4

Desirable Form of Design System Suitable for Protectionof Creative Designs

In order to successfully produce differentiated products and high-value-added products throughstrategic use of design, thereby strengthening the competitiveness of Japanese industry, it is necessary toprotect creative designs appropriately in order to encourage design creation, while enabling active use ofdesign rights.
Regarding protection of designs, the “Intellectual Property Strategic Program 2005” states as follows: The
GOJ will consider specific measures to develop an environment for providing products of higher value throughthe creation of attractive designs, including the development of a desirable form of the design system, and draw aconclusion by FY2005.
With the aim to contribute to future discussions at the Design System Subcommittee, this study, based on
the discussions heretofore at the subcommittee, closely examines specific legal issues relating to a desirable formof the design system, the core system for protecting designs, including the effect of design rights, the design
registration system, and the scope of the subject matter.

Introduction

2

In order to successfully produce differentiatedproducts and high-value-added products throughstrategic use of design, thereby strengthening
competitiveness of Japanese industry, it isnecessary
toprotect
creative
designs
appropriately in order to encourage design
creation, while enabling active use of design
rights.
This study closely examines specific legal
issues relating to a desirable form of the design
system, with the aim to contribute to discussions
at the Design System Subcommittee.

Ⅰ Creation of a Two-Track Systemthrough the Introduction ofRegistration without Substantive
Examination
1

Statement of the Issue

Generally, design rights are establishedwithin seven months of the filing of an application
for design registration. There have been calls fora system to enable earlier establishment of design
rights from industries where imitation tends totake place soon after products appear on themarket or where the product lifecycle is short.
Additionally, in industries that produce many
types of products in small amounts, complaints
are heard against the burden of costs for filing orother procedures for obtaining rights.

IIP Bulletin 2006

Background
Registration
Examination

for
Discussions
on
without
Substantive

The “Intellectual Property Strategic Program2005” states as follows: In order to develop an
environment for providing products of higher value
through the creation of attractive designs, by theend of FY2005, the GOJ will consider reviewing
the definition of design, introducing thenon-substantive examination system, clarifying
the approach for determining the similarity ofdesigns, and reviewing the related design systemand the part-design system, and will reform the
Design Law and develop systems as appropriate.
At the fourth meeting, the Design System
Subcommittee developed the “Interim Report on
Points of Issue,” stating that the subcommittee
should consider whether or not to create a new
system framework, in response to diverse userneeds, so as to protect design creation
appropriately and enable design rights holders to
exercise and utilize their rights proactively. In
this context, the issue of whether or not to
introduce a two-track system (consisting of a
substantive
examination
systemandanon-substantive examination system) should also
be discussed.
3

Details of Discussion(1) Basic structure
It is necessary to clarify the role andcharacteristics of each “track”, while referring to
the two-track systems adopted in foreign● 26 ●

countries.
[Idea 1]
Design rights should be created as absolutely
exclusive rights.
(Point of issue)
The difference between the non-substantive
examination system and the existing design
system in terms of legal interests to be protectedshould be clarified, and the balance and relevance
between the two systems should be studied.
[Idea 2]
Design rights should be created as arelatively exclusive right.
(Point of issue)
Regulations under the non-substantive
examination system might greatly overlap withregulations of slavish imitation under the Unfair
Competition Prevention Law.
(2) Contents of rights
The contents of design rights should bedetermined depending on the level of creativityor the actual transaction status.
(i) Scope of effects of rights[Idea 1]
Design rights should be created as an
absolutely exclusive right to exploit theregistered rights as well as designs that aresubstantively identical thereto.
(Point of issue)
The limitation of the scope of rights would
prevent unexpected disadvantage to a third party.
It would be easy to determine infringement if thescope of the effects of design rights covers
designs that are substantively identical to theregistered design.
[Idea 2]
Design rights should be created as an
absolutely exclusive right to exploit theregistered rights as well as designs that are
similar thereto.
(Point of issue)
Although the scope of effects thus defined
would be easily acceptable to users because thescope under the existing system covers similar
designs, it might increase the monitoring burden
for a third party.
[Idea 3]
Design rights should be created as arelatively exclusive right to exploit the registered
design as well as designs that are similar thereto.
(Point of issue)
A system to presume dependence (on theregistered design) can also be established. The
rights holder should be allowed without exception

to secure a certain share of the market according
to his creative achievement.
(ii) Term of rights[Idea 1]
The term of design rights should be ten
years.
[Idea 2]The term of design rights should be less thanten years.
(Point of issue)
In light of the need for protection under the
non-substantive examination system, a shortterm would be sufficient.
(3) Security for validity of rights
For the purpose of preventing abuse of rightsthat are registered without substantive examination,
the Utility Model Law requires submission of atechnical report on registrability (Section 29-2) andliability without fault (Section 29-3).
In the case of design rights, it is possible to acertain extent to judge validity of the rights byvisual observation. In 2003, a decision ofregistration was made for about 80% of design
applications. Considering these circumstances, itwould be reasonable to a certain extent to create
a design system that differs from the utility model
system.
[Idea 1]
Any person may file an opposition against
registration. When an opposition is filed, theappeal examiner will examine registrability of theregistered design ex officio.
(Point of issue)
It would be appropriate to introduce theopposition procedure in combination with theinvalidation procedure. Grounds for opposition
should be specified.
[Idea 2]The design rights holder who intends toexercise his rights must be actually using his
registered design.
(Point of issue)
This requirement would possibly eliminate
the concern about arbitrary registration ofdesigns that are actually not in use.
[Idea 3]
Voluntary submission of a registrability
report should be allowed.
(Point of issue)
If the design rights holder exercises his
rights against the infringer by presenting a
registrability report, he would enjoy certain
benefits such as presumption of negligence on thepart of the infringer.

● 27 ●IIP Bulletin 2006

(4) Claim for damages
Under the industrial property laws, thecontent of rights is made public in gazettes andregisters, and negligence would be presumed on
the part of the infringer (Section 103 of the Patent
Law, etc.) However, the provision of presumptionof negligence is not included in the Utility Model
Law that adopts the non-substantive examination
system.
In the case of design rights, it is possible to acertain extent to judge validity of the rights byvisual observation. For this reason, it might not
be necessarily required to provide forpresumption of negligence.
[Idea 1]Presumption of negligence should be
introduced.
(Point of issue)
If the scope of the effects of design rights islimited to designs that are substantively identicalto the registered design, and necessary measures
are taken to secure the validity of the rights, it
should be possible to provide for presumption of
negligence.
[Idea 2]Presumption of negligence should not be
introduced.
(5) Transfer between the two tracks
What most users expect from the transfer
between the two tracks may be that they canenjoy the earlier filing date. However, there aremany issues to consider because such anarrangement may cause confusion in determining
which application takes precedence. It is also
necessary to consider whether it is appropriate tolimit the period for transfer.
[Idea 1]
Transfer should be allowed during a fixed
period, with the earlier filing date being
maintained.
[Idea 2]
Transfer should not be allowed.
[Idea 3]
Transfer should be allowed, but injunctive
relief should not be able to be claimed using theinitial track from which the application istransferred.
(6) Model cases
The following model cases are developed on
the condition that the existing substantive
examination system should be maintained.
(i) The design is required to be novel and noteasy to create; absolutely exclusive rights comeIIP Bulletin 2006

into existence upon registration (system under
the Utility Model Law).
(ii) The design is required to be novel and noteasy to create; relatively exclusive rights comeinto existence upon registration (system based onrequest for examination)(iii) The deign is not required to be novel;
absolutely exclusive rights come into existence
upon registration (system under the Law
Concerning the Circuit Layout of Semiconductor
Integrated Circuits).
(iv) The design is not required to be novel;
relatively exclusive rights come into existence
without registration (system under the CopyrightLaw).
(7) Evaluation of the model cases(i) System under the Utility Model Law
The granting of absolutely exclusive rights
will increase incentives for investment in design
creation. However, designs that do not satisfy thenovelty requirement will be excluded fromprotection, and validity of rights might be denied
in invalidation proceedings. Furthermore, theregistration procedure incurs costs.
(ii) System based on request for examination
This system will be effective only to alimited extent in increasing incentives forinvestment in design creation because the design
rights cannot be exercised against another party’s
original design that is identical or similar to theregistered design.
(iii) System under the Law Concerning the
Circuit Layout of Semiconductor Integrated
Circuits
Since novelty is not required, the scope ofdesigns eligible for protection will be broadened,and validity of rights will be less likely to bedenied in invalidation proceedings. On the other
hand, under this system, more rights will be
registered and exercised.
(iv) System under the Copyright Law
Omission of registration will reduce filingcosts and make it easier to obtain rights but will
reduce predictability regarding the existence ofrights.
(8) Details and points of issue concerning
the model cases(i) System under the Utility Model Law
By making reference to the two-track systemthat combines the patent system and the utility
model system, a two-track design system shouldbe created so that rights will be establishedpromptly through formal examination.

● 28 ●

(Ⅰ) Registrability requirements under thesubstantive examination system, such as thedesign being novel and not easy to create andthe application having the status of an earlier
application, shall also apply.
(Ⅱ) Design rights shall be created as an
absolutely exclusive right to exploit theregistered design and designs that are similar
thereto. The term of design rights shall be ten
years from the date of registration.
(Ⅲ) Conversion of an application from one
track to the other shall be allowed only while
the application is pending in examination orappeal examination; upon conversion, theoriginal application shall be deemed to havebeen withdrawn.
(Ⅳ) The holder of design rights granted on the
non-substantive examination track may, only
within a certain period, file an application basedon such rights for the substantive examination
track. In this case, the rights obtained using
the non-substantive examination track must be
relinquished.
(Ⅴ) There shall be a senior-junior relationshipbetween design applications filed on the two
tracks.
(Ⅵ) Invalidation
proceedingsmaybeinstituted by any person alleging lack ofnovelty or other registrability requirements of
the registered design (public reasons) or byinterested parties challenging the ownership ofthe design rights (personal reasons).
(Ⅶ) Where the design rights holder has given
a warning notice by presenting a required
registrability report, negligence shall be
presumed on the part of the infringer.
(Points of issue)- Considering that it would take time to obtaina registrability report and that it is possible toa certain extent to judge the validity of therights, it should be appropriate to presume
negligence on the part of the infringer,- Would it be appropriate, from the perspectiveof the monitoring burden for a third party, toallow omission of the presentation of aregistrability report when giving a warning
notice?
(ii) System based on requests for examination
The existing substantive examination systemshould be reformed into a system based onrequests for examination as adopted under the
Patent Law, in which substantive examination
shall be conducted upon request and rights shallbe granted if registrability requirements are
satisfied.

(Ⅰ) Registrability requirements under thesubstantive examination system, such as thedesign being novel and not easy to create andthe application having the state of an earlier
application, shall also apply.
(Ⅱ) Design rights shall be created as arelatively exclusive right to exploit theregistered design and designs that are similar
thereto. The term of design rights shall be ten
years from the date of registration.
(Ⅲ) Conversion of an application and asenior-junior relationship between the two
tracks shall not be provided for.
(Ⅳ) The holder of design rights granted using
the non-substantive examination track may, only
within a certain period, make a request for
examination using the substantive examination
track and obtain design rights if theregistrability requirements are satisfied. In thiscase, the rights
obtained using thenon-substantive examination track must be
relinquished before the rights obtained using thesubstantive examination track are registered.
(Ⅴ) Invalidation proceedings shall be the sameas those of the system under the Utility Model
Law.
(Ⅵ) Negligence shall not be presumed on thepart of the infringer.
(Points of issue)- It is necessary to consider whether or not
relatively exclusive rights would result in
sufficient protection.
- Would it be appropriate, from the perspectiveof the monitoring burden on a third party, todetermine validity of rights upon request for
examination or invalidation proceedings?
- Considerable delay might be caused in theexamination procedure.
(iii) System under the Law Concerning the
Circuit Layout of Semiconductor Integrated
Circuits
By referring to the system under the Law
Concerning the Circuit Layout of Semiconductor
Integrated Circuits (relatively exclusive rights
are granted without substantive examination), a
two-track design system should be created sothat rights will be granted promptly throughformal examination with respect to designs thatare not easy to create.
(Ⅰ) A design is registrable only if it is not easy
to create.
(Ⅱ) Provisions on the effect and term of rights
shall be the same as those of the system basedon requests for examination.
( Ⅲ ) Conversion of an application from one● 29 ●IIP Bulletin 2006

track to the other shall be allowed only while
the application is pending; upon conversion, theoriginal application shall be deemed to havebeen withdrawn.
(Ⅳ) Where the holder of design rights grantedusing the non-substantive examination track
files, within a certain period after the rights
came into existence, an application using thesubstantive examination track, the design
claimed in the later application shall not lacknovelty and therefore may be registered using
the substantive examination track. In this case,the rights obtained using the non-substantive
examination track must be relinquished, andthe later application cannot enjoy the earlier
filing date.
(Ⅴ) An application filed using the substantive
examination track bars a later application filedusing the non-substantive examination track,
but not vice versa. Conflicts of rights using thetwo tracks should be provided for.
(Ⅵ) Invalidation proceedings may be institutedby any person alleging that it is easy to create
the registered design (public reasons) or byinterested parties challenging the ownership ofthe design rights (personal reasons).
(Ⅶ) Negligence shall not be presumed on thepart of the infringer.
(Points of issue)- Would it be appropriate to protect designs
that do not satisfy the novelty requirement?
- It would be possible to extend the effect ofdesign rights to designs that are similar to theregistered design.
- Would it be appropriate to provide for
exception to lack of novelty with respect to an
application filed by the design rights holder
within a certain period after the registrationof the rights?
(iv) System under the Copyright Law
By making reference to the system under the
Copyright Law (relatively exclusive rights is
granted without formality examination), a twotrack design system should be created so thatrights for original designs that are not easy tocreate shall come into existence on the day thedesigns become publicly known or the day they
are deposited.
(Ⅰ) A design is registrable only if it is noteasy to create.
(Ⅱ) Design rights shall be created as arelatively exclusive rights to exploit the designthat has become publicly known or has been
deposited and designs that are identical or
substantively identical thereto. The term of

IIP Bulletin 2006

design rights shall be ten years from the day
the design becomes publicly known or isdeposited.
(Ⅲ) Conversion of an application shall not be
available.
(Ⅳ) Where the holder of design rights grantedusing the non-substantive examination track
files, within a certain period after the rights
comes into existence, an application using thesubstantive examination track, the design
claimed in the later application shall not lacknovelty and therefore may be registered using
the substantive examination track. In this case,the rights obtained using the non-substantive
examination track shall be deemed to havebeen relinquished, and the later application
cannot enjoy the earlier filing date.
(V) The senior-junior relationship between
the two tracks shall not be provided for.
Conflicts of rights using the two tracks should
be provided for.
(Ⅵ) Invalidation proceedings shall not be
available.
(Ⅶ) Negligence shall not be presumed on thepart of the infringer.
(Points of issue)- It is necessary to consider whether or not therequirements mentioned above are appropriate
from the perspective of encouraging design
creation.
- This issue should be considered from theperspective of predictability.
- This issue should also be considered from theperspective of the monitoring burden on athird party.
4

Future Discussion

The creation of a two-track system under the
Design Law through the introduction of a nonsubstantive examination system should be carefully
studied while taking into consideration thecircumstances and needs of industry and the status
of design protection under the Unfair Competition
Prevention Law and other related laws.

Ⅱ Protection of Page Designs
1

Statement of the Issue

Page designs perform various functions asuser interfaces on the display screen of
information appliances. They are importantelements of software.
Under the existing design system, protection● 30 ●

is afforded only to page designs that satisfy
certain requirements.
2

Past Discussion

In FY2003, the Institute of Intellectual
Property discussed protection of page designs inthe study on a “Desirable Form of the Design
System Suitable for Strategic Utilization of
Designs.”3

Points to Note in Discussion

A desirable scheme for protecting page
designs should be discussed with the aim toensure a substantive balance and equality
between page designs eligible for protection anddesigns subject to the exercise of design rights.
4

Details of Discussion(1) Definition of page designs
In the previous study, a software product as awhole is regarded as an article to which a design
is applied.
On the other hand, page designs areindicated on the screen of a display unit when
they perform their functions, and in light of sucha nature, it may be difficult to apply the logic thatpage designs constitute the appearance of asoftware product. In this context, it is appropriate
to expand the scope of articles eligible for design
protection to include display screens of appliances,and include the shape, pattern or color of adisplay screen or any combination thereof(hereinafter referred to as “shape, etc.”) in thedefinition of the term design.
(2) Scope of page designs to be protected
If a display screen is included in the conceptof an article, all shapes, etc. indicated on thescreen of a general-purpose display unit are to beprotected.
It is necessary to consider whether or not it
is appropriate to set limits to the scope ofprotection for page designs.
(3) Determination of similarity in page
designs
Similarity in figurative elements that consistof page designs should be determined dependingon the purpose and function of each element.
Determination should be made with respect toarticles that are identical or similar to the article
stated in the application.

(4) Infringement of design rights(i) Exploitation of page designs[Idea 1]
Characteristics of page designs and expectedmodes of exploiting them should be taken into
consideration.
[Idea 2]
Exploitation of page designs should beconstrued while focusing on page designs
indicated on the display screen.
(Points of issue)- Is it necessary to take any special measures
to deal with the relationship between thecreator of the page designs and the creator of
the program, which is becoming increasingly
complex?
- Is it necessary to give consideration to thestatus of the person who has determined thespecifications of designs for operation pages
and ordered production thereof?
(ii) Indirect infringement
If it is assumed that design rights to be
granted for a page design should not extend to theprogram that constructs the page design, it isnecessary to clearly provide that injunction
against indirect infringement may not be claimed
with respect to the program.
5

Future Discussion

Page designs should be protected to thesame degree as in the United States, Europe andSouth Korea. Design rights should be granted fora single page design. The scope of page designs
to be protected should be defined while taking
into consideration technical characteristics andindustry conditions, so that it is not too broad orvague. The software product itself that constructs
page designs should be excluded from design
protection.

Ⅲ Expansion of the Scope of Effectof Design Rights
1

Statement of the Issue

The scope of effect of design rights for acreative design is often construed as narrowly asthat for a less distinctive design or becomes
gradually narrow by construction as time goes by.
2

Details of Discussion

We discussed defining the scope of design
rights as a formative concept derived from the● 31 ●IIP Bulletin 2006

descriptions in the drawings. Regarding this issue,
two ideas were presented: (i) the effect of design
rights should extend to designs that share theformative concept in common with the registered
design; (ii) the effect of design rights should
extend to designs that are easy to create based on
the registered design.
The idea that the scope of design rights
should be defined based on the formative concept
invited criticisms arguing that such an idea issynonymous with abolition of the concept of anarticle, and that it is difficult to specify aformative concept from the descriptions in thedrawings of a design.

from the descriptions in the drawings; (iii) it isnatural to construe that design rights may not be
exercised against publicly known designs.
It was also pointed out that rights andinterests relating to a design would becomplicated, and that it would be unreasonable todefine the scope of right based on both similarityand easiness of creation, which are determinedfrom different viewpoints.
At the same time, suggestions were made tosolve this issue by defining design field in thesame manner as defining technical field of Patent,changing the concept of similarity in articles, andreviewing the one design-one application system.

3

3

Future Discussion

The introduction of a system of defining thescope of design rights based on the formative
concept should be carefully studied while taking
into consideration problems that may arise suchas whether or not such a system would be
effective in examination procedure.

Ⅳ Extension of the Effects of
Design Rights to the Use of the
Design for Different Articles
1

Statement of the Issue

Since the effect of design rights under the
existing system extends only to articles that are
identical or similar to the article to which theregistered design is applied, the right cannot be
exercised in cases where a competitor imitates
only the shape of the product that sells well andintroduces it for a different article.
2

Details of Discussion

We discussed expanding the scope of effectof design rights to include designs that are easy
to create based on the registered design, focusing
on three ideas: (i) expand the scope of effect toinclude designs that are not expected to be
exploited; (ii) define the scope without disclosurein the application upon filing; (iii) construe thescope while taking publicly known designs into
consideration.
With respect to these ideas, the following
opinions were heard: (i) design protection isintended to protect creation of designs, andtherefore expectation of exploitation is irrelevant;(ii) the scope of effect of design rights can be
defined based on the formative concept derived

IIP Bulletin 2006

Future Discussion[Idea 1]The scope of effect of design rights should be
expanded so that the right would be able to be
exercised against the use of the registered designor designs similar thereto for articles that are notsimilar to the article to which the registered
design is applied, if such use depends on theregistered design. In this case, such use should
be regarded as direct or indirect infringement.
[Idea 2]
The registered design being publicly known
should also be required in addition to therequirement motioned in Idea 1.

Ⅴ Clarification of the Scope of
Effects of Design Rights
1

Statement of the Issue

In infringement cases, similarity in designs
is determined by various approaches that are
based on academic theories such as the theory of
confusion and the theory of creativity. Ambiguityin the area of the scope of effects of design rights
is one factor that causes hesitation in filing design
applications or exercising design rights.
2

Details of Discussion

We discussed providing for an approach todetermining similarity in designs for confirmation.
The majority of participants were negative about
this idea because such a provision would be toobinding on courts when they determine whether
individual designs meet certain requirements, andany of the existing academic theories have little
influence on determination in individual cases.

● 32 ●

3

depend on direct infringement.

Future Discussion

An approach to determining similarity indesigns should be clearly indicated in the
Examination Guidelines for Designs.

Ⅵ Inclusion of Possession for the
Purpose of Assignment in the
Scope of Acts of Infringement
1

Statement of the Issue

In light of the fact that infringement ofdesign rights, which involves counterfeit
products, has recently been committed in an
organized and sophisticated manner, the act ofpossessing or storing counterfeit products thatare yet to be distributed in the market should be
included within the scope of acts of infringement.
2

3

Future Discussion

The act of possessing articles to which thedesign is applied for the purpose of assigning thearticles should be included in the definition of
exploitation.

Ⅶ Inclusion
of
ExportandTransshipment within the Scopeof Acts of Infringement
1

Statement of the Issue

Considering that export is covered by design
rights in many countries, it is necessary from theperspective of strengthening anti-counterfeiting
measures to include export within the scope of
exploitation of the article pertaining to the design
rights.

Details of Discussion
2

We discussed including the act of possessing
or storing counterfeit products for the purpose of
assigning them within the scope of exploitation or
the scope of acts deemed as infringement, focusing
on (i) consistency with other intellectual property
laws, (ii) excessive expansion of the scope ofeffects of design rights, and (iii) criminal
punishability of such acts.
Negative views were aired about this idea,with the argument that it is difficult to explain
why “possession” should be included only under
the Design Law, and that it is difficult for
distributors to determine similarity in designs.
On the other hand, the positive view was
also expressed that penal provisions should beapplicable for possession for the purpose of
distribution under the Copyright Law, and that it
would be easy to prove infringement for the
purpose of applying a criminal penalty.
Regarding whether possession should be
deemed to be exploitation or an act deemed as
infringement, it was argued that the acts currently
listed under the definition of exploitation are
worthy to be subject to exclusive rights, and thatpossession is not suitable for inclusion within thedefinition of exploitation, whereas it was also
argued that it would be simple to regard
possession as direct infringement if the primaryobjective were to apply a criminal penalty,
because if it were regarded as an indirect
infringement, then this would pose issues such aswhether or not indirect infringement should

Details of Discussion

We discussed including export andtransshipment within the definition of exploitation,
focusing on (i) the purport and purpose of the
Design Law, (ii) the balance with otherintellectual property laws, and (iii) the interests
to be protected by regulating export andtransshipment.
Inclusion of export was supported from theperspective of promoting anti-counterfeiting
measures and achieving international harmonizationof design systems, whereas it was also pointed
out that this arrangement should be made on an
equal basis under all industrial property laws andthat what interest would be protected should be
explained.
With respect to transshipment, it was argued
that including this within the definition of
exploitation under the Design Law would beinappropriate because in order to regulatetransshipment, design infringement must occur
both in Japan and in the destination country.
3

Future Discussion

The act of exporting articles to which thedesign is applied should be included within thedefinition of exploitation.
Careful study should be continued regardingwhether transshipment should be regulated under
the Design Law.

● 33 ●IIP Bulletin 2006

Ⅷ Removal of Parts from an Article
at Customs
1

Statement of the Issue

It is possible to import and sell articles that
infringe design rights by removing parts from thearticles at Customs, and then inserting repair
parts into the imported articles following customs
clearance. Such a loophole is likely to induce actsof direct infringement.
It is difficult to prove exclusive use ofarticles, and therefore regulations of indirect
infringement under the existing law are lesseffective from the perspective of combating
counterfeit products.
2

Details of Discussion

We discussed making provisions for indirect
infringement without requiring the proof of
exclusive use of articles, while considering (i) the
addition of a requirement that is similar to “being
indispensable for solving the problem (throughthe invention),” (ii) exclusion of standard
products and popular products from regulations,and (iii) addition of the subjective requirement.
A question was raised as to the possibility ofeffective customs control by adding the subjective
requirement in cases where infringing articles
may be controlled by applying provisions onpartial designs or similarity in designs.
On the other hand, the relaxation of therequirements for indirect infringement under the
Patent Law was evaluated as having deterrent
effects to a certain extent.
3

Future Discussion

We should also discuss adding the following
in the provision of Section 38 of the existing
Design Law: “act of manufacturing, using,assigning, leasing or exporting, or offering for
assignment or leasing, with sufficient knowledge
on the registered design or designs similar
thereto, articles that can be easily changed backinto the articles pertaining to the registered
design or designs similar thereto.”

Ⅸ Extension of the Term of Design
Rights1

Statement of the Issue
There is an increased number of cases of

IIP Bulletin 2006

products with excellent designs that have a longlife or that enjoy a revival boom.
Under the existing Design Law, the term ofdesign rights is set at 15 years from the date ofregistration of the establishment of the rights.
Protection for a longer term is being sought insome quarters.
2

Details of Discussion

We discussed extending the term of design
rights to 20 years from the date of registration,
while referring to the provisions of the Patent
Law as well as those of foreign design laws.
The majority argued that considering theextreme difficulty in obtaining registration of
3D-trademarks, the rate of survival of design
rights and the necessity to protect brand images
produced by designs, the term of design rights
should be extended.
3

Future Discussion

The term of design rights should be set at 20
years from the date of registration.

Ⅹ Strengthening
Penalties
1ofCriminal

Statement of the Issue

In order to increase the deterrence against
carrying out acts of design infringement, it isnecessary to impose strict criminal penalties.
2

Details of Discussion

We discussed raising the upper limit for
design infringement penalties to imprisonment
with labor for not more than five years or a fine of
not more than five million yen, or to the samelevel as penalties for theft of property, i.e.
imprisonment with labor for not more than ten
years or a fine of not more than ten million yen.
We also considered the possibility of being able toimpose both imprisonment and a fine.
The majority found no problem with the ideaof raising the upper penalty limit for design
infringement to imprisonment with labor for not
more than five years or a fine of not more than
five million yen, which is the same level as
penalties imposed under other industrial property
laws. However, some were negative aboutstrengthening the penalty excessively as there
are some cases involving uncertainty regarding● 34 ●

whether design infringement has occurred.
3

Future Discussion

The upper limit for design infringement
penalties should be raised to imprisonment withlabor for not more than five years or a fine of not
more than five million yen, and the option to
impose both imprisonment and a fine should be
introduced.
In the case of design infringement by an
employee of a corporation, a fine of not more than
150 million yen should be imposed on thecorporation.

Ⅹ
Ⅰ Review of the Related Design
System1

Statement of the Issue

As a common practice in product development,
companies make minor or partial changes to theirsuccessful products while leaving basic
characteristics unchanged, and manufacture andsell such products as new products.
However, under the existing design system,
where a person files an application with respect toa design that is similar to the design stated in his
earlier application, the later application shall berejected because of the earlier application. This
prevents protection of improved designs.

designs with high creativity or originality areapplied are easily imitated. To avoid such
imitation, there is a need to obtain stronger
protection of product designs by filing a later
application with respect to a portion or part of theearlier design.
However, under the existing Design Law, alater design that is identical or similar to part ofan earlier design is not registrable.
2

While referring to the provisions on
similarity under the Patent Law, we discussed
allowing registration of a later design that is
identical or similar to an earlier design whereapplications for both designs are filed by the same
person. We also discussed registrability of such alater design where both designs are created by
the same person.
3

ⅩⅢ Exception to Lack of Novelty

In order to apply for exception to lack ofnovelty, the applicant must submit a certification
within 14 days of the filing date.
Under the existing system, it takes aconsiderable amount of time and labor to obtain acertification from a third party.
2

Details of Discussion

Future Discussion

An improved design in a later application
should be made registrable as a related design if
the later application is filed while the application
with respect to the principal design is currently
pending.

ⅩⅡ Later Design Identical or Similar
to Part of Earlier Design
1Statement of the Issue

Details of Discussion

We discussed reviewing the related design
system in order to ensure registrability of
improved designs in later applications, while
maintaining the rights for related designs. We
also studied the need to limit the period in whichsuch later applications are accepted.
3

Future Discussion

A later design that is identical or similar topart of an earlier design should be maderegistrable if both applications are filed by thesame person and the later filing precedes the
publication of the earlier design.

1
2

Details of Discussion

Statement of the Issue
For successful products, portions to which

We discussed extending the period forsubmitting a certification.
Some argued for relaxation or exemption of
the obligation to submit a certification, whereas
others pointed out that such an arrangement
would undermine stability of rights or reduce thespeed of the examination process.
3

Future Discussion

The period for submitting a certification
should be extended from 14 days to 30 days fromthe filing date.

● 35 ●IIP Bulletin 2006

ⅩⅣ Secret Design System
1

Statement of the Issue

Under the existing secret design system,
secrecy may be requested only upon the filing of adesign application.
Due to such limitations, examination ofdesign applications is too expedited and designs
are published prior to the release of products,
which have adverse effects on advertising andpromotion strategy.
2

Details of Discussion

We discussed allowing applicants to request
secrecy of designs not only upon filing but also at
any time depending on the progress in theexamination process.
3

Future Discussion

A request for secrecy should be accepted not
only upon filing but also at any time while theapplication is pending.

ⅩⅤ Prior Design Disclosure
1

Statement of the Issue

Designs that are not similar but relevant to a
design stated in an application shall be taken into
consideration when determining similarity ofdesigns. It is necessary for examiners toefficiently grasp publicly known designs that are
relevant to the design in an application.
2

Details of Discussion

We discussed increasing efficiency and speedof examination or clarifying the relationship withpublicly known designs by requiring applicants todisclose prior designs that they know of.
3

Future Discussion

The introduction of the prior design
disclosure system should be carefully studied
while giving due consideration to the balance
between the benefit of disclosure of prior designs
and the burden of disclosure on applicants.
(Researcher: Yusuke IKESHIMA)IIP Bulletin 2006

● 36 ●