15 The Protection of Screen Image Design– A Comparative Study between Chinese and Japanese Laws – (*)
Invited Researcher: Yuying Guan(**)
New and unique image designs are worth protecting under intellectual property laws andother related laws. An image design may be also protected by the Copyright Law, Trademark Law
or Unfair Competition Prevention Law in Japan, yet in practice protections under these laws are
not so easy to acquire. Japan strengthened the protection on image design by having revised its
Design Act in 2006 to extend the scope of industrial design including image design.
In China, an image design theoretically may also be subject to the protection of Copyright Law,
Trademark Law or Anti-Unfair Competition Law, yet in practice these protections are of little
significance. Chinese Patent Law may also protect an image design to some extent, but since
there’s no partial design concept, the right owners or applicants of image designs registered orapplied as partial designs in foreign countries will meet some problems. These problems may bepartly corrected by changing the way of submitting application documents, and not impede thegrant of right, since the substantive examination is not required for design application. However,the status of the right obtained in such a manner is also unstable. More effective approaches
should be considered for the needs of providing explicit rules in Chinese legal system,
strengthening protection on image design, and meeting international trend of intellectual propertysystem.

The purpose of this research is toinvestigate the feasibility of providing
protection to screen image designs under thepatent system in China, by conducting acomparative study between Chinese andJapanese legal systems concerning protection
for such intellectual creations.

I

Screen Image Designs and Current
Status of Protection

The explanation of “screen image
designs” addressed in the report has to startwith the definition of “graphical userinterfaces (GUI)” of electric information
devices. A user interface is such a mediumthat the user exchanges information with adevice in use of an electric device, electric
equipment, or software. The usability of a
GUI is a key component of success in themarket for software product and related
products. The recent cycle of renewal ormodel changes of IT products has become
extremely fast. Therefore, the creation of new
screen image designs is a significant element
affecting competitiveness of products.
Advanced IT nations and regions
including the U.S., European Union,
Australia, Japan, and South Korea haveestablished respective systems to protect
screen image designs. Whereas in most ofthese countries, screen image designs shall beapplied to products, the EU, whose definitionof “product” includes “graphic symbols,”(*)

This is an English translation of the Chinese summary of the report published under the Industrial Property
Research Promotion Project FY2007 entrusted by the Japan Patent Office. IIP is entirely responsible for any errors
in expressions or descriptions of the translation.
(**) Doctor of Law, Intellectual Property Center (IPCC), Chinese Academy of Social Sciences (CASS)●IIP Bulletin 2008124 ●

registers and protects GUIs and screen
images to be regarded as product designs. (*1)
On the contrary, Japan, when its Design Act
was amended in 2006, not only has
maintained its decision that screen image
designs to be protected shall be applied totangible articles, but also limits to designs
which serve operations to “make a product ina condition to perform its function” as theprotectable subject matter, as a result of
deliberately considering a balance ofinterests for all the parties concerned. The
Japan Patent Office revised its Design
Examination Guidelines in 2007 so thatsome designs such as webpage designs andimage designs on computer screen that may
be registered in other countries are excluded
from the protectable subject matters under
the revised Design Act. (*2)
Since the subject of this research is tocompare between Japan and China withregard to the system to protect screen image
designs, the author sets, from theperspective of the Japanese Design Law, thescope of “screen image design” in the
research as such new image designs that are
displayed on liquid crystal displays ofelectric products when switched on so thatthe user operates the products to perform its
functions.

II

Protection of Screen Image Designs
in JapanComparing with the other types ofintellectual creations, a product design has
more aspects in the characteristics, so that
more comprehensive protection is necessary
for product designs. Under the current
Japanese legal system, screen image designs
are protected under the Design Law and, if

the prescribed requirements are fulfilled,
may be also protected under the CopyrightLaw, Trademark Law, or the Unfair
Competition Prevention Law.

1

Protection under the Copyright Law

Theoretically, a design that satisfies thecondition of originality may be protectedunder the Copyright Law. In the Japanese
Copyright Law, the definition of “works”
covers “artistic works.” Any design in which
original
andaesthetic
thoughtsorsentiments are expressed may be deemed an
artistic work and therefore protected under
the Copyright Law. In addition, provisions
for compilations under the Copyright Law
may cover designs. The advantage of
copyright protection is that the protection isprovided automatically for a long period oftime without a registration procedure.
In practice, however, designs are lesslikely protected under the Copyright Law.
Since industrial designs are different fromworks in terms of the necessity for protection,
it remains uncertain whether screen image
designs may be protected under theJapanese Copyright Law. Theoretically,
copyright protection may be provided to aninterface or image that fulfills the conditionof originality specified in the Copyright Law.
In recent years, there are some cases thatindicated that software interfaces may be
copyrightableas“compilations.”(*3)
Nevertheless, the issue of screen image
designs is comparatively complex in reality.
Since most of them consists of generic, finite,and less alternative expressions, they are
not considered protectable under the
Copyright Law. It should also be noted that
the Copyright Law does not prohibit third(*1) “Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection ofdesigns”, Article 1: “…a. 'design' means the appearance of the whole or a part of a product resulting from thefeatures of, in particular, the lines, contours, colors, shape, texture and/or materials of the product itself and/or its
ornamentation; b. 'product' means any industrial or handicraft item, including inter alia parts intended to beassembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding
computer programs; …”.
(*2) See II 4 of the report.
(*3) Nobuhiro Nakayama, Chosakukenhou (Copyright Law), (Yuhikaku, 2007), p.106, e.g., the judgment of the Osaka
District Court on March 30, 2000 in the “Sekisan-kun Case”, 1998(Wa)No.13577; the judgment of the Tokyo District
Court on June 30, 2004 in the “ProLesWeb Case”, 2003(Wa)No.15478, the judgment of the Tokyo District Court on
September 5, 2002 in the “ Cybozu Case”, 2001(Wa)No.16440.
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125 ●IIP Bulletin 2008

parties from conducting reverse engineering.

2

Protection under the Unfair Competition
Prevention Law

The Unfair Competition Prevention Law,
which can effectively prohibit free-riding,plays an important role in the fields where it
may be difficult to apply intellectual
property laws. Under the Japanese Unfair
Competition Prevention Law, an act of unfair
competition is stipulated to be using “anindication of goods” similar to the one usedby a well-known product or imitating
another person’s “configuration of goods.” If
a screen image design of a product isconsidered to be a well-known mark, thedesign may be protected under the Law. If a
screen image design is considered to form apart of the “configuration of goods,” the Law
may protect the design for a period of three
years from the first sale of the product in theJapanese market by prohibiting any third
party from making a complete imitation of
the design. (*4)
There are some cases where the courts
indicated whether a screen image might beregarded as a “configuration of goods” or an“indication of goods” to show the origin of the
product.(*5)
For
example,intheabovementioned Cybozu case, whereas theplaintiff sought protection under the Unfair
Competition Prevention Law, the court did
not find the disputed screen image design tobe an “indication of goods” of the software
product. (*6) Furthermore, it should be noted
in practice that protection may be unlikely
provided to a screen image displayed for the
purpose of operation as a “configuration of
goods”, because such an image may beconsidered to be a “common configurations”

of
goods
from
the
perspectiveof(*7)
standardization.
In most cases, a screen
image design is especially considered toconstituteonly
anelementofthe“configuration of goods.” Since injunctive
remedies under the Unfair Competition
Prevention Law is limited to only the act ofselling a product that is a complete imitationof the entire configuration of anotherperson’s goods, the effect of protection
provided under the Law is limited.

3

Protection under the Trademark Law

The definition of design under the
Design Law is highly similar to thedefinitionof“trademark”
under
the
(*8)
Trademark Law.
Theoretically, any designthat is considered to be distinctive andingenious may be protected as a trademark.
Trademark protection may be provided to ascreen image design only if it is used inconnection with goods.(*9) Even a screen
image that is regarded as a trademark
containing a generic term which is clearly
defined by the Japanese Trademark Law asanunregistrable
trademarkmayberegistered as a trademark if the image has
become distinctive as a result of use over acertain period of time.(*10) A major advantageof trademark protection is that it gives thedesign owner an effective injunctive relief fora third party’s imitation and an option toextend the protection period.
In reality, however, the screen image
design of a product is rarely used as atrademark and relevant examples are hard
to find, because it is more suitable fordesigners’ needs to register screen image
designs under the Design Law. With regard
to unregistered designs, it is more likely to(*4) Article 19 (Exclusion from application, etc.)(1)(v)(a) of the Unfair Competition Prevention Act specifies that a request
for such protection of goods against an act of unfair competition might be dismissed if “three years have elapsed fromthe date they were first sold in Japan.”(*5) Institute of Intellectual Property, “Hyoji gamenjo ni hyoji sareta gazou dezain ni kansuru hogo ni tsuiteno chosakenkyu houkokusho” (Study on the protection of image designs displayed on screens), p.103. (March 2002).
(*6) The judgment of the Tokyo District Court in the “ Cybozu case”, available at
http://www.courts.go.jp/hanrei/pdf/024A64E6B03E207649256C7F0023A164.pdf (as of January 2008).
(*7) Saburo Moriwaki: “Study on Protection of Image designs Indicated on the Display Screen,” p.14, IIP Bulletin, 2002.
(*8) Article 2, para.1 of the Trademark Act.
(*9) Article 3, para.1 of the Trademark Act.
(*10) Article 3, para.2 of the Trademark Act.
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126 ●

seek
protection
underCompetition Prevention Law.

4

theUnfairProtection under the Design Law(1) Legislative Background of the Revised
Design Act
In this information age, protection of
screenimage
designs
has
becomeincreasingly important and it was finallyreflected to the Japanese Design Act. On
March 31, 1993, the Japan Patent Officepublished the “Guidelines on Treatment ofDelineation of Liquid Crystal Displays, etc.”,
permitting the filing of a application forregistration of an image displayed on aliquid crystal display as long as it satisfies
the prescribed requirements. (*11) In February
2002, the Japan Patent Office published the“Guidelines on Treatment of Delineation of
Liquid Crystal Displays, etc. (partial designs
applicable version)”, (*12) specifying that theprovisions and requirements concerning thefiling of an application for registration of apartial design should be applied to image
designs displayed on liquid crystal screens.
In January 2004, the Japan Patent Officepublished
the“Guidelines
forthePreparation of Design Applications andDrawings”, explaining in detail how to filean application for a “screen image design.”
In the revised Design Act in 2006, theprovision with respect to screen image
designs was added to the definition of“design”(*13) Subsequently, the Japan Patent
Office published the revised “Design
Examination Guidelines” in 2007, describing
in detail how to apply respective provisionsof the revised Design Act in the design
examination procedure. At this stage, legal
system was nearly completed in Japan toprovide protection of screen image designs.
The Design Examination Guidelines
published in 2007 specify the criteria forregistration of a “screen image design.” For
instance, a screen image design shall apply
only to an article and is indispensable for the
performance of the functions.(*14) On theother hand, it explicitly specifies that images
displayed in a computer interface, aninterface displayed through the Internet, or
images displayed in an electronic gamedevice are not registerable.(*15) Design
protection for screen image designs is limitedin this way in order to implement the law ina stable manner and to maintain an
appropriate balance between the promotionoftechnology
development
andtheprotection of industrial property rights
including design. Under the current Design
Law, a screen image design is protected only
to the extent that the design is an integral
part of product. (*16)(2) Current Status of Protection under the
Design Law
The Design Examination Guidelines in2007 set four requirements for registerabilityof a screen image design.(*17)(a) The article to which a design containing
graphic image is applied must be
admissible as an article under the
Design Act.(*18)(b) A graphic image must be provided foruse in the operation of the article.
However, no registration may be made(*11) Design Committee: “Study on Protection of ‘The Displayed Images’ under Japanese Design Law,” pp.26-34, Journalof JIPA, Vol.3, No.1, May 2003.
(*12) Japan Patent Office, “Guidelines on Treatment of Delineation of Liquid Crystal Displays, etc.” (applicable to partial
designs), February 2002.
(*13) Article 2, para.2 of the Design Act, “The shape, patterns or colors, or any combination thereof, of a part of an article
as used in the preceding paragraph shall include those in a graphic image on a screen that is provided for use in theoperation of the article (limited to the operations carried out in order to enable the article to perform its functions)and is displayed on the article itself or another article that is used with the article in an integrated manner.”(*14) Japan Patent Office, “Design Examination Guidelines” (reflecting the revised Design Act in 2006), 74.1 (2007)(*15) Japan Patent Office, “Design Examination Guidelines” (reflecting the revised Design Act in 2006), 74.4.1.1(2) (2007).
(*16) Intellectual Property Policy Committee of Industrial Structure Council, “ Ishoseido no arikatani tsuite”(Recommendation for Revision of the Design System),Part 3, Chapter I, 3 (2): Screen designs not subject toprotection (February 2006); available at http://www.jpo.go.jp/iken/pdf/iken_ishou_kekka/shiryou02.pdf (as ofJanuary 2008)(*17) Japan Patent Office, “Design Examination Guidelines” (reflecting the revised Design Act in 2006), 74.1 (2007)(*18) Japan Patent Office, “Design Examination Guidelines” (reflecting the revised Design Act in 2006), 21.1.1.1 (2007).
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127 ●IIP Bulletin 2008

for an interface displayed when software
installed in an article is activated.
(c) A graphic image must be used to put thearticle into a state to be enabled toperform its functions. The phrase “astate” means that a condition in which
the article is in readiness to perform its
function, and does not include a
condition in which the article is actuallyworking according to its functions.
Screen image design under “thecondition in which the article is actuallyworking” such as a computer interface ora webpage design may not beregisterable.
(d) A graphic image must be displayed on
the article itself or another article thatis used with the article in an integral
manner. In most cases, the images
representing the respective functions ofan article are displayed on the screen
attached to the article. In the case of anarticle that has no screen and is used in
combination with an external display
device, the screen image design isregisterable as the one displayed on thescreen of the external display device.
The Japan Patent Office has establishedrules for formalities of application for design
registration. For example, partial designs
shall be indicated by solid lines and brokenlines. It must be noted that it is not accepted
to file an application solely for registration ofa screen image so that the applicant isrequired to designate “the article to thedesign”. In the case of an image that changes
on the screen, the relevance must berecognized in forms before and after thechange. Without relevance, the application
for design registration would be rejected
after the formality examination.(*19)
In order to be protected under the
Design Law, a screen image design must
fulfill the general substantive requirements
for being recognized as a design. For
example, a screen image design must bepractical (industrial applicability), novel,
creative (difficulty in creation), different
from any designs claimed in priorapplications, and must not fall under an
explicit provision specifying subject mattersthat are not subject to design registration.

III Protection of Screen Image Designsin China
In China, development of industrial
designs was started up relatively recently.
The
Chineseintellectual
property
community has long been discussing how toprotect interfaces displayed on screens.

1

Protection under the Copyright Law

Neither the Chinese Copyright Law nor
its Enforcement Rules have any provision
specifying protection of interfaces displayedby software. Theoretically, screen image
designs are protected as “artistic works.”
However, a screen image is often designed
without sufficient freedom of creation. As aresult, a screen image design tends to be
regarded as “only possible expression” or“limited expression” and consequently
categorized as an “idea” or “thought,” which
are not subject to copyright protection. The
Computer Software Protection Regulations
do not have a provision concerning
protection of screen image designs either. A
judge who happened to preside over a
dispute over a screen image design would
have to make a judgment based on his or her
own interpretation of the Copyright Law andrelated laws. The following two recent cases
in China concerning this issue are worthy ofattention.
As the first case, a Beijing-based
company, Jiuqi Software Co. Ltd., filed alawsuit for copyright infringement against a
Shanghai-based company, Tianchen Software
Co. Ltd. The plaintiff was the copyrightowner of a product called Jiuqi Software.

(*19) Design Examination Guidelines Office, Design Division, Trademark, Design and Administrative Affairs Department,
Japan Patent Office: Guidelines on the Preparation of Design Applications and Drawings”, Chapter X: Guidelines on
Treatment of Delineation of Liquid Crystal Displays, etc. (partial designs applicable version) p.117, available at
http://www.jpo.go.jp/shiryou/kijun/kijun2/pdf/zumen_guideline/paper10.pdf (as of January 2008).
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128 ●

The defendant developed and launched a
product called “Tianchen Software,” which
had similar functions as the Jiuqi Software
had. The plaintiff asserted that thedefendant had infringed the GUI of the Jiuqi
Software. The point of dispute in this casewas whether a GUI was copyrightable or notunder the Copyright Law. The High People's
Court of Shanghai after the trial,
subsequently to the Intermediate People's
Court, rendered the final decision statingthat the GUI was not copyrightable because
the components of the GUI menu commandsof the Jiuqi Software such as command
names, buttons, dialogue boxes, windows,
scroll bars, and icons used to display certain
charts were commonly used in other userinterfaces and therefore not creative.(*20)
In the second case, it was disputed
whether a computer router interface was
copyrightable or not. The judgment in thefirst instance stated that, since both parties’router products had almost the same GUI,thedefendant’s
actconstituted
aninfringement of the plaintiff ’s copyright.
However, the court of second instance judgedthat the dialogue boxes, windows, and othercomponents of the user interface designs
displayed in the both parties’ products weremeant for general purposes and that the
selection, arrangement, and layout of thecomponents
failedtosatisfytherequirements for creativity of work specified
in the Copyright Law.(*21)
In the above two cases, the courts
analyzed from the viewpoint of compilations.
While the required level of originality islower in the case of compilations incomparison with fine art works, it isextremely difficult in China, however, toprovide copyright protection to screen image
designs as compilations.

2

Protection under the Trademark Law
and the Anti-Unfair Competition Law

In China, it is uncertain whether the
Trademark Law protects screen image
designs, since they are likely to be deemed
general purpose expressions or functional
expressions and therefore may not beregisterable as trademarks. It should be also
noted that the Chinese Trademark Officeand the Trademark Review and Adjudication
Board usually do not approve a mark that
includes a complicated graphic or structure
because such a mark is too complicated to
distinguish and lacks distinctiveness.(*22)
Acts of unfair competition as stipulated
in the Chinese Anti-Unfair Competition Law
include “without authorization, to use thespecific name, package, decoration of thefamous or noted commodities, or use asimilar name, package, decoration of thefamous or noted commodities, which may
confuseconsumers
distinguishingthecommodities to the famous or noted
commodities.” According to this stipulation,screen image designs of goods may bedeemed to fall under the category of “specificpackage or decoration of the famous
commodities” and they may be protected only
when they cause relevant public perceptible
confusion.
On December 30, 2006, the Supreme
Court of the People’s Republic of China
defined “the specific package and decorationof commodities” in its “interpretation oflaws.”(*23) Based on this interpretation,
product design is deemed to be “specificpackage or decoration of commodities” only
when it is very highly creative.
It isstipulated that a plaintiff has the burden of
proof that the goods are “famous or noted”
and that there is “confusion.” As we can see
from the above, and as expected, screen
image designs have little possibility of being(*20) Judgment of the Second Intermediate People’s Court of Shanghai: (2004)Hu-Er-Zhong-Min-Wu(Zhi)Chu-Zi No.100;
Judgment of the People’s High Court of Shanghai: (2005)Hu-Gao-Min-San(Zhi)Zhong-Zi No.38.
(*21) Judgment of the People’s High Court of Guangdong Province: (2005) Yue-Gao- Fa-Min-San-Zhong-Zi No.92.
(*22) Chinese Trademark Office and Trademark Review and Adjudication Board, “Guideline for Patent Examination”(December 2005), Part 2, Section 5.
(*23) “Interpretation of the Supreme People’s Court on Some Issues Concerning the Application of Law in the Trial of Civil
Cases Involving Unfair Competition” Article 2.(2007).
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129 ●IIP Bulletin 2008

protected under the Anit-Unfair CompetitionLaw.

present new and creative points of relevant
design.

3

IV Comparison and Evaluation ofLegislative Protection Systems for
Screen Image Design in China andJapan

Protection under the Patent Law

The Rules for The Implementation of
The Chinese Patent Law define “Design” as“any new design of the shape, the pattern or
their combination, or the combination of thecolor with shape or pattern, of a product,
which creates an aesthetic feeling and is fit
for industrial application.”(Rule 2)
In practice, new designs related to apart of the appearance of a product areincluded in the registered designs.
It is not found also in the Chinese
patent system whether screen image designs
fall under the category of product design.
In practice, the Guidelines for Patent
Examination (2006) published by the
Chinese State Intellectual Property Office(SIPO) provide that “a graphic displayed
after turning the product on” shall be no
subject matter of design patents,(*24) which
may cause misunderstanding. However,more and more applications for design
registration relating to products including
liquid crystal display design have been filed
to SIPO.
Design applications are notsubject to substantive examination; therefore,
the right is usually granted only by filing.
However, since there is no partial design
systemandnorelatedrulesfor
implementation, screen image designs areprotected in China as a part constituting theentire product’s design.
Design application is prosecuted inaccordance with stipulations related to theChinese Patent Law, the Rules for The
Implementation of The Patent Law, and the
Guideline for Patent Examination. Since
the scope of protection of patent rights fordesign is based on drawings or photographs
submitted at the time of filing, it isimportant for the protection of rights todetermine how to create drawings or to

The differences in protection of screen
image design by intellectual property laws
and relevant laws in China and Japan are as
follows.

1

Protection under the Copyright Laws

A theory stating that design is also
under protection of copyright laws is
relatively well-known in China and Japan.
Also under judicial systems in both countries,
design is regarded as a copyrightable work
under the Copyright Laws only if it has
sufficient creativity. However, in practice,cases in both countries show that protectionof software interfaces or screen image
designs is not as facilitated as one could
imagine, because these screen image designs
are likely to be recognized as lacking
sufficientcreativity.
Moreover,itisunfavorable to a right holder of a new designthat the protection under the CopyrightLaws is not applied to “idea” and reverse
engineering are not usually regarded as
infringement of a copyright (whether it
violates a contract between a user and aright holder is another argument).
How to protect screen image designs
effectively under the Copyright Law was nota pressing issue in Japan when the Design
Act was amended in 2006. In China, inorder to provide effective protection forscreen image designs under the CopyrightLaw, it only has to lower the requirements
for creativity in the implementations of the
Copyright Law. First, this would increase
the possibility of protection under the
Copyright Law by regarding screen image(*24) SIPO, Guidelines for Patent Examination, Part 1, Chapter III, 6.4.3 (11), Ordinance of State Intellectual Property
Office of P.R.C., No.38, issuance: May 24, 2006; enforcement: July 1, 2006.

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130 ●

designs as works of fine art, and second, they
could refer to court precedents(*25) withregard to the protection of website designs ascompilations.
In practice, however, it isdifficult for screen image designs to fulfill
therequirementsforcreativity
ofcompilations.
Scholars and legislative
institutions should explore countermeasuresoutside the scope of copyrights.

2

Protection
under
the
UnfairCompetition Protection Laws and theTrademark Laws

In Japan, in cases where a screen image
design is illegally faked or imitated, if therequirementsforthe“indicationofwell-known goods” or “configuration of
goods” are fulfilled, it may fall under theprotection of the Unfair Competition
Protection Law. In practice, it is not easy tosatisfy these requirements. In addition, it
is a more normal and effective option for
designers to file applications for design
registrations under the Design Law.
Therefore, there seems to be no case to date,where a screen image design is protected byapplication of the Unfair Competition
Protection Law.
In China, no stipulation related toscreen image design is in the Anti-Unfair
Competition Law at all. Provisions cited as
grounds for court judgments are normally
only “general clauses.”(*26) Under the current
situation, unregistered screen image designs
which are not copyrightable may not beprotected under the Anti-Unfair Competition
Law, if they are not recognized as “packageordecorationoffamousor
notedcommodities.”
While screen image design may beprotected in theory under the Trademark
Laws, in practice, both in China and Japan,
there seems to be no relevant case where adesigner claimed for protection under the
Trademark Laws. The main cause of thissituation is assumed to be that no screen
image design is registered as trademark or
there is no actual use of screen image design
as trademark. Japanese rights holders ofscreen image designs usually demands
protection under the Design Law, theCopyright Law, and the Unfair Competition
Prevention Law. In China, more observationis necessary to see how the Trademark Law
functions because the industrial designindustry has just started to grow.

3

Protection under the Design Laws

(1) Evaluation of the protection of screen
image designs under the Japanesedesign system
As discussed above, whereas screen
image designs are not sufficiently protectedunder the Copyright Laws, the Unfair
Competition Prevention Laws, and theTrademark Laws, in Japan, the Design Act
revised in 2006 defined the concept of screen
image designs in the definitions of “industrial
design” (Article 2, paragraph (2)). Later,
the Japan Patent Office stipulated in detailwith regard to the application andexamination for registration of design
including screen image design, in the new“Design Examination Guidelines” in 2007.
The author believes the following points
regarding the current Japanese design
protection system are worthy of note:(i) While the Japanese Design Law
strengthened the protection of screen image
designs, it required designation of the“article to the design”, under which they falland strictly limited the scope of protection of
screen image designs to “where the article isput into a state in which the article isenabled to perform its functions” after
deliberate consideration.
(ii) The author agrees that the Japanesedesign system limits the protection forscreen image designs to the initial menu
after turning the product on and the screen(*25) The Second Intermediate People’s Court of Beijing: “Legal issues on the case of copyright infringement between
Xiamen Xinda Business Information Co.Ltd ”in ≪Shenpan qianyan≫, December 2004.
(*26) Chinese “Anti-Unfair Competition Law” Article 2: “In the market transactions, a business manager shall follow
principles of autonomy, equality, fairness, and faith and trust, and follow business ethics as recognized in public.”●131 ●IIP Bulletin 2008

images displayed afterwards and having
relevance in forms before and after thechange.
(iii) Since the ratio of partial designs in the
all design applications and registrations has
been increasing,(*27) it is necessary to
examine the application of laws to screen
image designs together with the current
situation of protection of partial designs.
The Japanese Design Act revised in 2006
stipulates that the similarity between theregistered design and another design shallbe determined based upon the aesthetics
impression the aesthetics impression thatthe designs would create through the eye of
theirconsumers.”(*28)
The
DesignExamination Guidelines published by theJapan Patent Office in 2007 provides adetailed interpretation of how this principle
applies to and is used for examination.
However, the judgment of similarity between
partial designs remains unclear.
Recenttheories and judicial precedents in Japantend to use the comprehensive criteria of a“compromise between creation and confusion
as well as recognition of the main part.” (*29)(iv) It should be noted that the current“Japanese Classification for Industrial
Designs” released by the Japan Patent Officeon April 1, 2007 is added with a newclassification “W” for image design.(*30) The
author recognized that the assignment of theclassification had reflected novelty andcreativity of screen image design of posterior
applications in practice and acquired thefunction of protection by the classification of“image design” as matter of fact.

(2) Evaluation of the protection of screen
image designs under the Chinese
patent system(i) Since it is not possible to file anapplication for registration of screen image
design as a partial design in China, thefollowing issues may arise:(a) Inconvenience for applicants. Since therelevant public cannot intuitively recognize
novel parts of the design, it may have an
adverse effect on judicial efficiency. Moreover,the legal position of a “reference drawing ofvariable usage condition” is not clear so
there may be difficulties with the executionof laws.
(b) In China, a design application is not
subject to substantive examinations so thatthe claim of international priority right isusually admitted and a design patent may be
granted, even if the documents of the earlier
application and the later application are not
identical. However, such a design patent
may be declared as valid due to lack ofnovelty resulting from denial of the priority
right during the course of invalidation trial
or infringement litigation.
In theGuidelines for Patent Examination of 2006,
it was amended favorably to convention
priority right holders(*31); however, more
observation is needed to determine thepractical effects of this provision.
(c) Taking Japan as an example, it isstipulated that design applications have a
six month period for claiming theinternational priority right.
Under theprovisions of the Design Examination
Guidelines, in cases where there is a(*27) Recently, the number of partial design applications accounted for approximately a quarter of the total number ofdesign applications in Japan. See Japan Patent Office, Wagakuni ni okeru shutsugan to shinsa/shinpan no doko
[Trend of application and examination in Japan], (2002-2006), p.12 (Statics of partial design application). Available
at the Japan Patent Office website http://www.jpo.go.jp/shiryou/toushin/nenji/nenpou2007/honpen/1-1.pdf (as ofJanuary 2008).
(*28) Article 24, paragraph (2) of Japanese Design Ac (newly added in 2006): “Whether a registered design is identicalwith or similar to another design shall be determined based upon the aesthetics impression that the designs would
create through the eye of their consumers.”(*29) Hiromichi Aoki, Chiteki zaisan toshiteno brand to design [Brand and design as intellectual property rights] (2007),
p.283 to 299; Shuichi Itakura, “Shingai sosho ni okeru bubun isho no ruihi handan”[Judgment of similarity of partial
design in infringement lawsuit], Chizai kanri [Intellectual Management], Vol.57, No.6, p.941.
(*30) Design Division, Trademark, Design and Administrative Affairs Department, Japan Patent Office, “ Nihon ishobunrui ni tsuite” [Regardfing the Japanese Cassification for Industrial Design (Enforcement on April 1, 2007)],
available at Japan Patent Office website http://www.jpo.go.jp/shiryou/s_sonota/pdf/bunrui/190401.pdf (as of January2008).
(*31) SIPO, Guidelines for Patent Examination, Part 4, Chapter V, 7.2.

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difference between an application filed inJapan and the earlier application filed in aforeign country, the Japan Patent Office may
not admit the priority claim.(*32)
It isobviously a disadvantage for an applicant
who filed an earlier application for a design
patent (as a whole) in China, and later filean application for partial design in Japan.
(ii) In practice, since no substantive
examination is made for a design patentapplication in China, a design patent for
design of entire product including a screen
image design (which is not a part of relevant
screen image(*33)) may be granted. However,
due to the provision in the Chinese
Guideline for Patent Examination that
stipulates “graphics displayed after turning
the product on” “is not a subject matter ofdesign patent,” screen image designs may besuch disadvantaged that it is not practicallyprotected under the current Chinese patent
system. If this provision is deleted, it will
strengthen actual protection of designs
including screen image designs.
(3) The necessity and possibility ofprotecting screen image designs byintroducing a partial design system toChina
It is the author’s understanding that theneed to enact a partial design system has not
yet received much recognition in China, andtherefore, there was no consideration forpartial design system in the draft of thethird amendment of the Patent Law.
Despite the current situation, it seems
to be essential to introduce partial design
system in the Patent Law. First, it should
be clarified that a partial design may beprotected under the law like a whole design.
This will not drastically increase the numberofdesignapplications
nor
cause
deterioration in the quality. Second,
implementation of partial design system will
satisfy the needs of applicants who apply a

new design to a part of the appearance of a
product, and will facilitate to determine thescope of design protection quickly andcorrectly. Moreover, the partial design
system will help applicants and patentees
claiming international priority rights toenforce their rights under the laws
domestically and abroad. Ultimately, theadoption of partial design system facilitatesinternational harmonization of intellectual
property systems.
Industrial nations tend to protect screen
image design under industrial property
rights. If China does not consider taking
appropriate measures, it may become
passive with regard to the international
protection of intellectual property rights.
China should promote legislative protectionof screen image designs step by step,naturally considering its current domestic
development stage.
When putting the system in place: first,
include the relevant provisions in the
Guidelines for Patent Examination, such as
specifying a novel creative part by using soldlines and broken lines in the application forpartial design of the appearance of a
product; second, exclude the provision that“graphics displayed after turning the producton” is not a patentable subject matter under
the Patent Law from the Guidelines forPatent Examination; third, add the conceptof “partial design” to the definition of“design” when amending the Patent Law, or
add such an interpretation that partial
design is also included in “design” in a
relevant provision of the Rules for The
Implementation of The Patent Law; andfinally, even if screen image design isincluded in the definition of “design”, thescope of protection should be limited toscreen image designs that are linked to theoperational functions of a tangible “product”,
if necessary.

(*32) Japan Patent Office, Isho shinsa kijun [Design Examination Guidelines] (corresponding to amendment of the Design
Act in 2006), 71.13 (1).
(*33) If the subject matter of application is a display image design itself, it does not pass the initial step of examination,
Guidelines for Patent Examination, Part 1, Chapter III, 6.4.3 (11), Ordinance of SIPO, No.38, issuance: May 24,
2006; enforcement: July 1, 2006.
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V

Conclusion

Theoretically, the many intellectual
property rights and their relevant legal
systems, both in China and Japan, aresupposed to provide multiple protections forscreen image design. In practice, however,protections under the Copyright Laws, theUnfair Competition Protection Laws, theTrademark Laws, and others are not as
extensive as one would expect.
It is appropriate and necessary toprotect screen image design under industrial
property laws. The protection system ofscreen image designs in Japan under the
Design Law, which has been developed sincethe 1990’s to date, is relatively rational,
takes domestic and international factors into
consideration
comprehensively,andmaintains the balance of the interests anddemands in every field. In this regard, it issignificant to study the Japanese systems
and investigate points to be considered fordesigning relevant systems in China.
The current Chinese patent system maypractically protect screen image designs to acertain extent, however, some problems may
arise during implementation. The easiest
and shortest way to eliminate unfavorable
factors for the protection of display image
designs under the current Chinese patent
system is to amend the relevant provisions of
the Guidelines for Patent Examination.
From a long term viewpoint, clarifying theconcept of partial design in the Patent Law,
and adding measures for implementationthat correspond to the legal provisions
pertaining thereto, it is possible to improve
substantial protective function for screen
image designs. With time, the concept ofscreen image design may be included in thedefinition of “industrial design” in China.
In that case, the scope of protection and theapplicable conditions should be clarified in
the relevant laws and implementation
regulations.

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