns about the existing
design system; (3) the design system should be
reviewed while giving due consideration to thesubstance of a design; and (4) consideration should
be given to the value to be protected under the
Design Law.

IIP Bulletin 2004

● 14 ●(Researchers: Hiroki Hattori,
Kazuhiko Miyasaka)

● 15 ●IIP Bulletin 2004