10 Legal Protection of Design or Applied Art- With the focus on the comparison of the Korean andJapan legal approaches to design law, unfair competition
law and copyright law for design -(*)
Invited Researcher: Sangyook Cha(**)

This report focuses on comparative study and analysis of the Korean and Japanese legal systems thatwere constructed to protect works of applied art and designs, from the perspective of comparative law. This
report particularly purports to conduct comparative study on the Copyright Acts of the two countries, theDesign Protection Act of Korea and the Design Act of Japan as well as the Unfair Competition Prevention
Acts of the two countries, and to survey the legislative stance and status of the application of legal
protection of works of applied art, thereby to infer points at issue while taking into account the judicial
precedents of the two countries.
An overall review of the Korean laws and the Japanese laws concerning protection for works of applied
art reveals that those works are protected by the Design Protection Act and the Design Act, and by the
Copyright Act. In addition, those works are protected in a supplementary manner by the Unfair
Competition Prevention Acts of both countries. With regard to overlap protection by the Copyright Act,
Korea provides protection for works of applied art by expressly mentioning such works in its Copyright Act.
In contrast, the Japanese Copyright Act does not clearly indicate whether such works are protected, andjudicial precedents show that such works are protected as works of art only in limited cases. Therefore, it
can be concluded that Korea is more willing to provide overlap protection by the Copyright Act than Japan.
For protection of works of applied art under the Copyright Acts of both countries, especially withregard to criteria for judging copyrightability of those works, the Korean Copyright Act needs to clearly
establish criteria for originality, and Japanese judicial precedents need to clearly establish criteria fororiginality that are identifiable with those for works of fine art.
The Unfair Competition Prevention Acts of both countries protect, for instance, containers or packages,
etc. of products by the provisions concerning acts of causing confusion, including acts of causing confusion
with another person’s goods and acts of causing confusion with another person's commercial facilities or
activities, acts of diluting famous trademarks or acts of abusing famous indications. The Unfair Competition
Prevention Acts also protects product shapes by provisions concerning restrictions on dead copies which
provide that acts of unfair competition are to include acts of imitating the product shapes of anotherperson’s goods and transferring or otherwise handling them. Those provisions play an important function
and role in protecting unregistered works of applied art and design. However, the protection for works ofapplied art, especially for product shapes, tends to be limited in terms of the protection period, the nature ofprotection, which takes the form of granting the right to exclude imitations, and applicability, which isnarrowed by provisions about exemption of application. In conclusion, in both countries, the protection
provided under the Unfair Competition Prevention Acts for works of applied art can be considered similarin general but different in details, such as the criteria for protection and the remedies against infringement.

Ⅰ Introduction
In order to protect intellectual property rights
to works of applied art, both the Korean andJapanese current legal systems have taken two
approaches. One approach is the grant ofintellectual property rights (the Copyright Act, theDesign Protection Act/Design Act) with the aim ofgiving incentives in the form of motive orcompensation to those who have obtained results
through creative or competitive activities. The
other approach is the grant of the right to seek an
injunction (the Unfair Competition Prevention Act)with the aim of giving indirect incentives to thosepeople through restrictions on the use of works ofapplied art. Under these intellectual property(*)

This is an English translation of the Korean summary of the report published under the Industrial Property Research
Promotion Project FY2008 entrusted by the Japan Patent Office. IIP is entirely responsible for any errors in expressions
or descriptions of the translation.
(**) Partner, Sang Rock, Law Office, Seoul, Korea.

IIP Bulletin 2009

● 70 ●

protection systems, it is important to strike abalance between an anticompetitive effect and acompetitive effect. An anticompetitive effect is
produced through the grant of exclusive rights andother legal rights that will achieve similar effects
as exclusive rights through restrictions on the useof intellectual property to creators and those whohave obtained results through competitive
activities (e.g., the right to seek an injunction),whereas a competitive effect is produced byleaving such results of creative activities andcompetitive activities in the public domain in orderto let consumers and the public as a whole use andenjoy those results. In recent years, design
protection-related laws were revised in the
Republic of Korea and Japan. These revisions weremade to address difficult issues related to the legal
protection of designs and objects of applied art,such as the issue of protecting them either under aregistered design protection system or an
unregistered design protection system, the issueof establishing either an examination design
registration system or a non-examination design
registration system, or the parallel use of both
systems, the issue of adopting either the system ofgranting rights or the system of restricting acts toprotect unregistered designs, and the issue of
whether to permit overlap protection by the
Design Act and the Copyright Act.
The purpose of this report is to conduct a
comparative study of law between the Republic ofKorea and Japan while focusing on the Design
Protection Act/Design Act, the Copyright Acts, andthe Unfair Competition Prevention Acts of the twocountries in order to suggest a desirable future
direction of design protection.

Ⅱ Protection for Objects of Applied
Art in the Republic of Korea
1

Protection of objects of applied art
under the Design Protection Act of the
Republic of Korea(1) According to Article 2, subparagraph (i) of the

Design Protection Act of the Republic of Korea,
designs must fulfill the following criteria in orderto receive design protection: (i) embodiment in anarticle, (ii) representation of a configuration, (iii)
visibility, and (iv) aesthetic sense. (*1) Any work ofapplied art that cannot be concretely expressedon the exterior of an article is not subject to the
Design Protection Act. Under the Design
Protection Act, since a design shall be inseparablefrom the article on which it is expressed, if two
articles are not identical, the designs expressed
thereon must be considered as non-similar. (*2)
One of the aforementioned criteria, “embodimentin an article,” has been gradually relaxed bymodifying the definition of “design.” In therevised Act of 2001 (enforced on July 1, 2001), thedefinition was expanded to cover partial designs.
Furthermore, in the revised Act of 2004 (enforcedon July 1, 2005), the definition was broadened tocover styles of calligraphy (typefaces) throughconstructive
applicationof
thecriterion“embodiment in an article.” The newly introduced
partial design system has been viewed as useful inobtaining a design registration for a character as a
type of work of applied art. (*3) The partial design
system has also contributed to expanding thescope of protection to cover image designs. (*4)(2) Designs and objects of applied art must be
registered in order to receive protection under
the Design Protection Act. In order to beprotected under said Act, a design must be (a)industrially applicable (the main text of Article 5),(b) novel (Article 5, subparagraphs (i) through(iii)), and must not be (c) easily creatable by any
person with ordinary skill in the art (Article 5,paragraph (2)). Any design that falls under thedefinition of “unregistrable design” specified in
Article 6 of the Design Protection Act may not beregistered. The purpose of imposing the criterionof “industrial applicability” is to clarify that only
mass-producible articles are subject to said Act(*5)
and to make industrially inapplicable objects, suchas works of fine art and artistic crafts produced
only as a single item, unregistrable under the
Design Protection Act. (*6) In general, “works of(*1) 윤선희(Yun
Sunhee),『지적재산권법(9정판)』(Intellectual
property
laws,
the
9th
edition),(세창출판사(Sechang Publisher), 2007), p. 198-219.
(*2) 『지적재산소송실무』(Intellectual property judicial proceedings), 특허법원 지적재산소송실무연구회(Patent
Court Study Group of Intellectual Property Proceedings), (박영사(Pakyoungsa), 2006), p. 253.
(*3) 박성호(Park Sungho), 『저작권법의 이론과 현실』(Theory and reality of the Copyright Act),(현암사(Hyeonamsa), 2006), p. 394-395.
(*4) 송영식(Song Youngsik), 이상정(Lee Sangjeong), 황종환(Hwang Jonghwan), 『 지적소유권법(제9판)(상) 』(Intellectual property laws, the 9th edition (First volume)), (육법사(Yukphubsa), 2005), p. 770-772.
(*5) Supreme Court Judgment 2004 후(Hu) No.2123 of September 15, 2005.
(*6) 송영식(Song Youngsik), 이상정(Lee Sangjeong), 황종환(Hwang Jonghwan), 『 지적소유권법(제9판)(상) 』(Intellectual property laws, the 9th edition (First volume)), (육법사(Yukphubsa), 2005), p. 748.
● 71 ●IIP Bulletin 2009

applied art” refers to aesthetic creations applied to
useful articles for industrial mass production.(*7) In
this sense, “works of applied art” are expressed as
the shapes of mass-producible articles and are
therefore industrially applicable.
Consequently, the concept of works ofapplied art itself could induce overlap protection
by the Design Protection Act and the CopyrightAct. (*8) Meanwhile, according to precedents, (*9)
one of the registration criteria, “novelty” (Article
5, paragraph (1), subparagraphs (i) through (iii)),
has been interpreted as objective creativity in an
ordinary sense. In contrast to such an absoluteconcept of “novelty” within the framework of the
Design Protection Act, (*10) “novelty” within theframework of the Copyright Act is a relative
concept because creativity is conditional under
the Copyright Act. (*11)(*12) A judgment onsimilarity with a publicly-known design must be
made based on the similarity in the sense of
beauty experienced by general consumers. (*13)(*14)
With regard to the criterion “not easily creatableby any person skilled in the art” (Article 5,paragraph (2)), a comparison with the former
Design Act prior to the revision of 2004 reveals

that the Act has broadened the definition of adesign that could be easily creatable by any
person with ordinary skill in the art by refusing toregister any design that could be easily created by
combining publicly-known designs (that fall undereither subparagraph (i) or (ii) of paragraph (1)).
(*15)
A design would be considered to be easily
creatable by any person skilled in the art if thedesign could be easily created by a designer withan average level of knowledge and skills in theindustry to which the design pertains at the timeof the filing of the design application, i.e., aperson skilled in the art. (*16)(3) A design right takes effect only after anapplication for the design is filed, examined, andregistered. Protection is provided for the design
on and from the design registration date. The
owner of a design right has the exclusive right tocommercially and industrially work the registered
design and a similar design (Main text of Article41). The creator of a work of applied art thatsatisfies the criteria for the establishment andregistration of a design prescribed in the Design
Protection Act is entitled to obtain an absolute(*7) 이해완(Lee Haewan), 『저작권법』(Copyright Act) (박영사(Pakyoungsa), 2007), p. 64 and 정상조(Jeong Sangjo),『지적재산권법』(Intellectual property laws) (홍문사(Hongmoonsa), 2004), p. 239-240, Nobuhiro Nakayama,
Chosakukenhou (Copyright Act) (Yuhikaku, 2007), p. 139, Fumio Sakka, Chosakukenhou seido to seisaku, Dai 3
han (Intellectual property law systems and policies (third edition)) (Japan Institute of Invention and Innovation,2008), p.567, Masao Handa, Chosakukenhou gaisetsu (Dai 12 han) (Introduction to the Copyright Act (12thedition)), (Hougakushoin, 2005), p. 87-88.
(*8) 김원오(Kim Wonoh), 「지적재산권 중첩보호체제의 문제점과 해결원리-응용미술품의 의장법과 저작권법에의한 중첩보호를 중심으로-」 (Issues and solutions related to the overlap protection of intellectual property
rights - With the focus on the overlap protection provided by the Design Act and the Copyright Act for works ofapplied art), (산업재산권(Industrial Property Rights)) no.15, (사단법인한국산업재산권법학회(Korean Society for
Legal Studies of Industrial Property Rights), 2004.5), p. 127.
(*9) Supreme Court Judgment 2000 후(Hu) No.3388 of June 29, 2001 (공(Public) 2001, 8. 15. (136), 1778).
(*10) The former Design Act enforced in Germany in 2004 was regarded as a copyright-type intellectual property law. In
connection with the former Design Act, the German Supreme Court (BGH) adopted relative and objective criteria
for judging novelty (Neuheit). (For further details, refer to Catharina Maracke, A Delimitation of Design Protection
and Copyright, Tokkyochou itaku heisei 17 nendo sangyou zaisanken kenkyu suishin jigyou houkokusho (Patent
Office-commissioned report on projects to promote research on industrial property rights in 2005), (Institute ofIntellectual Property, 2006), p. 3-4).
(*11) Supreme Court Judgment 94 도(Do) No.2238 of November 14, 1995 (공(Public) 1996, 1. 1. (1), 117), Seoul District
Court Judgment 2002 가합 (Ga-Hap) No.79435 of December 26, 2003.
(*12) 오승종(Oh Seungjong), 이해완(Lee Haewan) , 『저작권법(제 4 판)』 (Copyright Act, the 4th edition)(박영사(Pakyoungsa), 2005), p.
25 and 송영식(Song Youngsik), 이상정(Lee Sangjeong), 황종환(Hwang
Jonghwan), 『지적소유권법(제 9 판)(하)』(Intellectual property laws (the 9th edition) (Second volume)),(육법사(Yukphubsa), 2005), p. 525-526.
(*13) For more information on how to make a judgment on similarity between designs, please refer to Supreme Court
Judgment 2000 후(Hu) No.129 of May 15, 2001 (공(Public )2001. 7. 1., 1416).
(*14) A judgment on whether a design satisfies the registration criterion of novelty specified in Section 171 of the U.S.
patent law (35 U.S.C. §171) must be made based on an “ordinary observer” test in principle (Gorham Co. v. White,
81U.S. (14 wall) 511, 528, 1871).
(*15) 특허법원 지적재산소송실무연구회(Patent Court Study Group of Intellectual Property Proceedings), op.cit., 2,지적재산소송실무 (Intellectual property judicial proceedings), p. 253.
(*16) Nonobviousness is one of the criteria for registration of a design patent in the United States. A judgment as towhether said criterion is satisfied is made from the viewpoint of an “ordinary designer,” i.e., a “person having
ordinary skills in the art.” Nonobviousness is determined in consideration of Graham’s Factors, which are also
used in the case of utility patents. (Graham v. John Deere Co. of Kansas City, 15 L. Ed. 2d, 545, 556, 148 USPQ 459,
467 (1966)).
IIP Bulletin 2009

● 72 ●

exclusive right that is effective for 15 years fromthe registration date (Article 40, paragraph (1)).
(4) One of the characteristics of the design
registration procedure of the Republic of Korea isthe parallel use (referred to as the double track)of the examination registration system and thenon-examination
registration
system.
A
registered design right has the same effect andenjoys the same scope of protection regardless ofwhich procedure the design has undergone(Article
41).
A
non-examination
designregistration system (Article 2, subparagraph (v))
was introduced under the former Design Act(enforced on March 1, 1998) in order to handle
particular articles that were strongly affected bytrends(e.g.,
textiledesigns,
wallpaper(*17)
Under the recently revised Design
designs).
Protection Act (enforced on July 1, 2007, Act
No.8187), if the design claimed in an application
for unexamined design registration can be easily
created by means of designs that are widely
known in the Republic of Korea, a decision must
be made to refuse registration of the design(Article 26, paragraph (2)). (*18) Furthermore, thearticles belonging to Class A1 (Processed foods
and snacks) and image designs were newly added
to the subjects eligible for unexamined design
registration.
2

Protection for works of applied art
under the Copyright Act of the Republicof Korea(1) Recent revisions of the Copyright Act of
the Republic of Korea
The Copyright Act of the Republic of Korea
revised in 2006 (revised by Act No.8101 of
December 28, 2006 and enforced on June 29,2007) defines “works” as “creative productions inwhich the ideas or emotions of human beings are
expressed” (Article 2, subparagraph 1). Regarding
the interpretation of the aforementioned new
definition of works, some people argue that it isunnecessary to use the comprehensive concept ofintellectual and cultural works in interpreting thedefinition of works, whereas others argue that itis still inevitable to use such a concept.(*19)(*20)
On the other hand, works of applied art are
defined in Article 2, subparagraph 15 as “artistic
works that may be reproduced in the same shapeonarticlesandwhose
originalityisdistinguishable from the articles used, and shall
include designs, etc.” This definition remained
the same in the revised Act of 2000, but it was
repositioned from Article 2, subparagraph 11-2.
(2) Works of applied art subject to theoriginal Copyright Act of 1957 (works
created by June 30, 1987)
Under
the
original
CopyrightAct(established in 1957, Act No.423), which was ineffect until 30, 1987, only works of industrial art
were recognized as works. Objects of applied art
and works of applied art were not covered by said
Act (Article 2 of said Act). Some people point out
that it was basically interpreted that the objects ofart protected under the Copyright Act of 1957
were limited to such objects of fine art aspaintings and scriptures and that, while objects ofapplied art were excluded from the scope of
copyright protection, artistic crafts produced only
in a single item were protected as an
exception.(*21)(3) Works of applied art subject to therevised Copyright Act of 1986 (works
created by June 30, 2000)
The revised Copyright Act of 1986 (revisedby Act No.3916 and enforced on July 1, 1987)
specifies that “works” shall include paintings,
calligraphic works, designs, sculptures, crafts,
objects of applied art, and other artistic works(Article 4, subparagraph 4). Consequently, theissue of overlap protection by the Copyright Act
and the Design Protection Act (the former DesignAct) became a subject of vigorous debate.
Academic theories and judicial precedents were(*17) 윤선희(Yun Sunhee), op.cit., 1, 지적재산권법(9 정판)(Intellectual property laws, the 9th edition), p.219.
(*18) 고이화(Ko Ihwa), 「한국의 디자인보호법」(Revision of the Design Act of the Republic of Korea), AIPPI vol. 52,
no.7, International Association for the Protection of Intellectual Property, July 2007, p. 476-478.
(*19) 오승종(Oh Seungjong), 『저작권법』(Copyright Act), (박영사(Pakyoungsa), 2007), p. 40.
(*20) 이호흥(Lee Hoheung), 『저작권법과 디자인법의 교차영역에 관한 연구』(Study of the cross region between
the Copyright Act and the Design Act), 저작권위원회(Copyright Committee), 2007, p.10, 이해완(Lee Haewan),op.cit., 7, 작권법(Copyright Act), p. 24.
(*21) 오승종(Oh Seungjong), 이해완(Lee Haewan), 『저작권법(제 4 판)』(Copyright Act (the 4th edition),(박영사(Pakyoungsa), 2005), p.174, 심재필(Sim Jaepil), 「응용미술작품의 지적재산권적 보호) (Intellectual
property protection for works of applied art), 대전지방변호사회(Taejeon Regional Bar Association) (First issue),June 2000, p. 207. The same interpretation was presented in the “rosary ring” case (Seoul Central District Court
Judgment 2005 노(No) No.3421 of February 9, 2006) (각공(Public) 2006.4.10 (32), 1135).
● 73 ●IIP Bulletin 2009

divided on this issue. (*22)
One of the famous cases is the Taihan Textile
case concerning the unauthorized use of aflower-patterned textile design, where the court
held that, “All objects of applied art created forthe purpose of industrial mass production are notnecessarily protected as copyrightable works
under the Copyright Act. Copyright protection
shall be provided to objects only if the objects
themselves are considered to have artistic
characteristics and value and are recognized as
creative productions that belong to theaforementioned artistic fields.” (*23) In anotherprecedent of the Supreme Court, concerning a
style
ofcalligraphy(typeface),thecopyrightability of a work of applied art wasdenied based on the same criterion. (*24)
Regarding said criterion applied by the Supreme
Court, some people expressed the criticism that,
although the criterion seemed reasonable andconcrete, it was, in fact, extremely subjective andtoo vague to be regarded as a criterion. (*25) In the
aforementioned Taihan Textile case, the Supreme
Court was cautious about providing overlap
protection for works of applied art by holding that,
if such works became eligible for overlap
protection, i.e., protection by both the Copyright
Act and the Design Act, people would forget why
the Design Act had various restrictive provisions
concerning such matters as the novelty criterion,
registration requirements and a short protection
period and that the industrial circles, which wereusually accustomed to protection under the
Design Act, would be greatly confused by suchoverlap protection.

(4) Works of applied art to which the revised
Act of 2000 is applied (works created on
or after July 1, 2000)
In this revised Act (revised by Act No.6134
of January 12, 2000 and enforced on July 1, 2000),
the term “objects of applied art” used in therevised Act of 1986 was replaced with “works ofapplied art.” Furthermore, the Act of 2000 newly
established Article 2, subparagraph 11-2 to define
works of applied art. In addition, Article 4,paragraph 1, subparagraph 4 listed works ofapplied art in addition to paintings, calligraphic
works, sculptures, and crafts, as artistic works.(*26)
The possibility of introduction of the separability
theory of the United States was vigorously
discussed. For instance, in the course of devising
the revised Copyright Act of 2000, said theory
was presented as a bill without modifications. (*27)
Said theory also affected the interpretation
theories of the revised Act of 2000. (*28)
In one of the famous cases regarding thisissue, i.e., the “Hiddink’s tie” case (Supreme
Court Judgment 2003 도(Do) No.7572 of July 22,2004) concerning the design of “Hiddink’s tie,”which consists of our traditional taiji pattern andthe bagua pattern reproduced repeatedly in bothvertical and horizontal directions, the court heldthat “If said design is recognized as a type of objectof applied art, said design should be regarded as an‘artistic work that can be reproduced in the same
shape on articles.’ Furthermore, if said design isfound distinguishable separately from the article (atie in this case), said design should be regarded asa work of applied art under Article 2,
subparagraph 11-2 of the Copyright Act.”
However, the Court did not address the definitionof “originality” and simply left the task of(*22) For further details of the academic theories, please refer to 차상육(Cha Sangyook), 「응용미술의 저작물성판단기준」 (Criteria for judging copyrightability of works of applied art), 창작과 권리(Creation and Rights), Winterissue of 2006, 세창출판사(Sechang Publisher), 2006, p. 81-83.
(*23) Supreme Court Judgment 94(도(Do))No.3266, February 23, 1996 (공(Public) 1996.4.15(8), 1170).
(*24) Supreme Court Judgment 94(누(Nu))No.5632, August 23, 1996 (공(Public) 1996.10.1(19), 2867).
(*25) 이상정(Lee Sangjeong), 「이른바‘히딩크 넥타이’의 도안의 저작물성-대법원 2004.7.22.선고 2003 도 7572 판결-」(Copyrightability of the so-called ‘Hiddink’s tie’ design - Supreme Court Judgment 2003 도(Do) No.7572 of July 22,2004), 창작과 권리(Creation and Rights), Sprint issue of 2006 (no. 42), 세창출판사(Sechang Publisher), March
2006, p. 62.
(*26) Regarding the legislative purpose, please refer to 김태훈(Kim Taehoon), 「개정저작권법 해설」 (Introduction
to the revised Copyright Act), 계간저작권(Quarterly Copyrights), Spring issue of 2000 (Regular issue, no. 49),
저작권심의조정위원회(Copyright Deliberation and Arbitration Committee), March 2000, p. 8.
(*27) Regarding the separability test conducted within the framework of the U.S. copyright law, please refer to이해완(Lee Haewan), op.cit., 7, 저작권법(Copyright Act), p. 67-74, 이상정(Lee Sangjeong), 『산업디자인과
지적소유권법 』 (Industrial designs and intellectual property laws) (세창출판사(Sechang Publisher), 1995),
p.146-173, Naoki Koizumi, Mohou no jiyuu to fuseikyousou (Freedom of imitation and unfair competition),(Yuhikaku, 1994), p. 61-63, Shira Perlmutter, Conceptual Separability and Copyright in the Designs of Useful
Articles, The Journal of The Copyright Society of U.S.A., No.37 (1990), p.372-379.
(*28) 심재필(Sim Jaepil), op.cit., 21, p. 234, 오승종(Oh Seungjong), 이해완(Lee Haewan), 저작권법 (Copyright Act),
p.184, 조원희(Jo Wonhee), 「응용미술저작물의 보호기준에 대한 소고」(Study on the criteria for protectionof works of applied art), 계간저작권(Quarterly Copyrights), no. 70, (Summer issue of 2005), p. 29.

IIP Bulletin 2009

● 74 ●

establishing concrete criteria for originality to the
future accumulation of court decisions. (*29) (*30)
3Protection of works of applied art under
the Unfair Competition Prevention Act
of the Republic of Korea(1) Overview of legal provisions
Under the Unfair Competition Prevention
and Trade Secret Protection Act of the Republic ofKorea (hereinafter referred to as the “Unfair
Competition Prevention Act”), the acts related tothe protection for designs and works of applied
art are: an act of causing confusion with anotherperson's goods or with another person'scommercial facilities or activities (Article 2,
subparagraph 1가 (Ga) and나 (Na)), an act ofdiluting a famous trademark (다 (Da) of said
subparagraph), and an act of imitating the shape ofthe goods produced by another person (자 (Ja) of
said subparagraph). As civil remedies, said Act
provides a “person whose business interest is
injured or threatened” with the right to file aclaim for prohibition or prevention (the right toseek an injunction) (Article 4) and specifies that a“person who intentionally or negligently causes
damage to another person’s business interest isliable for payment of compensation of damages”(Article 5). Meanwhile, as a criminal remedy, any
person who commits an act of unfair competition
will be subject to criminal punishment (Article 18
and Article 19). However, no criminal punishment
will be imposed on any person who commits an
act of imitating the shape of goods (자 (Ja) of said
subparagraph). Unlike the Trademark Act and the
Design Protection Act (the former Design Act),
which have adopted a rights-granting system, inother words, a system to protect works of applied
art by granting monopolistic and exclusive rights,
the Unfair Competition Prevention Act has
adopted the “behavior-regulation system.” The
Unfair Competition Prevention Act handles both

unregistered trademarks and unregistered
designs. In the case of an unregistered trademark,said Act regulates an act that is likely to cause
confusion with a well-known or famous trademark,trade name, or any other sign of business. In thecase of an unregistered design, said Act regulates
an act of transferring goods whose shape has been
copied from the goods produced by anotherperson. In order to maintain the order of faircompetition, said Act examines the details of eachact and prohibits the act on a case-by-case basis.
A study of right-granting systems for unregistered
designs from the perspective of comparative law
reveals that some countries have adopted a system
to protect such designs by granting the right toprohibit imitation. For example, the United
Kingdom grants unregistered design rights. In theEuropean Community, unregistered Community
design rights are granted under the European
Community Design Regulation.
In the meantime, in order to protect
unregistered trademarks, the United States has
established the doctrine of trade dress in Section
43(a) of the federal Trademark Act of 1988 (theLanham Act). Trade dress protection is provided
on the condition that the trade dress is
nonfunctional, distinctive, and is likely to cause
confusion. (*31) The famous precedents regarding
the criterion of distinctiveness include the
Wal-Mart case and the Two Pesos, Inc. v. Taco
Cabana, Inc. case. (*32)(*33) A famous precedentregarding the criterion of non-functionality is the
TrafFix case. (*34) In connection with the system toprotect famous trademarks, the United States
newly established Section 43(c) of the U.S.
Trademark Act (Lanham Act) on January 16, 1996,
which eliminated the need for trademark holders
to prove a likelihood of confusion or the existenceof a competitive relationship. However, according
to recent precedents of the United States
Supreme Court, the Court held that it would benecessary to prove actual dilution and objectively
prove actual injury to the economic value of thefamous trademark in question. (*35)(*29) No clear definition of originality was given in Seoul Central District Court Judgment 2005 가합 (Ga-Hap)
No.102770 of April 11, 2007 (“Pet dog” case).
(*30) Based on relevant precedents in the United States, some people in industrial circles consider it difficult to protect
objects of applied art under the Copyright Act based on the separability theory (Perry J. Saidman, “The Crisis in the Law
of Designs,” The Journal of the Patent and Trademark Office Society (JPTOS), Vol.89. No.4, April 2007, p. 306～310).
(*31) Naoki Koizumi, op.cit., 27, Mohou no jiyuu to fuseikyousou (Freedom of imitation and unfair competition), p. 70-79.
(*32) Wal-Mart Stores, Inc., v. Samara Brothers, Inc., 529 U.S. 205 (2000).
(*33) Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
(*34) TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001).
(*35) Moseley v. V Secret Catalogue, Inc., 123 S. Ct. 1115, 537 U.S. 418 (2003).
● 75 ●IIP Bulletin 2009

(2) Protection of works of applied art fromacts of causing confusion
The protection provided to the shape of a
product against an act of causing confusion has
the following characteristics: (i) The protection is
not to protect the value of the shape of a productper se but to protect the shape of a product thathas a source-indicating function, i.e., that displays
distinctiveness and (ii) the purpose of prohibiting
an act of imitating the shape of a product as an actof unfair competition is to prevent the imitation of
the design that is likely to cause confusion as tothe source of products. (*36) There are two types ofact of causing confusion: an act of causing
confusion with another person's goods prescribedin Article 2, subparagraph 1, 가 (Ga) and an act
of causing confusion with another person'scommercial facilities or activities prescribed in
Article 2, subparagraph 1, 나 (Na). Either type ofact is considered to be committed only if the workof applied art in question is (i) recognizable as asign of goods or a sign of business, (ii)“well-known,” (iii) “identical or similar,” and (iv)“likely to suffer confusion.” (*37)
According to relevant precedents, a productpackage, container, or design could be recognized
as an indication of the product “only if the pattern,color, or design displayed on a package orcontainer has been used, in addition to thetrademark thereon, as a means to give theproduct unique characteristics and has come toattain a superior position thanks to thedifferentiated features of the color, design, etc.,
which have become so distinctive, as a result of
its long-term, continuous, monopolistic, or
exclusive use or continuous advertisement, that
traders and consumers would presume that any
product sold in said package or container has acertain quality level and came from a certain
source.” (*38)(3) Protection of works of applied art fromacts of diluting a famous trademark(Article 2, subparagraph 1, 다)This provision, which was newly establishedin the Unfair Competition Prevention Act revisedon February 3, 2001, is applicable to an act of
unfair competition, even if the act does not cause
confusion of sources, that unjustly causes damage
to the distinctiveness and reputation of a famous
trademark without any justifiable reason. Since
this act of unfair competition differs from otheracts of unfair competition that cause direct
damage to consumers, this provision specifies
that a person who commits such an act shall bemade liable for damages and recovery of thereputation. (*39) In a relevant precedent, thecourt presented the criteria for judging an act as
an act of diluting a famous trademark by holding
that, “A person shall be considered to becommitting an act of unfair competition thatdamages the distinctiveness and reputation of asign of another person only if (i) the product signor the business sign in question is widely known
within the country, (ii) the person uses a sign that
is identical or similar to the product sign or thebusiness sign, and (iii) the person consequently
damages the distinctiveness and reputation ofanother person’s sign. The person shall be
regarded to be committing an act of unfair
competition even if there are no competitive
relationships between the parties concerned andthere is no likelihood of confusion.” The court’s
ruling for this case showed that it would bepossible to request an injunction without concrete
evidence for the occurrence of dilution as long as
there is a likelihood of dilution. (*40)(4) Protection of works of applied art fromacts of imitating the shape of goods(Article 2, subparagraph 1, 자 (Ja))
The establishment of a provision to prohibit
the imitation of the shape of goods wasmeaningful in that it provided protection even to
the shapes of goods that were not recognized as“well known.” In the precedents concerning
Article 2, subparagraph 1, 가 (Ga) and 나 (Na), it
was considered to be extremely difficult, inpractice, to prove that the shape of a product indispute can be recognized as a “sign of goods”(*36) 황보영(Hwang Boyoung), 「부정경쟁방지법상 상품형태의 보호」(Protection for the shapes of goods under the
Unfair Competition Prevention Act), (Translation, Professor Collection of Papers to Commemorate the 60th
Birthday of 김 명신(Kim Myeongshin), Current and future intellectual property systems),한국산업재산권법학회(Korean Association of Industrial Property Laws), (법문사(Bobmunsa), 2004), p. 344.
(*37) 황보영(Hwang Boyoung), op.cit., 36, p. 344, 안원모(Ahn Wonmo), 「디자인에 대한 부정경쟁방지법적
보호문제」 (Design protection under the Unfair Competition Prevention Act), 『상표법 및부정경쟁방지법』(Trademark
ActandUnfairCompetition
PreventionAct),(대한변호사협회
변호사연수원(Korean Bar Association Research Center), 2008), p. 117-118.
(*38) Supreme Court Judgment 2003 도 (Do) No.7827 of April 13, 2006 (unpublished).
(*39) 송영식(SongYoungsik),이상정(Lee
Sangjeong),황종환(Hwang
Jonghwan),op.cit.,12,지적소유권법(제 9 판)(하) (Intellectual property laws (the 9th edition) (Second volume)), p. 427.
(*40) Seoul District Court Ruling 2003 카합 (Ka-Hap) No.1488 of August 7, 2003.

IIP Bulletin 2009

● 76 ●

and “well known.” Regarding an act ofdead-copying the shape of goods, Article 2,
subparagraph 1, 자 (Ja) was newly established by
Act No.7095 of January 20, 2004 (enforced on July20, 2004) in order to prohibit such copying andthe transferring of such copies. The term “shapeof goods” includes the shape of a prototype andthe shape of a product presented in a brochurefeaturing the product. Said provision provides
three-year protection from the date on which theshape of goods is determined, such as the date on
which a prototype of the goods is produced. Suchprotection would not be provided to the ordinary
shapes of similar goods.
In a relevant precedent, the court held that, inorder to determine whether the plaintiff is entitled
to file a clam, “We presumed that ‘Another person’
specified in Article 2, subparagraph 1, 자 (Ja) of
the Unfair Competition Prevention Act refers notto the person who has created the shape of a
product, but to a person who has made aninvestment or taken a risk in commercializing the
product. A person who has an exclusive right toimport and sell the product and makes efforts todevelop and maintain marketing channels has
business interests deserving of protection. Such aperson may be recognized as a person entitled tomake a claim under this provision if the person can
prove that (i) the preceding party commercialized
the product and (ii) the preceding party gave theperson an exclusive sales right.”(*41)

Ⅲ Protection of Objects of Applied
Arts in Japan
1

Protection of Objects of Applied Arts by
the Design Act in Japan(1) Features of the Protection of Objects ofApplied Arts under the Design Act as
Compared to Their Protection under the
Copyright Act
The Japanese Design Act includes objects ofapplied art in the definition of design and stipulates
the protection of objects of applied art as design.
The following five points distinguish the protectionof objects of applied art under the Design Act ascompared to the protections under the Copyright
Act: (1) the right that is granted under the Design
Act is an absolute right (which means that the rightdoes not require the proof of reliance on anotherperson’s works that is required for cases of
copyright infringement); (2) the term ofprotection is shorter than the term for copyrights(this is because if long term protection, like theprotection for copyrights, is granted to designs,
then monopolization of a design is likely topreserve a gap with the competitive conditions ofother parties concerning the function of articles
and is therefore not reasonable.); (3) the
protection is based on a principle of registration(which means that the registration is granted only
to a design with novelty and creativity that is noteasily created or is difficult to create by an
examination of the application for registration and
it is essential to make public notification of theestablishment of the right); (4) the design isindividualized by an article to be worked on(which means that the creator of a design createsa design for each article, but not for the shapeitself; therefore, it is different from the Copyright
Act that provides a right regardless of what article
is worked); and (5) industrial applicability isrequired for registration (which is in order toeliminate the shape of single, unique articles,
such as artistically-crafted works, from protection
under the Design Act; the objects of applied art
are usually created in the shape of articles formass production so that they meet therequirements of industrial applicability). (*42)(2) Requirements for Establishment andRegistration of a Design
Under the amended Design Act of 1998
(hereinafter referred to as the “Former DesignAct”), the definition of a design included part of anarticle and introduced the partial design system.
Under the amended Design Act of 2006 (hereinafterreferred to as the “New Design Act”), the definitionof a design was amended again in order to enhance
the protection of screen designs (Article 2,paragraph (2) of the New Design Act). According to
the definition of the New Design Act (Article 2,paragraph (1)), designs subject to protection are
required to meet with the following requirements:(1) being an “article”; (2) having a certain
configuration; (3) being visual; and (4) sensuousness.
It is considered to be a feature of the Japanese
Design Act to have defined aesthetic impression as
one of the elements of a design as it is defined
under the Design Protection Act in Korea. (*43)(*41) Seoul South District Court Judgment 2006 가합 (Ga-Hap) No.6288 of February 8, 2007(*42)Tatsuki Shibuya, Chosakukenhou/ Ishouhou, in Chitekizaisanhou kougi II (dai 2 han) (Copyright Act and Design Act,
Lectures on Intellectual Property Rights Law II (second edition) (Yuhikaku, 2007), at 32-33(*43) Shibuya, op. cit. 42, Chosakukenhou/Ishouhou at 556.

● 77 ●IIP Bulletin 2009

The Design Act requires registration forindustrial applicability (Article 3, paragraph (1),except each item); novelty (Article 3, paragraph(1)); and creativity that is not easily created(Article 3, paragraph (2)). This protection of
objects of applied art by the principle ofregistration allows the establishment of an
absolute right. For example, a design consisting
solely of a shape that is indispensable for securing
the functions of the article may not be registered(refer to Article 5, item (i) to (iii) inclusive). And,
where two or more applications for design
registration are filed for identical or similar
designs on different dates, only the applicant who
filed the application for design registration on theearliest date shall be entitled to obtain a design
registration for the design (Article 9, paragraph(1); first-to-file system). In short, a registration
shall be granted only to the designs that havenovelty and creativity that is not easily created as
examined by a substantive examination whenfiling a registration and the established right shallbe published.
The design shall basically protect the form
represented in articles produced by industrial
means and have objective creativity that isrecognized by evaluating the creator’s own
subjective creation of the design. Consequently,
the registration is granted only to designs that are
difficult for a person skilled in the art to create
easily based on a publicly known shape in Japanand overseas before the filing of the design
registration. Creativity that is not easily createdmeans a subjective creativity that corresponds tothe “inventive step” stipulated in Article 29,
paragraph (2) of the Patent Act and the standards
for creativity that is not easily created are basedon all standards in Japan and overseas. With
regard to provisions on exceptions to the lack ofnovelty in a design (Article 4), stipulating that thedesign shall not lack novelty if the person
concerned applies for a design registration within
six months from the date on which the design
becomes publicly known, the New Design Act of2006 extends the term of submission forcertification, which was previously stipulated aswithin 14 days from the application, to within 30
days.

(3) The Effect of Design Rights andDuration thereof
The holder of a design right shall have theexclusive right to work the registered design anddesigns similar thereto (Article 23). Therefore,
the design right is an exclusive and absolute rightso that an act of working a design identical orsimilar to the registered design without obtaining
the agreement of the holder of the design right
infringes the design right, except in cases where
it is based on a statutory non-exclusive license(Articles 29 to 32 inclusive) or where the effect ofthe design right is restricted (Article 36).
Consequently, the holder of a design right may
seek for an injunction of said act and demandcompensation for damages. (*44) In addition, wherea registered design or a design similar thereto
uses another person’s registered design, etc. forwhich an application is filed prior to the date offiling of the application for said design or is in
conflict with another person’s copyrights, etc.
which arose prior to the date of filing of theapplication for said registered design, the holderof said design right, etc. may not work said
registered design as a business (Article 26).
Therefore, in case of working, the agreement of
said other person is required.
The New Design Act of 2006 stipulates in
Article 24, paragraph (2) that “Whether aregistered design is identical with or similar toanother design shall be determined based upon
the aesthetic impression that the designs would
create for the eye of their consumers” andclarified the subject of who makes a judgment on
the scope of similarity of designs. With regard to
the interpretation of the court decisions on
judgments of similarity, such as the judgment of
the Supreme Court of Japan in the “Flexible Coil
Retractable Hose Case” (judgment of the Third
Petty Bench of the Supreme Court, March 19,
1974; Minshu (The Supreme Court report on civil
cases) vol.28, No.2 at 308) (*45) or the judgment of
the Supreme Court with the same intent as theother judgment in the “Hat Design Case” (thejudgment the Second Petty Bench of the Supreme
Court, February 28, 1975; Minshu vol. 114, at
287; Hanrei Taimuzu (The Law Times Report)
No.320 at 160), there was basically a conflict(*44) Etsuji Kotani and Yoichiro Komatsu, ed. Ishou/design no houritsu soudan (Legal Consultation on Designs)(Seirinshoin, 2006) at 153 (the portion wbitten by Shigeki Chaen).
(*45) Kazufumi Dohi, “Douitsu/Ruiji no buppin no ishou to ishouhou 3 jou 2 kou no tekiyou (Katou shinshuku housu
jiken) (Identical or Similar Design of an Article and Application of Article 3, Paragraph (2) of the Design Act
thereto (Flexible Coil Retractable Hose case))”, Shouhyou/Ishou/Fuseikyoso Hanrei Hyakusen (Bessatsu JurisutoNo.188) (100 selected cases on trademarks, designs, unfair competitions (Separate volume of Jurist No.188))(Yuhikaku, November 2007) at 100 – 101.

IIP Bulletin 2009

● 78 ●

between the Confusion Theory (*46) and theCreation Theory. (*47)
Under the Former Design Act, the durationof the design right ended after a period of 15
years from the date of registration of its
establishment (Article 21), while under the New
Design Act of 2006, it is amended to end after aperiod of 20 years (Article 21, paragraph (1)).
Related Design rights shall end after a period of
20 years from the date when the establishment of
the design right of the Principal Design isregistered (paragraph (2) of the same Article).
(4) Protection of Objects of Applied Art andDiscussion of the Introduction of a
Non-Substantive Examination System
Discussion of the introduction of thenon-substantive
examination
systemor
duplicating substantive and non-substantive
examination systems was a problem during theamendment of the Design Act in 1998. In theamendment of the Design Act in 2006, withregard mainly to objects of applied art for which
the lifecycles are short, as concrete systemmodels, the utility model type, examination
request type, Act on Layout-Design of
Semiconductor Integrated Circuits type, andCopyright Act type have been proposed. However,it was strongly requested for stabilization ofrights as an overall opinion, in light of the costs
required of companies for monitoring rights or
responses to a trial for invalidation. Therefore,
the introduction of a non-substantive examination
system was suspended. The climate of current
practice questions the necessity of introducing a
non-substantive examination system whileconsidering the point that Article 2, paragraph (1),item (iii) of the Unfair Competition Prevention

Act functions sufficiently.
(5) Possibility of Protection of Typeface by
the Design Act, etc.
With regard to the protection of typeface inJapan, it has not been protected as a design right.
It may be said that there are few court decisions
that protect typeface by the Copyright Act, except
cases where a settlement has been reached
between parties. As an example of court decisions,
there are (1) the Yagi Bold Case, (*48) (2) the
Morisawa vs. S.I.C. Case, (*49) (3) the Shaken vs.
Morisawa Case, (*50) etc. On the other hand, withregard to protection under the Unfair Competition
Prevention Act, there is a case where the court
recognized that a dial plate for a typesetting
machine was publicly known. (*51)
2

Protection of Objects of Applied Art
under the Copyright Act in Japan(1) Provisions of the Copyright Act in JapanThe current Copyright Act stipulates in
Article 2, paragraph (1), item (i) that a “’work”
means a production in which thoughts or
sentiments are expressed in a creative way andwhich falls within the literary, scientific, artistic
or musical domain.” In Article 2, paragraph (2) ofthe Act, it stipulates that an “artistic work as
used in this Act includes artistically-craftedworks (bijutsukougeihin).” And in Article 10,paragraph (1), item (iv), it stipulates as examplesof these works: “paintings, engravings, sculpturesand other artistic works.” However, it has been
pointed out that these provisions do not clarify
whether the Copyright Act sets objects of applied
art as subject to its protection. (*52) The current
Copyright Act in Japan was established by full(*46) Masabumi Suzuki, “Ishou no ruihi handan kijun (Ishou keesu jiken), (Criteria for judgment on similarity of design(Simplified Wardrobe Case))”, Shohyo/Isho/Fuseikyoso Hanrei hyakusen (Bessatsu Jurisuto No.188) (100 selected caseson trademarks, designs, unfair competitions (Separate volume of Jurist No.188)) (Yuhikaku, November 2007) at 103.
(*47) Riichi Ushiki, Ishouhou no kenkyu (Study of the Design Act) (Hatsumei kyokai, 4th revised edition, 1994) at 128 –131 and Riichi Ushiki, Dezain, kyarakutaa, paburishithii no hogo (Protection of designs, characters, and publicity),(Yuyusha, 2005) at 137 – 147.
(*48) Judgment of the Tokyo District Court, March 9, 1979: dismissal, Mutaishu (Collection of Court Decisions ofIntangible Property) vol.11, No.1 at 114, or Hanrei jihou (Judicial Reports) No.934 at 74; judgment of the Tokyo
High Court, April 26, 1983: dismissal, Mutaishu vol.15, No.1 at 340; Hanrei Taimuzu (The Law Times Report)
No.495 at 238, or Hanrei jihou No.1074 at 25; and settlement by the Supreme Court, April 1, 1985(*49) Judgment of the Osaka District Court, March 8, 1989: dismissal, Mutaishu vol.21, No.1 at 93, or Hanrei jihou
No.1307 at 137; settlement by Osaka High Court, March 20, 1990.
(*50) Judgment of the Osaka District Court, June 24, 1997: dismissal, Hanrei Taimuzu No.956 at 267; judgment of the
Osaka High Court, July 17, 1998: dismissal (1997 (Ne) No.1927); and judgment of the First Petty Bench of theSupreme Court, September 7, 2000: dismissal, Minshu vol.54, No.7 at 2481, Hanrei jiho No.1730 at 123, or Hanrei
Taimuzu No.1046 at 101.
(*51) Judgment of the Tokyo District Court, January 22, 1988: upholding; judgment of the Tokyo High Court, January 24,
1989: dismissal of appeal; and judgment of the Supreme Court, July 20, 1991: dismissal of final appeal.
(*52)Fumio Sakka, Shokai Chosakukenhou (dai 3 pan) (Detailed Explanation: The Copyright Act (3rd edition)), (Gyousei,
2006) at 135.
● 79 ●IIP Bulletin 2009

amendment of the former Copyright Act (ActNo.39 of 1899) in 1960; however, it is said that“the way of protecting works of applied art under
the Copyright Act is an issue inherent in thecurrent Copyright Act.” (*53)
With regard to theories on interpretation of
Article 2, paragraph (2) concerning the scope ofprotection of objects of applied art, the following
theories are opposed: the first, a theory that
understands Article 2, paragraph (2) of the
Copyright
Act
as
recognizing
only
artistically-crafted works as works and, therefore,
other objects shall not be works, which only
allows artistically-crafted works to haveprotection under the Copyright Act (Restriction
Theory); (*54) the second, a theory that considers
Article 2, paragraph (2) of the Copyright Act to bea provision of illustration and that in addition to
the illustration, other produced articles of utility
shall be protected as art works only when thosearticles fall under the category of pictures,
sculptures, etc. as fine art (Illustration Theory);(*55)
and the third, an opinion that avoids trying toregard objects of applied art as fine art or
artistically-crafted works, considers objects ofapplied art as works that are not illustrated in thelist, and states that objects of applied art are in
the shape of mass production goods, the shape ofmass production goods does not denycopyrightability, and there are no provisions
denying their copyrightability in the CopyrightAct.(*56)

preferable results in the issue of what kind ofprotection system is the most preferable in lightof the differences between both Acts, such as thedifferences of effect, etc. including personal rights,
protection period, existence of examination,
existence of public notice and registration, scopeof protection, etc.” (*57) In addition, these
oppositions of opinions may cause majordifferences with the interpretation of legal
relationships in cases where the copyright for
objects of applied art in question is executed inpractice after the design right is extinguished due
to expiry, or where the design right and the
copyright of an identical object of applied art
belong to different people. The two following
theories are considered to be opposed: a negative
opinion on overlapping application(*58) which takesa negative standpoint since the overlapping
application requires adjustment between the
Design Act and the Copyright Act; and a positive
opinion on overlapping application(*59) which isbased on the idea that adjustment between the
Design Act and the Copyright Act is not necessary.
Moreover, among Japanese court decisions, in theStreet Light Design Drawing Case (judgment of
the Osaka District Court, June 6, 2000 (not yetreported in the Court Reports)) and its court ofsecond instance (judgment of the Osaka High
Court, January 23, 2001), the court held that theadjustment of the subject of the protection isnecessary, while it took a negative attitude to the
duplicating application. (*60)(2) The Problem of Overlapping theProtections of the Copyright Act and the
Design Act
It may be said with regard to objects ofapplied art that “the question of which protection
under the Copyright Act or the Design Act is(3) Specific Criteria for Characteristics ofWorks with Objects of Applied Art under
the Court Decisions in JapanThe court decisions in Japan are considered
to recognize copyrightability in cases where theobject of applied art has creativity that is(*53) Michinari Enokido, “Chosakukenhou niyoru ouyoubijutsu no hogo (Protection of works of applied art under the
Copyright Act),” in Toshiaki Makino, et al. ed., dai 4 hen Chitekijaisanhou no riron to jitsumu dai 4 kan(Chosakukenhou/Ishouhou) (Part 4, Theory and Practice of Intellectual Property Act, volume 4 (Copyright
Act/Design Act)), (Shinnihonhouki shuppan, 2007) at 34.
(*54) Moriyuki Kato, Chosakukenhou Chikujoukougi (5 tei shinpan) (Clause-by-Clause Lecture on the Copyright Act (5thnew and revised edition)), (Copyright Research and Information Center, 2006) at 66.
(*55) Handa, op. cit. 7 Chosakukenhou at 88.
(*56) Tatsuki Shibuya, Chitekizaisankenhou kougi II (Chosakuhou, Ishouhou) (Lecture of the Intellectual Property Right
Law II (The Copyright Act, the Design Act)), (Yuhikaku, 2005) at 26.
(*57) Nakayama, op. cit. 7 Chosakukenhou at 142.
(*58) Nakayama, op. cit. 7, Chosakukenhou at 140-142; Yoshiyuki Tamura, Chosakukenhou gaisetsu (dai 2 han)(Overview of the Copyright Act (2nd edition)), (Yuhikaku, 2001) at 36; and Riichi Ushiki, Ishouhou no kenkyu (4teiban) (Study of the Design Act (4th revised edition)), (Japan Institute of Invention and Innovation, 1994) at 389.
(*59) Shibuya, op. cit 41, Chitekizaisankenhou kougi II , at 32-37.
(*60) As court decisions in the same intent, there are the Hakata Doll Case (order of the Nagasaki District Court, Sasebo
Branch, February 7, 1973, Mutaishu vol.5, No.1 at 18); the Sculpture of Buddhist Alter Case (judgment of the Kobe
District Court, Himeji Branch, July 9, 1979, Mutaishu vol.11, No.2 at 371); and the Furby Case (judgment(criminal) of the Yamagata District Court, September 26, 2001, Hanrei jihou No.1763 at 212).

IIP Bulletin 2009

● 80 ●

identifiable with fine art (such as, high creativity
or high artistic quality or sensuousness). (*61) To
that extent, they are considered to affirm theoverlapping application of the Copyright Act andthe Design Act. (*62)
The court decisions concerning specificcriteria as to whether the object is identifiablewith fine art are as follows: first, court decisions
that presented the standard that if it is found thatthe characteristics of a creator are strongly
expressed during the process of creation and highcreativity is recognized, the copyrightability isrecognized, and if it is not found, thecopyrightability is not recognized (the Case of
Figures as Free Gifts for Snacks (the second
instance), or the Choco Egg Case (the second
instance) (*63)); however, this standard is seemingly
similar to the “theory of high creativity” in theformer Design Act in Germany from theperspective that the standard requires highcopyrightability in the object itself. (*64) Second, a
court decision that presented a standard thatwhen eliminating the subjective purpose of an
object for manufacturing and looking at the object
objectively and externally, the object is required
to be an aesthetic creation which is only found ina creation that is created with the sole aim of an
expression of beauty (the T-shirt Case(*65)); since
this standard eliminates the subjective purpose of
manufacturing, it is significant in that there is norisk of causing unforeseen damages to a third
party by the purposes of creation of a designer.
Third, court decisions that presented a standard
that the object may not be restricted
substantively in the expression of beauty for apractical purpose (the Street Light Design
Drawing Case(*66)); and fourth, a court decisionthat presented a standard that the object shallhave sensuousness to the extent that it can be a
subject of aesthetic appreciation as well as fineart (the second instance of the Furby Case(*67)).
3

Protection of Objects of Applied Art
under the Unfair Competition Prevention
Act in Japan(1) Overview
Under the Japanese Unfair Competition
Prevention Act, acts of unfair competition“related to the protection of objects of applied art
or designs are acts of creating confusion (Article
2, paragraph (1), item (i)), acts of using anotherperson’s famous indication without authorization(item (ii) of the same paragraph) and acts ofassigning, etc. goods which imitate theconfiguration of another person’s goods (item (iii)of the same paragraph).” Protection as an“indication of goods or business,” protection as a“famous indication” and “regulations on theimitation of the configuration of goods (deadcopy)” are carried out respectively based onthese provisions. (*68) The Unfair Competition
Prevention Act grants the right to seek an
injunction to a person whose business interests
have been infringed upon or are likely to be
infringed upon by said acts and imposes a liability
for damages on the infringer (Articles 3 and 4). In
addition, the Act imposes criminal punishment fora person who, for a wrongful purpose, commits an
act of unfair competition and a person who hascommitted an act that harms the public interest(Articles 21 and 22). The propriety of introductionof genera provisions was discussed; however,negative opinions were presented(*69) and the(*61) With regard to a positive opinion toward this attitude of court decisions, please refer to Yoshiyuki Tamura,
Chosakukenhou gaisetu dai 2 han (Overview of the Copyright Act 2nd edition), (Yuhikaku, 2001) at 33-36. For anegativeopinion, please refer to Masao Handa, “ Furby ningyou ni tsuite chosakuken no seiritsu wo mitomenakatta
jirei (Case study of where the establishment of copyright for Furby dolls was not allowed),” Chizai kanri(Intellectual Property
anagement) Vol. 52, No.12),” (Japan Intellectual Property Association, December 2002)
at 1865.
(*62) Ouyou bijutsu iinkai (Applied Art Committee) ed., “Chosakuken to Ishouhou tono kousakumondai nikansuru
kenkyu (Study on Duplication Issue of the Copyright Act and the Design Act) (the portion written by KunitoshiOka), (Japan Copyright Institute of Copyright Research and Information Center, March 2003) at 122-153.
(*63) Judgment of the Osaka High Court, July 28, 2005, Hanrei jihou No.1928 at 116.
(*64) Catharina Maracke, “A Delimitation of Design Protection and Copyright,” entrusted project by the Japanese Patent
Office, Fiscal Year 2005 Intellectual Property Right Study and Research Report, (Institute of Intellectual Property,2006) at 84-90.
(*65) Judgment of the Tokyo District Court, April 20, 1981, Hanrei jihou No.1007 at 91.
(*66) Judgment of the Osaka District Court, June 6, 2000 (not yet reported in the Court Report) and judgment of the
Osaka High Court, January 23, 2001.
(*67) Judgment of the Sendai High Court, July 9, 2002, Hanrei jihou No.1813 at 150.
(*68) Tsuyoshi Oseto, “Fuseikyousouboushihou no ishou/dezain no hogo (Protection of Designs under the Unfair
Competition Prevention Act),” in Etsuji Kotani and Yoichiro Komatsu, ed., Ishou/dezain no houritsusoudan (Legal
Consultation concerning Designs), (Seirin shoin, 2006), at 174-175.
(*69) Katsuya Tamai, “Doitsufuseikyousouboushihou ni okeru ippanjoukou no keiken (Experience of General Provisions● 81 ●IIP Bulletin 2009

introduction was suspended at last.
(2) Acts of Creating Confusion (Article 2,paragraph (1), item (i))
This provision regulates the act of using
another person’s indication of specific goods orbusiness as an indication of one’s own goods orbusiness without authorization, that is, acts thatare a free ride on another person’s indication of
goods or business, and an “indication of goods orbusiness” is the subject of protection (Acts ofcreating confusion regarding goods and acts ofcreating confusion regarding business were
integrated in this item by amendment in 1993).
The requirements for applying Article 2,paragraph (1), item (i) are being well-known as
another person’s indication of goods or businessamong consumers, using an indication of goods orbusiness that is identical or similar to anotherperson’s indication of goods or business, andcreating confusion with another person’s goods orbusiness.
There is a theory which states the following:in cases where a configuration of goods is aninevitable result deriving from its technicalfunction or effect, functions of goods obtainprotection under the Patent Act for a certain
period; if protection under the Unfair Competition
Prevention Act is provided, it means providing aprotection to the functions without restriction on
the protection period; therefore, configurations ofgoods shall not be included in the “indication of
goods or business” (Theory of exclusion oftechnical configuration).(*70) Court decisions thatare based on the theory of exclusion of technicalconfiguration are, for example, (1) the
Knocked-Down Drawer for Closet Case, (*71) (2)the Accounting Slip Case, (*72) (3) the Balance for
Surf Casting Case, (*73) etc. A court decision thatrecognized the identification of goods in thedesign is the iMac Case, (*74) and a court decisionthat recognized the identification of business is
the Club Sign Case. (*75)(3) Acts of Using Another Person’s Famous
Indication without Authorization (Article
2, paragraph (1), item (ii))
Article 2, paragraph (1), item (ii) of the
Unfair Competition Prevention Act prohibits thefollowing acts as acts of unfair competition: actsof using as one’s own indication of goods orbusiness as an indication that is identical orsimilar to another person’s famous indication of
goods or business, or acts of assigning, etc. goods
by using said indication of goods or business. The
provision intends, with regard to the famous
indication of goods or business (famous
indications), to prevent free-rides that takeadvantage of its goodwill and, at the same time, toprevent the dilution of the relationship between
the famous indication and the person who
originally uses the famous indication. It is notenough for the “indication of goods or business”
set forth in this item to be known broadly in a
district, but it shall be known to nationwide forbeing “famous.” (This is different from “being
well-known” as prescribed in item (i) for acts ofcreating confusion.) If objects of applied art ordesigns are recognized as such a “famous
indication of goods or business” (famous
indication), they are protected under the Unfair
Competition Prevention Act. Court decisions
concerning acts of using another person’s famous
indication without authorization are (a) the
Seirogan Toui A Case (*76) and (b) the Alinabig
Case (*77).
(4) Acts of Assigning, etc. Goods which
Imitate the Configuration of Another
Person’s Goods (Article 2, paragraph (1),item (iii))
The legislative intent of this provision is toguarantee incentives that are the interests ofprior entry into the market, legally by restrictionof the dead copy of goods. This was newly
established and introduced as an act of unfair

in the German Act against Unfair Competition),” Jurist, No. 1018 (March 1993), at 11-17; and Riichi Ushiki,
Shouhinkeitai no hogo to fuseikyousouboushihou (Protection of Configurations of Goods and the Unfair
Competition Prevention Act), (Research Institute of Economy, Trade and Industry, 2004), at 193.
(*70) With regard to overview of related theories, please refer to Hisayoshi Yokoyama, “ Tanitsu no shikisai no shouhin
hyouji gaitousei (Propriety of Identification of Goods of a Single Color” in Nobuhiro Nakayama, ed.,Chitekizaisanken kenkyu V (Study of Intellectual Property Right V), (LexisNexis Japan, 2008) at 50-56.
(*71) Judgment of the Tokyo District Court, November 22, 1966, Hanrei jihou, No.476 at 45.
(*72) Judgment of the Tokyo District Court, December 23, 1977, Mutaishu, vol.9, No.2 at 769 (Hanrei Taimuzu, No.364 at
292).
(*73) Judgment of the Tokyo District Court, October 30, 1978, Mutaishu vol. 10, No.2 at 509.
(*74) Judgment of the Tokyo District Court, September 20, 1999, Hanrei jihou, No.1696 at 76.
(*75) Judgment of the Osaka District Court, May 27, 1987, Mutaishu vol.19, No.1 at 174.
(*76) Judgment of the Osaka District Court, March 11, 1999, Hanrei Taimuzu, No.1023 at 257.
(*77) Judgment of the Osaka District Court, September 16, 1999, Hanrei Taimuzu No.1044 at 246.

IIP Bulletin 2009

● 82 ●

competition as Article 2, paragraph (1), item (iii)of the former amended Act of Unfair Competition
Prevention of 1993. In the amended Unfair
Competition Prevention Act of 2005, definition
clauses (Article 2, paragraphs (4) and (5)) were
newly and specially established. This is topromote the clarification of stipulations based onan accumulation of court decisions, since theformer provisions were pointed to as being
unclear(*78).
The protection period is very short, only for
3 years (the minimum investment pay-backperiod). The purpose of a three-year protection
period is “to prevent unfair competition that iscaused by a late person (who entered the marketlate), imitating the result of a prior person (whoentered the market first), and to secure the priorperson’s interest from trading.” Therefore, “theperiod necessary for a prior person to collectinvested capital is stipulated as three years
without exception” and the “amount of loss islimited to the loss incurred in a three year
period.” (*79) In ‘proposals of the EC for the
Regulation of Community Design’ that wereadopted by the European Commission in 1993,
the duration of a nonregistered design right isstipulated as lasting three years from thepublication of the design. (*80) The beginning point
for computing the protection period was
stipulated as “three years having elapsed fromthe date when they were first sold” in Article 2,paragraph (1), item (iii) of the amended Unfair
Competition Prevention Act of 1993; however,there were conflicts between theories(*81) andcourt decisions (*82) concerning a meaning of thedate when the goods are first sold. The amended

Unfair Competition Prevention Act of 2005 moved
a provision concerning the protection period to
Article 19, paragraph (1), item (v) (a) andamended the beginning point of computing theprotection period to “three years having elapsed
from the date they were first sold in Japan.”Among configurations of goods, with regard
to an “indispensable configuration to secure thefunctions of goods,” it was pointed out that themeaning of the provision before the amendmentof 2005, “excluding the configuration that goodsof the same kind as goods of another person inquestion ordinarily have” was unclear. Therefore,
it was amended in 2005 based on the(*83)
accumulationof
court
decisions.
Configurations that had been excluded from the“configuration of goods” before the amendment of2005 were also excluded after the amendment. It
was construed that the “configuration that thesame kinds of goods as another person ordinarilyhas” as used in the Unfair Competition
Prevention
Act
beforetheamendment
corresponds to (1) a “configuration lacking
individuality,” which is the ordinary configurationof goods in question, and (2) “technicalconfiguration,” or “unavoidable configuration
under the competition,” in which theconfiguration and function of goods areindispensable. (*84) Court decisions in relation tothe ordinary configuration of goods are the
Sleeveless Type Knit Wear Case, etc. (*85) In
addition, as examples of court decisions pointing
out that the “configuration of goods” does notinclude functions of goods that do not affect theideas or the external configuration of simple
goods, there are the Pants with Pareo Case, (*86)(*78) Intellectual Property Policy Office of Ministry of Economy, Trade and Industry, ed., Chikujoukaisetsu
Fuseikyousouboushihou (Heisei 18 nen kaiseiban) (Clause-by-Clause Explanation of the Unfair Competition
Prevention Act (Amendment of 2006)), (Yuhikaku, 2007) at 31.
(*79) Osaka Bengoshikai Chitekizaisanhou jitsumu kenkyukai, Fuseikyousouboushihou ni okeru shouhonkeitai no mohou(Imitation of Configuration of Goods under the Unfair Competition Prevention Act),” Bessatsu (separate volume)
NBL No.68, (Commercial Law Center, Inc., 2002) at 21.
(*80) Intellectual Property Policy Office of Ministry of Economy, Trade and Industry, op. cit. 79, Chikujoukaisetsu
Fuseikyousouboushihou at 161.
(*81) Shouen Ono, ed., Shin Chuukai Fuseikyousouboushihou (Shinpan) (Joukan) (New Commentary of the Unfair
Competition Prevention Act (New edition) vol.1), (Seirin shoin, 2007) at 1210 (the portion written by Katsuyuki Izumi).
(*82) Provisional disposition: judgment of the Kobe District Court, December 8, 1994, Chisaishu, vol.26, No.3 at 1323;
Judgment of merits: judgment of the Nagoya District Court, June 20, 1997, not yet reported in the Court Report.
(*83) Intellectual Property Policy Office of the Ministry of Economy, Trade and Industry, op. cit. 79, Chikujoukaisetsu
Fuseikyousouboushihou (Heisei 18 nen kaiseiban) (Clause-by-Clause Explanation of the Unfair Competition
Prevention Act (Amendment of 2006)), (Yuhikaku, 2007) at 60.
(*84) Shouen Ono, ed., Shin Chuukai Fuseikyousouboushihou (Shinpan) (Joukan) (New Commentary of the Unfair
Competition Prevention Act (New edition) vol.1), (Seirin shoin, 2007) at 463-464 (the portion written by Katsuyuki
Izumi).
(*85) Judgment of the Tokyo District Court, March 30, 2005, Hanrei jihou No.1899 at 137.
(*86) Judgment of the Intellectual Property High Court, November 10, 2005, source available at the Supreme Court
website.
● 83 ●IIP Bulletin 2009

etc. The judgment on whether or not it is anindispensable configuration to secure thefunctions of goods is considered to be difficult
even under the current law, in consideration that
conclusions of “configuration that the same kindsof goods as another person ordinarily has” before
the amendment were different in the Airsoft Gun
Case, which is a court decision from before theamendment, between the first instance (judgmentof the Tokyo District Court, February 25, 1999)
and the second instance.(*87)
The claimant under Article 2, paragraph (1),item (iii) is a prior developer who has developed
goods, which have a configuration that is a target
for imitation, commercialized them, and placed
them on the market. (*88) With regard to whether
or not a holder of exclusive selling rights is aclaimant, there are conflicts between theories.(*89)
As an example of a positive court decision, thereis the NuBra Case(*90). As an example of anegative court decision, there is the Caddie Bag
Case(*91).
Among configurations of goods, with regard
to the internal structure of goods, Article 2,paragraph (4) (definition provision), which was
newly established in the Unfair Competition
Prevention Act of 2005, stipulated that theinternal shape and structures of goods, which are
not apparent externally, may be subject toprotection. The point of court decisions before
amendment was that as long as the structure
remains an internal structure, which is not
significant in the external appearance, it does notcorrespond to a “configuration of goods” (theso-called External Configuration Theory). (*92)
Article 2, paragraph (5) of the Unfair
Competition Prevention Act of 2005 gives thedefinition of “imitate,” which requires (1) an
objective requirement (substantial identity), and(2) a subjective requirement (dependence onanother person’s goods). As for court decisions
that recognized substantial identity, there were
the Tamagocchi Case, (*93) the Towel Assortment
Case, (*94) the Watch Case, (*95) the Treatment Ion
Hair Brush Case, etc. (*96) In addition, as for court
decisions that denied substantial identity, there
were the Dragon Key Holder Case, (*97) the NuBra
Case, (*98) etc.

(*87) Judgment of the Tokyo High Court, January 31, 2002, Hanrei jihou, No.1815 at 123.
(*88) Intellectual Property Policy Office of Ministry of Economy, Trade and Industry, op. cit. 79, Chikujoukaisetsu
Fuseikyousouboushihou (Heisei 18 nen kaiseiban) (Clause-by-Clause Explanation of the Unfair Competition
Prevention Act (Amendment of 2006)), at 61.
(*89) As a positive theory, Makiko Takabe, “Eigyoujou no rieki (Business Interests)” in Shin saibanjitsumu taikei 4
Chitekizaisankankei soshouhou (New Court Practice System 4: Code of Procedures relating to Intellectual
Property), (Seirin shoin, 2001) at 434. As a negative theory, Yuriko Inoue, Fuseikyousouboushihoujou noseikyuukenja (Claimant under the Unfair Competition Prevention Act), Annual of Japan Industrial Property Law
No.29 (Yuhikaku, 2005) at 153. Moreover, there is an opinion that the scope of a claimant may extend not only toholders of exclusive importing and selling rights, but also to ordinary distributors or ordinary selling rights holders.
(Tatsuki Shibuya, Chitekizaisanhou kougi III (Dai 2 han) (Intellectual Property Law Lectures III (2nd edition)),(Yuhikaku, 2008) at 121-123).
(*90) Judgment of the Osaka District Court, September 13, 2004; Hanrei jihou, No.1899 at 142 (the NuBra Case).
(*91) Judgment of the Tokyo District Court, January 28, 2009; Hanrei jihou, No.1677 at 127 (the Caddie Bag Case).
(*92) Judgment of the Osaka District Court, November 28, 1996, Chizaishu (Intellectual Property Case Report), vol. 28
at 720; and judgment of the Tokyo High Court, January 31, 2002, Hanrei jihou, No.1815 at 123.
(*93) Judgment of the Tokyo District Court, February 25, 1998, Hanrei Taimuzu, No.973 at 238 and judgment of theTokyo High Court, July 16, 1998 (dismissal of the appeal).
(*94) Judgment of the Osaka District Court, September 10, 1998, Chisaishu, vol.30, No.3 at 501 (Hanrei jihou, No.1659 at
105). The judgment regarded and protected the assortment of goods as a configuration of goods.
(*95) Judgment of the Tokyo District Court, June 29, 1999, Hanrei jihou, No.1692 at 129.
(*96) Judgment of the Tokyo High Court, July 30, 2005, source available at the Supreme Court website.
(*97) Judgment of the Tokyo High Court, February 26, 1998, Hanrei jihou, No.1644 at 153.
(*98) Judgment of the Osaka District Court, September 8, 2005, Hanrei jihou, No.1927 at 134, and judgment of the Osaka
High Court, April 19, 2006 (court of second instance), source available at the Supreme Court website.

IIP Bulletin 2009

● 84 ●