8Foreign Situations of Design Protections

It is indisputable that the design system plays a central role in protecting designs as a result ofintellectual creation activities, however due to the multiple aspects of designs, a single design product may
also be cumulatively protected under laws and regulations other than the design law. In order to proceedwith concrete deliberation on modalities of the design system in Japan, for the purpose of ensuring more
appropriate protection for designs, it is indispensable to correctly understand how design products areprotected under intellectual property systems including design systems in Japan as well as in foreigncountries.
With the objective of contributing towards such an understanding, a working group of experts wasestablished for this study to overview the basic frameworks of design systems, as well as to analyze court
cases obtained from local contributors and reference materials, thereby clarifying specific principles,
criteria, and methods for determining substantial issues of design protection, such as objects of protection,requirements for protection, and scope of effect, in the European Community, European countries, theUnited States, and China. Efforts were also made to analyze the situation of the application of various
legal systems that may also function as a means for protecting designs, including copyright laws, trademark
laws, and unfair competition prevention laws, in accordance with court cases, wherever possible.

Part 1 Design Protection in Europe

I

Outline of Design Protection in
EuropeWith the objective of ensuring the freemovement of goods within the European
Community, the European Design Directive （ *1 ）was adopted on October 13, 1998, for the
harmonization of design systems of the Member
States, which have amended national laws inaccordance with the Directive. Provisions which
are not closely related to the free movement ofgoods, including criminal penalties and application
procedures should be left to each Member State.
Subsequently,
theEuropean
DesignRegulation(*2) was put into force on March 6, 2002
in order to create unitary design rights
throughout the Community. This Regulationconsists of parts regarding registered Community
designs and unregistered Community designs.
Under the European Design Directive,“design” means the appearance of the whole or apart of a product resulting from the features of, inparticular, the lines, contours, colors, shape,
texture and/or materials of the product itself and/or
its ornamentation, and “product” includes parts,
packaging, get-up, graphic symbols and typographic
typefaces, but excludes computer programs.
It is requirements for protection of a designthat it is new and has individual character, and in

the case of a component part incorporated into acomplex product, it should be visible during
normal use of the product. A design shall beconsidered to have individual character if theoverall impression it produces on the informed
user differs from that of any design which has
been made available to the public before the filingdate or the priority date. In assessing individual
character, the degree of freedom of the designer
in developing the design shall be taken into
consideration.
A prior design shall be deemed to have been
made available to the public if it has been
published before the filing date or the priority
date, except where this could not reasonably havebecome known to the circles specialized in the
sector concerned, operating within the Community.
The scope of protection shall be determined
under the same criteria for determining therequirements for protection. The term ofprotection shall be up to 25 years from the filingdate.
The extent to which and the conditions underwhich cumulative protection by a design right anda copyright is conferred shall be determined byeach Member State.
Under the Community trade mark system(*3),
three-dimensional shapes can be registered andprotected as three-dimensional trade marks. It is
requirements for the registration of athree-dimensional trade mark that like ordinary(*1)
13 October
October 1998
1998 onon thethe legal
legal protection
protection ofof(*1) Directive
Directive 98/71/EC
98/71/EC ofof thethe European
European Parliament
Parliament andand ofof thethe Council
Council ofof 13
designs.
designs.
(*2)
6/2002 ofof 12
12 December
December 2001
2001 onon Community
Community Designs.
Designs.
(*2) Council
Council Regulation
Regulation (EC)
(EC) Nono 6/2002(*3)
Regulation(EC) No(EC)40/94
20 December
1993 on1993
the Community
trade mark.
(*3) Council
COUNCILREGULATION
Noof40/94
of 20 December
on the Community
trade mark.

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trade marks, it has a distinctive character, it does
not conflict with earlier trade marks, and it is not
functional. A distinctive character may be either
inherent in the trade mark or acquired by the useof the trade mark. For distinctiveness of three
dimensional trade marks, there is a case of a bottle
for mineral water, in which it was judged to be
inherently distinctive.(*4) The scope of effect of athree-dimensional trademark shall, in principle,
extend to the fact that there exists a likelihood ofconfusion by the public because of identity orsimilarity to the trademark and the identity orsimilarity to the goods or services covered by thetrade mark. However, if the three-dimensional
trademark has a reputation, its effect may, undercertain conditions, also extend to goods orservices not being similar or identical.
There is no unfair competition law that is
applicable throughout the Community. Imitating
another’s design may fall under the scope of actsof unfair competition under unfair competition law,
civil code, or common law of each Member State.
Designs may, under certain conditions, beprotected as works under copyright law of each
Member State.

Ⅱ European Community
A registered Community design right is a
unitary right throughout the Community thatcomes into existence upon registration based on
an application at the Office for Harmonization in
the Internal Market (hereinafter called OHIM).
The term of protection shall be up to 25 years
from the filing date. The definition of a design tobe protected and the requirements for protection
are the same as provided under the European
Design Directive.
A multiple application system is employed, inwhich several designs belonging to the sameclassification may be combined in one application.
The OHIM shall examine applications withrespect to the formality and from the viewpointsof the object of protection and, public policy andmorality. An appeal may be filed against a decisionof the examiner before the OHIM Board of
Appeal.
Other requirements for protection shall be
examined by the OHIM Invalidity Divisions upon
an application for a declaration of invalidity after
registration or by Community design courts(national courts of first and second instancedesignated by each Member State) in
infringement proceedings. For a declaration ofinvalidity, it is provided for who may invoke it for
the respective grounds. An appeal may be filed
against a decision of Invalidity Divisions before
the OHIM Board of Appeal.
An action may be brought against a decisionof the OHIM Board of Appeal before the Court ofFirst Instance and then before the Court of Justiceof the European Communities.
Invalidity of a registered Community design
may be claimed by the defendant by way of a plea
or a counterclaim in infringement proceedings.
However, such a plea shall be admissible in so far
as it is claimed on account of an earlier national
design right belonging to the defendant.
A design shall be deemed to lack novelty if it
is identical to an earlier design or its featuresdiffer only in immaterial details (decisions of
OHIM Invalidity Divisions: novelty was found in
the ceiling light case(*5), the pastry case(*6)).
For individual character: in the chair case,
the Invalidation Division declared invalidity of theregistered design due to no individual character,pointing out that the freedom of designer was
restricted by the inevitable structure of a chairconsisting of the base, the supporting frame, andthe seat as required by the function of the chair,and an informed user would not ignore the state oftechnology (i.e. any chair of this type usually has afoot rest and a back rest) which is known in thenormal course of business activities in theenvironment specialized in the field concerned(*7);
in the ceiling light case, the Invalidation Division,
pointing out that an informed user would not placemuch importance on technically conditioned
elements essential and common to ceiling lightsof this kind when assessing the overall impression,found an individual character in the registered
design for other elements; in the skin antiseptic
composition dispenser case, the Invalidity Divisionfound an individual character, on the grounds thatthe shape of the head of the dispenser was not
required due to its functionality but it produced adifferent overall impression from that of the citedutility model.(*8)
A Community design shall not be granted
for features of appearance of a product, which aresolely dictated by its technical function. In thecase concerning a trademark for the shape of therotary head of Philips shaver, (*9) the advocate
general of the European Court of Justice(*4) Nestlé Waters France v. OHIM, Court of First Instance (Fourth Chamber), December 3, 2003 (Case T-305/02)[2003] ECR 00000; OJ C71, 20. 03. 2004, p. 25 : Community trademark 000922179.
(*5) Miguel Soriano Sola v. RIDI Leuchten GmbH, June 3, 2004 (ICD 000000032).
(*6) LENG-D'OR, S.A. v RECOT, INC., Oct. 22, 2004 (ICD 000000149).
(*7) Eredu, S. Coop v. Armet, S.R.L, Apr. 27, 2004 (ICD000000024).
(*8) José Mallent Castello v. 3M Innovative Properties Company, June 14, 2004 (ICD 000000057).
(*9) Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd., ECJ, June 18, 2002, [2002] E.C.R. I-5475(Case C-299/99).
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delivered his opinion that a functional design
would be protected if there was an alternative
design that would bring about the same technicalfunction. (*10)
A Community design shall not be granted forfeatures of appearance of a product that must be
mechanically connected to another product so thateither product may perform its function, e.g. adesign for a fit of a plug that connects to a socket(“must-fit” exception).
A registered Community design is anabsolutely exclusive right that may also cover an
independent work of creation by a third party.
A “must-match” design such as for spareparts is registrable but the effect of suchregistered right does not extend to the use ofsuch parts for the purpose of repair.
An unregistered Community design shall
come
into
existence,
without
formality
requirements, on the date when the design was
first made available to the public within theCommunity, and shall be protected for three years
from that date. The requirements for protection
are the same as those for protection of aregistered Community design. Similar tocopyright, an unregistered Community design isthe right to prohibit imitation, which cannot be
exercised in respect of an independent work ofcreation by a third party.
Infringement proceedings shall be subject tothe jurisdiction of Community design courts.
Unlike a registered Community design, an
unregistered Community design is not presumed
to be valid, and therefore the right holder should
prove its validity whereas the defendant may
contest validity by way of a plea or with acounterclaim.
As infringement cases, there are decisions
with respect to provisional injunction in Germany(three-tiered air bed I and II, flat-type computer
monitor screen, and shoes) (*11) and a settlement in
the U.K. (Barbie doll)(*12). In the three-tiered air
bed I case, the validity of the design was admitted
on the grounds that considering the freedom ofdesigner, the overall impression produced by thedesign on an informed user differed from that
produced by some prior art, whereas in thethree-tiered air bed II case, the novelty of thedesign was denied due to some other prior art.

Ⅲ United Kingdom
In the United Kingdom, designs areprotected in a unique scheme by registered
designs, unregistered design rights, andcopyrights.
The current Registered Design Act 1949 waspartially amended in 1988, and then significantly
amended in 2001 in accordance with the European
Design Directive.
An application for registration of a design
shall be filed at the UK Patent Office, and subject
to the formality examination as well as thesubstantive
examination
regardingsomerequirements such as the object of protection.
The registrar may examine at his/her discretion
whether the design is new and has individual
character.
Under the 1988 Act, the object of protection
was features which in the finished article appeal
to the eye, and part designs and “must-match”
designs were not regarded as objects of protection.
Under the 2001 Act, the eye-appeal requirement
and the “must-match” exception were deleted andpart designs and designs for spare parts became
registrable.
For the object of protection: in the garden
chair case, no infringement was found on the
grounds that the grooves on the chair back could
not be disregarded when comparing designs forthe purpose of infringement(*13); in the case ofdesign application for car wheel, showing a view
from one side only in the application wasconsidered to be sufficient for registration(*14); in
the icon case, the designs were accepted if they
were displayed by an operating system in acomputer (*15) ; in the engine cover case, thedesign for an engine cover was registered as not
being a part of the engine or functional (*16) ; inthe nipple case and the fuse case, theregistrations were invalidated because theregistered designs were mere mechanicaldevices(*17) (*18); in the electric terminal case, thedesign was judged to lack appeal to the eye and to(*10) Opinion of Advocate-General RUIZ-JARABO COLOMER of European Court of Justice (AGO) of 23.1.2001,
C-299/99, [2001] RPC. 38, 745.
(*11) Landgericht Hamburg 308 O 564/03 Urteil, 26.11.2003 - Luftbett I; Landgericht Hamburg 308 O 591/03 Urteil,
4.12.2003 - Luftbett II; Landgericht Düsseldorf 12 O 123/04 Versäumnisurteil 28.4.2004 - Shuh; Landgericht
Hamburg 308 O 457/03 Beschluss 29.8.2003 - Computerfachabbildschirm: all unpublished.
(*12) Mattel Inc. v. Woolbro (Distributors) Ltd, [2004] FSR 12, [2003] EWHC 2412 (Ch D, Oct. 20, 2003).
(*13) Sommer Allibert (U.K.) Ltd. v. Flair Plastics Ltd, [1987] RPC 599 (CA, June 5, 1987).
(*14) Ford Motor Co Ltd's Design Application, [1971] FSR 314, [1972] RPC 320 (RDAT, Apr. 22, 1971).
(*15) Apple Computer Inc. v. Design Registry, [2002] FSR 38 (RDAT, Oct. 24, 2001): UK reg. designs 2094031-2094039.
(*16) UK reg. designs 3000174, 3000314: unpublished.
(http://www.marks-clerk.com/patentandtrademarkattorneys/publications/pressreleases/pr20030630.html).
(*17) Tecalemit Ld. v. Ewarts, Ld. (No. 2), [1927] 44 RPC 503 (CD, July 29, 1927): UK reg. design 703913.
(*18) Stenor, Ld. v. Whitesaides (Clitheroe), Ld. (now, Tewel Industries, Ld.) [1948] 65 RPC 1 (HL, July 2, 1947).

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be a technical function(*19); in the motor vehicle
part case, some of the designs were denied
registration as “must- match” designs and somewere registered. (*20)
As to requirements for protection, the 1949
Act required originality, whereas the 1988 Act
only required novelty, abandoning the approach
like copyright. The 2001 Act requires novelty andindividual character.
For novelty: in the spoon/fork handle case,the design of the handle applying the shape of an
existing temple was judged to be novel(*21); in thebicycle handlebar case, the design was not judged
to be novel on the grounds that a similar design
had been applied to the handle of a knife(*22); inthe coffee pot case, the design was judged to be
novel, without demonstration as to whether thedifferences from the prior art were either
immaterial or were common trade variants(*23).
For the scope of effect of a registered
design : in the air freshener case, an interlocutory
injunction was granted in light of the freedom ofdesigner(*24); in the garden chair case mentioned
above, similarity due to the shape dictated by thefunction was disregarded; in the children’s
carriage case, the court found no infringement,
having determined the difference from theaccused design while taking the difference fromthe earlier design into consideration(*25); in thedispenser case, the court found no infringement
because of the substantial difference, pointing outthat if the registered design only differed from theprior art by details, an interested customer could
be drawn to such the details, whereas if there wasradically difference, he/she would concentrate on
the general form of the design, and also by
applying the “now and later” assumption that thetwo designs were compared side by side, andthereafter an interested customer would go awayand come back later to the infringement.(*26) In thecoffee pot case mentioned above, the court ruledthat novelty of a registered design was to beassessed by the court as if through the eye of thecustomer for or trader in the relevant goods,
pointing out that the design might be valid overthe prior art even though individual features werevery similar, and vise versa; in the electric
terminal case mentioned above, the court pointed
out that determination should be made from theeye of electricians and those concerned withelectric wiring.
Unregistered design rights were createdunder the 1988 Act as a system for protecting
functional designs along with resolving thedistorted situation that according to theinterpretation of the Copyright Act 1956 purely
functional designs were not protected by theRegistered Design Act but protected for a long
period by the Copyright Act. A design rightautomatically comes into existence when thedesign is first recorded in a document or an article
is first made to the design. The term of protection
shall be, in principle, up to 15 years.
For the object of protection; in the case of theumbrella case, infringement was found based onprotection for part design(*27); in the tracktop case,a design right was denied on the grounds that thecolor scheme was surface decoration and not theobject of protection(*28); in the conservatory caseand kitchen range case, the respective design
were regarded as neither “must-fit” design nor“must-match” design so that respective
infringements were found. (*29) (*30)
As to requirements for protection, a design
right shall subsist in an original design, and adesign is not original if it is commonplace at thetime of its creation. In the sash window case,infringement was not found on the grounds that thedesign was judged to have been commonplace.(*31) In
the conservatory case mentioned above, the court
pointed out that “commonplace” was not to beequated with “well-known”. In the fertilizer
separator case, a commonplace test wassuggested.(*32)
Unlike registered designs, the design right is
not an absolutely exclusive right, and(*19) Amp Inc. v. Utilux Proprietary Ltd., [1971] FSR 572, [1972] RPC 5, 103 (HL, Oct. 27, 1971).
(*20) Ford Motor Co Ltd.'s Design Applications, [1994] RPC 545 (QBD, Mar 02, 1994): UK reg. design applications
2002303-306, 2004658-659, 2006899-6902, 2006904, 2015376, 2019416, 2019417.
(*21) Saunders v. Wiel, [1983] RPC 29 (CA, Dec. 16, 1892).
(*22) Dover Ld. v. Nürnberger Celluloidwaren Fabrik Gebrüder Wolff, [1910] RPC 498 (CA, May 4, 1910).
(*23) Household Articles Ltd's Registered Design, [1998] FSR 676 (Ch. D. (Patents Ct, Jan. 22, 1998): UK reg. design
2044802.
(*24) Reckitt Benckiser (UK) Ltd. v. H & I (Toiletries) Ltd., Patent County Court, Sept. 16, 2002, unpublished: UK reg.
design 2080312.
(*25) Simmons v. Mathieson & Co. Ld. [1911] RPC 113 (Ch. D. Dec. 2, 1910).
(*26) Gaskell & Chambers Ltd. v. Measure Master Ltd, [1993] RPC 76 (Ch D (Patents Ct), Oct. 22, 1992): UK reg. design
1022410.
(*27) A Fulton Co Ltd. v. Totes Isotoner (UK) Ltd., [2004] RPC 16, [2003] EWCA Civ 1514 (CA, Nov. 4, 2003).
(*28) Lambretta Clothing Co. Ltd v. Teddy Smith (UK) Ltd, [2004] EWCA Civ. 886 (CA, July 15, 2004).
(*29) Ultraframe (UK) Ltd. v. Eurocell Building Plastics Ltd., Eurocell Profiles Ltd., [2004] EWHC 1785 (Ch D, July 22, 2004).
(*30) Mark Wilkinson Furniture Ltd. v. Woodcraft Designs (Radcliffe) Ltd., [1998] FSR 63 (Ch D, July 30, 1997).
(*31) Scholes Windows Ltd. v. Magnet Ltd (No.1), [2002] FSR 10, [2001] EWCA Civ 532 (CA, Apr. 11, 2001).
(*32) Farmers Build Ltd. (In Liquidation) v. Carier Bulk Materials Handling Ltd., [1999] RPC 461 (Civ Div, Dec. 3, 1998).
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infringement is not found unless the design isimitated, like copyright. In the garment case,imitation was not found.(*33)
Eligibility of designs for copyright protection
depends on whether they are works of artistic
craftsmanship or graphic works (in particular,
engravings and sculptures) irrespective of artistic
quality. The term of protection shall be, in
principle, 70 years from the death of the author,
whereas 25 years from the first marketed forcopies made by an industrial process.
The first instance in the garment casementioned above found no copyright infringement
because of lack of artistic quality.(*34) In the
cartridge mould case, the design was not regarded
as a work of sculpture. (*35) In the rubber floor mat
for cars case, the design was recognized as a workof engraving.(*36)
Designs may be protected as trademarks if
they satisfy requirements including distinctiveness.
In the ice cream dessert product case, the court
determined a distinctive character of the threedimensional trademark.(*37)
Designs may also be protected from unfair
competition due to passing-off under common law.
In the lemon juice container case, protection wasafforded.(*38) In the cushion case, the likelihood of
actual deception was denied from the way of sales
and delivery.(*39)

Ⅳ France
In France, the Design Law of 1909 wasamended in 1990 and then integrated into theIntellectual Property Code of 1992. Subsequently,
it went through amendment in 1994 to mainly
tighten criminal penalties, and was amended on
July 25, 2001, in accordance with the European
Design Directive.
An application for registration of a design

shall be filed at the National Institute of Industrial
Property. One application may contain up to 100
reproductions of designs. The design shall be
registered after the examination as to theformality and violation of morality or public policy.
For industries that frequently change the form
and presentation of their goods, the simplified
application procedure (dépôt simplifié) is provided,in which an application may be filed with plain
drawings of the design, without being restrictedby ordinary formality requirements, and the
publication would be postponed for three years.
The fulfillment of the requirements forprotection shall be determined by the court.
Invalidity of designs may be claimed in invalidity
proceedings or by way of a plea or with acounterclaim in infringement proceedings.
It may be hesitated to regard the effect of adesign right as an absolute right like a design
right under the Japanese law. There was a case, inwhich it was found that an alleged infringer had
no civil and criminal liabilities, even after the
publication of the registered design, if hesuccessfully proved his bona fides, whereas the
manufacturer or seller of the allegedly infringing
product had civil liability.
In France, designs and works have beenprotected cumulatively under the theory of unityof art (see the draining basket for lettuce case(*40)).
For the object of protection: in the hair clip
case, protection was afforded because of thevisibility of the design at the time of sales(*41); inthe socket for car lamp case, invalidity of thedesign was declared on the grounds that thesocket could not be seen by the public once
integrated in a car(*42); protection was not afforded
because of functionality in the hanger case(*43),
athletic shoes case (the stitching was regarded asfunctional constraint) (*44), ballot box case(*45), androof tile case(*46); in the candle case, protection(*33) Guild v. Eskandar Ltd. (formerly Ambleville Ltd.), [2003] FSR 3, [2002] EWCA Civ 316 (CA (Civ Div), Mar. 14, 2002).
(*34) Guild v. Eskandar Ltd. (formerly Ambleville Ltd), [2001] FSR 38 (Ch D, Feb. 2, 2001).
(*35) Metix (UK) Ltd. v. GH Maughan (Plastics) Ltd,, [1997] FSR 718 (Ch D (Patents Ct), Mar. 10, 1997).
(*36) Hi-Tech Autoparts Ltd. v. Towergate Two Ltd. (No.1), [2002] FSR 15 (PCC, July 25, 2001); Hi-Tech Autoparts Ltd. v.
Towergate Two Ltd. (No.2), [2002] FSR 16 (PCC, July 26, 2001).
(*37) Société des Produits Nestlé SA v. Unilever plc., [2003] ETMR 53, [2003] RPC 35, [2002] EWHC 2709 (Ch D,
December 18, 2002): UK trademark applications 2,000,661及び2,000,662.
(*38) Reckitt & Colman Products Ltd. v. Borden Inc. and Others (No.3), [1990] RPC 341 (HL, Feb. 8, 1990).
(*39) Hodgkinson & Corby Ltd. v. Wards Mobility Services Ltd. (No.1), [1995] FSR 169 (Ch D, July 20, 1994).
(*40) Gautreau et La Matière plastique c. Legros et Interindustrie, Cour de Cassation, 2 mai 1961, JCP ed.G, 1961, 12242.
(*41) Robert Revais c. C.S.P. Diffusion et Team Plus et Galeries Lafayette, Cour d'appel de Paris, 22 jan. 1999, PIBD
1999, 681-III-334.
(*42) Socop et Socop Industries c. Jos et Man et Mastel Injection, Cour d'appel de Lyon, 12 sep. 1996, PIBD 1996,
621-III-600.
(*43) Plastiques Progrès c. Éstablissements Roybier et Fils, Cour d'appel de Paris, 31 mai 2000, PIBD 2000, 705-III-448 :Design No. 881471, 897049, 936759.
(*44) Mephisto et M. Martin Michaeli c. Sanders Distribution Sandis et Calzaturificio Grisport, Cour de Cassation, 26
mars 2002, PIBD 2002, 749-III-419 : Design No. 811319.
(*45) Doublet Festitub c. Devianne Duquesnoy, Cour d'appel de Douai, 5 avr. 1990, PIBD 1990, 480-III-406.
(*46) Tuilerie de Beauvais c. Établissements Céramiques de Beauvais à Auneuil (ECBA) (Établissements Céramiques deLandrons (ECLA)), Cour de Cassation, 22 jan. 1973, Ann.propr.ind. 1973 p.361, Legifrance.

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was afforded because of non- functionality(*47); inthe medieval-style pleats case, the design wasrecognized as being independent from processing
technology. (*48)
Novelty is a requirement for protection
specific to the Design Law. Novelty is regarded tobe satisfied by a novel combination of well-known
elements. In the platform sandals case, thenovelty was admitted due to characteristic
differences, though the design was partiallypublicly known.(*49) On the other hand, in the
Asian-style garment case, protection was notafforded due to changes only in immaterial details
such as the length of a stitch. (*50) In the lighter
case, the novelty was denied even if the flint part
had been extended. (*51)
Under the amended law of 2001, individual
character is added as a requirement for protectionof designs. Whether or not a design has individual
character is assessed by the overall visual
impression it produces on the informed observer.
This requirement has not been seen in case laws
since a long time ago, but was introduced inaccordance with the European Design Directive.
Therefore, theories face some difficulty in dealing
with it. This requirement was determined incases of Z-shaped table(*52), road sign(*53),
Asian-style garment mentioned above, Eiffel
Tower-shaped chessman(*54) and glass with a handle
and a support(*55).
Under the principle of cumulation, creativity
required for copyright protection is also put inquestion for protection under the Design Law
alone, but not considered as a higher level thannovelty. In precedents, creativity was equatedwith novelty (e.g. the lighter case and the
Asian-style garment case). In the fireplace case,novelty was found but creativity was further
required. (*56)
The criteria for the scope of effect of adesign right under the amended law is not seen in
the old law and considered as expressed
provisions based on the criteria established incase laws. In the carafe case, infringement was
found on the grounds that even consumers paying
average attention could not deny similarity in theimpression, despite partial differences, and they
could not distinguish the designs unless they
compared them closely. (*57) In the road sign case,infringement was found on the grounds that theregistered design had individual characterbecause, in light of the freedom of designer, thesign was totally different from signs that the
informed observer would usually experience, andthe difference from the defendant’s sign had no
impact on the impression of the identity. In the
Z-shaped table case, based on the recognition thatthe informed observer referred to a user with notaverage attention but particular vigilance, noinfringement was found on the grounds that theoverall impression of the defendant’s furniture
would not lead purchasers to believe that it is theplaintiff’s furniture. In the illustration on socks
case, the court determined the difference in theoverall impression after demonstrating thedifference in elements. (*58) On the other hand, thefollowing elements were judged to have no impact
on the overall impression: the characters written
on the ritual tools (tools for Jewish rites) (*59); thelength of skirt (pleated skirt) (*60); the thickness of(*47) Point à la ligne c. Roussel et Epistrof et Mme Dazzan, Cour de Cassation, 18 déc. 1990, Legifrance.
(*48) Maître Nadine Breiron (Plissage Industriel) c. Toupyt et Vetus de blanc, Cour d'appel de Paris, 2 juil. 1999, PIBD
1999, 988-III-550.
(*49) Bee Fly c. Mumiah, GIC Groupement Industriel et Commercial, Crete et Chauss'Europ, Cour d'appel de Paris, 2 avr.
2003, PIBD 2003, 771-III-454 : Design No. 98 0689.
(*50) Madame Barbel Cintius c. Madame Le Thi Dong Thai et Monsieur Dam Queng Minh, TGI Paris, 27 juin 2003,
PIBD 2004, 777-III-16 : Design No. 01 1189.
(*51) DuPont c. Établissements Myon, MM. Jeannerot et Desloriaux (administrateurs judiciaires de la Myon),
Marie-Claire Guyon (représentant des créanciers), Cheiffel et Franceso Smalto, Cour de Cassation, 13 fév. 1996,
PIBD 1996, 612-III-320 :Design No. 122 630, 122 631.
(*52) Zygote et Madame Aude Fabry c. Habitat France, TGI Paris, 15 fév. 2002, PIBD 2002, 748-III-377: Design No. 97 2223.
(*53) Monsieur Jacques Gedeau et Soudure Outillage Protection SOP c. La Voie Express et Sade Compagnie Generale deTravaux D'hydraulique, TGI Paris, 20 mars 2002, PIBD 2002, 752-III-523: Design No. 90 5538.
(*54) Sap Polyne c. Monsieur Matthew Grant, Cour d'appel de Paris, 25 fév. 2004, PIBD 2004, 788-III-369: Design No. 900023.
(*55) Durobor (Belgique) c. Verrerie Cristallerie d'Arques J,G. Durand et Cie VCA (nouvellement dénommée Arc
International), Cour d'appel de Paris, 28 nov. 2001, PIBD 2002, 741-III-217 : International Design Deposit No.
DM/009479.
(*56) Fonte Flamme c. M. Michel Labattu et Turbo Fonte, Cour de Cassation, 3 mai 2000, PIBD 2000, 704-III-418:
Design No. 0908253.
(*57) Trilles c. JeanJean, Cour d'appel de Paris, 3 mars 1999, PIBD 1999, 687-III-526 : Design No. 0923318.
(*58) Jules c. Mademoiselle Florence Dostal et Viastael et Breilly, Cour d'appel de Paris, 7 mars 2003, PIBD 2003,
772-III-485 : Design No. 97 1356.
(*59) Produits de Santé Sélectionnés (S.P.S.S) c. Oscar et Lola, Cour d'appel de Paris, 29 mai 2002, PIBD 2003,
758-III-113: Design No. 97 1480.
(*60) Madame Jeannine Pacherie c. Grandes Surfaces Internationales, Cour d'appel de Paris, 22 jan. 2003, PIBD 2003,
767-III-358.
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the sole (platform sandals); the fabric (Asian-stylegarment); the seat and the size of the body (chair)(*61); the shape of the grip (hair clip); the logo
(handbag) (*62).
For act of infringement, in the model car case,the design right for an automobile was judged to be
excisable on the design for a miniature car kit. (*63)
Novelty for a design right is determined
objectively whereas creativity for a copyright isdetermined subjectively. However, in most cases,
the criteria for both are overlapped, and thecriteria for infringement are also close to eachother. Copyright differs from design right in thefollowing points: protection without formality; themoral rights of author; the author is the originalright holder; the term of protection is 70 years
from the death of the author or from thepublication of collective works.
Designs may also be protected under
trademark law if they have distinctive character.
In the Epi case, protection was afforded to thepatterns embossed on the leather surface(*64), andin the dishwashing detergent case, protection wasafforded to the color of detergent in combination
with the clear bottle and the label as atrademark(*65). On the other hand, in thedrop-shaped bottle case, infringement was notfound on the grounds that the object protected by
the trademark was not the general shape of thebottle but the shape of the bottle cap. (*66)
In the event of misappropriation of designs,
protection may be afforded against unfair
competition under Article 1382 (tort) of the Civil
Code even if protection by design rights or
copyrights is denied. Dead copy, sales at
extremely low prices, and imitating whole
product lines are regarded as acts of unfair
competition.

Ⅴ Germany
The German Design Law was firstestablished as the Law Concerning Copyright on

Patterns and Models of January 11, 1876. (*67) It
was, through an amendment in 1986, amended in2003 for adapting to the European Design
Directive. The latest amended law was put into
force on June 1, 2004.
A design application shall be filed forregistration at the German Patent and Trademark
Office. Under the old law, the design shall be
registered after examination as to the formality
and violation of public policy or morality. Under
the new law, the conformity with the definition ofa design shall also be examined. Substantive
matters as to the eligibility for protection, novelty,
and individual character shall be determined by
the court.
A product that is new and has individual
character (originality under the old law) shall beprotected as a design. Typefaces that werepreviously protected under the special law shallbe protected under the new Design Law.
For the object of protection: in themulti-colored stripes stain case, the pattern of theregistered design was reproduced on a painted
paper, and the court ruled that the descriptionthat the material was satin could not be reliedon(*68); in the note blocks case, ideas were notprotectable(*69); in the furniture series case, it was
ruled that although only uniform marketableproduct could be the subject matter of design
protection, protection was afforded to the designs
for the series as a whole(*70); in the fender case,such parts that would produce the overall
impression jointly with the car body wereregarded as objects of protection(*71); in the Play
Family case, it was ruled that neither motif nor
basic materials were protectable(*72); in the lighter
head case, protection was afforded to the partial
feature of the design on the grounds that theshape that was not dictated exclusively by thetechnical function and served the technicalpurpose should be eligible for protection if itmaintained its aesthetic feeling.(*73)
For novelty, opinions were divided between(*61) AD Concept c. SIF, Cour d'appel de Paris, 15 jan. 1999, PIBD 1999, 674-III-177.
(*62) Stolar c. CCM et Griffe Universelle et MOD International Trading Co-mit Co (JOCKAI) et Etoile de Paris, Courd'appel de Paris, 15 mars 2000, PIBD 2000, 707-III-528.
(*63) Volkswagen et Bugatti International c. Provence Moulage, TGI Paris, 29 oct. 2002, PIBD 2003, 764-III-276 :International Design Deposit No. DM/051246.
(*64) Stocks Sacs c. Louis Vitton et Louis Vitton Malletier, Cour d'appel de Paris, 7 fév. 1996, PIBD 1996,
613-III-344 :Trademark No. 1 399 708、1 399 710 to 1 399 713, and 1 451 789.
(*65) Lever c. Colgate Palmolive Company et Colgate Palmolive, Cour de Cassation, 22 fév. 2000, PIBD 2001,
698-III-256:Trademark No. 1 692 480, 1 467 391.
(*66) Château de Cognac c. Union des exportateurs associés Unexpa et M. Denis Charpentier, Cour de Cassation, 15 juin
1999, PIBD 1999, 682-III-349: Trademark No. 1 488 991.
(*67) Gesetz betreffend das Urheberrecht an Mustern und Modellen.
(*68) BGH 14.07.1961 I ZR 44/59 “Buntstreifensatin” GRUR 1962, 144.
(*69) BGH 21.05.1979 I ZR 117/77 “Notizklötze” GRUR 1979, 705.
(*70) BGH 20.09.1974 I ZR 35/73 “Möbelprogramm” GRUR 1975, 383.
(*71) BGH 16.10.1986 I ZR 6/85 “Kotflügel” GRUR 1987, 518.
(*72) BGH 19.12.1979 I ZR 130/77 “Play-family” GRUR 1980, 235.
(*73) BGH 21.05.1965 Ib ZR 121/63 “Zündaufsatz” GRUR 1966, 97.

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arguing for absolute novelty and for subjective
novelty (a design is deemed as novel if it isunknown to the author at the time of creation),and theories supporting the latter has been
dominant. In the frilled hood case, the Supreme
Court ruled a uniform basis as objective andrelative novelty, pointing out that the UnitedStates belonged to the cultural circle that thedomestic professional circle in the field concernedin Germany should pay attention to. (*74)
For originality, in the alarm clock (Chérie)case, the court ruled that when determining theoriginality of a design, not comparing the design
with the earlier design in respective parts offeatures, but it would sufficient that there was thedifference in the overall impression produced by
the respective features. (*75) It is said that as
requirement for originality, a design must have an
aesthetic effect as a result of creative activity
beyond the routine proficiency that designers in
the industry concerned normally achieved or themere professional routine. In the triplecombination switch case, the court denied theoriginality, ruling that the level of originality
should not be too lowered even if the freedom ofdesigner was narrow.(*76) In the lighter head casementioned above, originality was admitted on the
grounds that there were numerous possibilities.
In the chained candle case, originality was denied
on the grounds that it had been known to therelevant professional circle that two or more
pieces of candle were tied with a single
candlewick at the manufacturing.(*77) It is said thatoriginality should be determined from theviewpoint of the routine of average designers in
the relevant field.
For the effect of a design right, under the oldlaw, a design right was, similarly to a copyright, arelative right to prohibit reproduction. The
allegedly infringing design was presumed to be an
imitation if it was substantially identical to theregistered design, and the alleged infringer
should prove that he had had no knowledge of theregistered design or that it was his independentwork. In the lighter head case mentioned above,the design was judged to be an imitation due tothe complete agreement of the shape. In the

Chérie case mentioned above, the agreement in
the size was a factor of judgment on imitation. In
the furniture series case mentioned above, theimitation was judged based on the almost same
overall impression regardless of separate
differences. Under the new law, it has been
amended for a design right to be an absoluteright.
The scope of protection was assessed basedon the determination of novelty and originality
and in accordance with the degree ofadvancement of the design. In the household
cutting machine case, the court pointed out thatsolely determinative of the creative nature was towhat extent the design distinguished itself fromdesigns known in the market concerned, and
ruled
that
the
greaterthecreative
accomplishment of the design, the greater thescope of protection(*78). In the Play Family casementioned above, infringement was denied,ruling that people who were familiar withcraftwork should totally observe the separate
features of the both designs side by side. In thedry shaver case, the court ruled that protection
was afforded only to the features displayed in thedisclosed representation of the design.(*79)
Designs shall be cumulatively protected bydesign rights and copyrights if they haveoriginality, novelty, and aesthetic value. The
aesthetic level required for designs is lower thanthat required for works. In the Europapost case,the court ruled the requirement for protection of
typefaces under the Design Law and the
Copyright Law(*80). In the cases concerning steel
pipe chair,(*81) vase-shaped candleholder (*82), andarmchair,(*83) the artistic creativity of therespective designs were affirmed.
Designs may also be protected as trademarks
if they are distinctive from products of the others.
In this respect, in the liqueur bottle case,originality was not required. (*84)
Article 1 of the old Unfair Competition Law
regulated the act of causing confusion in businessor to product and the act of imitating theconfiguration of product of others. In the newmode case, protection was afforded only for one
season.(*85) In the interconnecting blocks case,(*74) BGH 08.05.1968 I ZR 67/65 “Rüschenhaube” GRUR 1969, 90.
(*75) BGH 18.12.1959 I ZR 27/58 “Chérie‟ GRUR 1960, 256.
(*76) BGH 20.05.1974 I ZR 136/72 “Dreifachkombinationsschalter” GRUR 1975, 81.
(*77) BGH 21.01.1977 I ZR 68/75 “Kettenkerze” GRUR 1977, 547.
(*78) BGH 03.06.1977 I ZR 83/76 “Haushaltsschneidemaschine” GRUR 1978, 168.
(*79) BGH 21.01.1977 I ZR 49/75 “Trockenrasierer” GRUR 1977, 602.
(*80) BGH 27.11.1956 I ZR 57/55 “Europapost” GRUR 1957, 291.
(*81) BGH 27.02.1961 I ZR 127/59 “Stahlrohrstuhl” GRUR 1961, 635.
(*82) BGH 21.05.1969 I ZR 42/67 “Vasenleuchter” GRUR 1972, 38.
(*83) BGH 10.10.1973 I ZR 93/72 “Sessel” GRUR 1974, 740.
(*84) BGH Beschluß vom 13.4.2000 I ZB 6/98 “Likörflasche” GRUR 2001, 56.
(*85) BGH 19.01.1973 I ZR 39/71 “Modeneuheit” GRUR 1973, 478.
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protection was afforded on the grounds that thedesign had created specific demand.(*86)

Ⅵ Other European Countries[Sweden] In the automobile case, the novelty ofthe design was denied based on the applicant’s
own published registered trademark.(*87) In theplate holder for cars case, the court found nodesign infringement, ruling that the informed
user referred to traders who would purchase andinstall plate holders to cars, rather than car
manufacturers or end users, and that the required
level of individual character should be set fairly
low in light of the freedom of designer.(*88)[Greece] In the cardboard product case, no design
infringement was found due to lack of novelty.(*89)[Italy] Copyright protection was denied in thechair case(*90), whereas protection was afforded in
the lamp case.(*91)

Part 2

Design Protection
United States

in

the

In the United States, in addition to theUnited States Patent and Trademark Office(USPTO) engaging with forming rights, U.S.
district courts, U.S. Court of Appeals for theFederal Circuit, and the U.S. Supreme Court are
involved in examination on validity of rights andpatent infringement proceedings.
Design protection is said to go back to the
Patent Act of 1842. Designs shall be protected bydesign patents under the Patent Act (35 USC).
The term of protection shall be 14 years.
The object of protection is an ornamental
design for an article of manufacture, including asurface indicia applied to or embodied in thearticle of manufacture, a design for the shape or
configuration of the article of manufacture, or
combination thereof. In the Gorham case, theobject of design protection was defined(*92). In the
Avia case(*93) and L. A. Gear case,(*94) the court

afforded protection, pointing out the ornamental
aspect and the functional aspect of the design forathletic shoes, and a similar ruling was made in
respect of the simulated stone pathway in the
Hupp case.(*95)
As requirements for protection, a design
must be new and original, and also be
non-obvious as required for patentable inventions
in general. With respect to the factors forevaluation of the latter, the Graham factual
inquiries were outlined in the Graham case(*96).
The inquiries consist of the following four factors:(A) Determining the scope and contents of theprior art; (B) Ascertaining the differences fromthe prior art; (C) Resolving the level of ordinary
skill in the art; and (D) Evaluating objective
evidence of non-obviousness. In the Litton case,the court afforded protection by applying theinquiries added with the factor of commercial
success to the design for a microwave oven.(*97) In
the Avia case mentioned above, the court ruledwith respect to expert opinions. In the L. A. Gearcase mentioned above, the necessity of someteaching or suggestion of obviousness waspointed out. In the Hupp case mentioned above,the court ruled with respect the anticipation.
For the scope of protection: in the Gorhamcase, the court found infringement, ruling that thescope of protection should be determined in theeye of an ordinary observer rather than an expert;
in the Litton case and Avia case, the court foundinfringement in case of attributing similarity to
the novelty, by applying a “point of novelty”
approach; in the Braun case, the court denied thenecessity of empirical data on the grounds thatthe jury was an ordinary observer(*98); in the
OddzOn case, the court held that there could be
no infringement based on the similarity offeatures if the appearance are dissimilar(*99); in
accordance with the Markman case and the Elmercase suggesting to apply the former to designcases, the judge construed the claims of design
patent in the Goodyear Tire case. (*100)

(*86)
(*87)
(*88)
(*89)
(*90)

BGH 6.11.1963 Ib ZR 37/62 “Klemmbausteine” GRUR 1964, 621.
DaimlerChrysler v. PRV, Patentbesvarsratten, April 15, 2002 (01-124).
The Golden Frame v. Formac, Våxjö Tingsträtt, T1087-02, June 12, 2003, unpublished.
Ziakas Ioannis v. X, 6489/1999 ΜΠΡ ΑΘ（273451).
Cassina Spa. c. A Studio Srl. e Galliani Host Srl,, Tribunale di Monza, 23 aprile 2002, Il diritto de Autore, 2002,
p.433；[2002] EIPR N-167.
(*91) Tekno c. Tecnolumen e Strobel Peter, Tribunale di Firenze, 4.8.2003, Guida Al Diritto, 13.3.2004, No.10, p.71.
(*92) Gorham v. White, 81 U.S. 511 (U.S.N.Y., Dec Term 1871).
(*93) Avia Group v. L.A. Gear, 853 F.2d 1557, 7 U.S.P.Q.2d 1548 (Fed. Cir., Jul 29, 1988): D284,420, D287,301.
(*94) L.A. Gear v. Thom McAn Shoe, 988 F.2d 1117, 25 U.S.P.Q.2d 1913 (Fed.Cir., Feb 16, 1993): D299,081.
(*95) Jack T. Hupp v. Siroflex, 122 F.3d 1456, 43 U.S.P.Q.2d 1887 (Fed. Cir., Sep 4, 1997): D342,528.
(*96) Graham v. John Deere, 383 U.S. 1, 148 U.S.P.Q. 459 (U.S., Feb 21, 1966).
(*97) Litton Systems v. Whirlpool, 728 F.2d 1423, 221 U.S.P.Q. 97 (Fed. Cir., Feb 14, 1984): D226,990.
(*98) Braun v. Dynamics Corporation of America, 975 F.2d 815, 24 U.S.P.Q.2d 1121 (Fed. Cir., Sep 8, 1992): D271,176.
(*99) OddzOn Products v. Just Toys, 122 F.3d 1396, 43 U.S.P.Q.2d 1641 (Fed. Cir., Aug 8, 1997): D346,001.
(*100) Goodyear Tire & Rubber v. Hercules Tire & Rubber, 162 F.3d 1113 (Fed. Cir., Nov 10, 1998): D349,080.

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A work shall be protected under the UnitedStates Copyright Act when it is fixed on a tangible
article. To be protected, a work must be original.
A design of a useful article shall not be protected
unless it is capable of existing independently of,and can be identified separately from, theutilitarian aspects of the article. The Vessel Hull
Design Protection Act is a related act to copyrightlaw.(*101)
For the object of copyright protection: in the
Carol Barnhart case, copyright protection was
denied on the grounds that the artistic features
were inseparable from the forms as utilitarianarticles(*102); in the Brandir case, copyrightprotection of the bicycle rack was denied on the
grounds that it had been derived in part from awork of art but its features were altered to autilitarian purpose(*103); in the Knitwaves case,copyrightability of the patterns on sweaters was
confirmed. (*104)
In order to establish copyright infringement,
the alleging party must prove that reproduction
has taken place. In the Knitwaves case mentioned
above, the court, having examined the total
concept and feel, found agreement with theoriginal contribution and therefore foundinfringement.
Under the Lanham Act as the United States
Trademark Act, the act of causing confusion as tothe origin by any false designation of origin shallbe prohibited, whereby trade dress is protected.
In order to be protected, a product configurationmust
benon-functional,
have
inherent
distinctiveness or have acquired secondary
meaning. In the Duraco case, the court ruled thatin order to be distinctive, a product configurationmust be unusual, memorable, conceptually
separable from the product, and to serve as
designator of origin of the product.(*105) In the
Knitwaves case mentioned above, protection was
denied on the grounds that the designs wereprimarily aesthetic, and were not likely todesignate the origin. For the secondary meaning,in the Two Pesos case, it was ruled that theexterior and interior appearance of the restaurant
should be protected without showing secondary
meaning, if it had inherent distinctiveness(*106); in
the L. A. Gear case mentioned above, it was foundthat secondary meaning had been establishedthrough mass media promotion; in the Duracocase mentioned above, the court ruled factors
relevant to finding of secondary meaning; in the
Wal-Mart case, the court ruled that a product’s
design was distinctive only upon a showing of
secondary meaning(*107); in the Litton case and L.
A. Gear case, the court denied the likelihood ofconfusion, while indicating the elements to provea violation of the law.
With respect to unfair competition, in theSears case and Compco case, the court ruled that
it was an encroachment on the patent system toprohibit imitation as unfair competition understate law when unpatentable.(*108) (*109)

Part 3 Design Protection in China
In China, designs shall be protected under
the Patent Law. The Patent Law was put into
force on April 1, 1985, and the amendment to thelaw toward the WTO accession was put into force
on July 1, 2001. A design application shall be
registered and published after going through thepreliminary examination (formality, principle of
one application for one design, and public order),without substantive examination.
The objects of protection are limited to
products that are manufactured by industrial
methods, and craftworks that cannot be
reproduced are not regarded as products. Part
designs shall not be protected.
As to the requirements for protection, adesign must not be identical with and similar toany design which has been publicly disclosed inpublications within the country or abroad or
publicly used within the country, before the dateof filing, and must not be in conflict with a priorright of any other person. The first-to-fileprinciple is explicitly provided.
A request for invalidation of a registered
design may be filed to the Patent Reexamination
Board, and an appeal against the decision of theBoard may be filed to the people’s court.
A design right shall take effect on the date of
publication and shall last for ten years from thedate of filing. Right of prior use shall be granted.
For similarity assessment of design, a design
shall be deemed to be identical or similar toanother design, if the use of the products is
identical or similar and the features (shape,
pattern, color) of the designs are identical or(*101) The Vessel Hull Design Protection Act, 17 USC Chapter 13.
(*102) Carol Barnhart v. Economy Cover, 773 F.2d 411, 228 U.S.P.Q. 385 (2nd Cir., Sep. 12, 1985).
(*103) Brandir International v. Cascade Pacific Lumber, 834 F.2d 1142 (2nd Cir., Dec. 2, 1987).
(*104) Knitwaves v. Lollytogs, 71 F.3d 996, 36 U.S.P.Q.2d 1737 (2nd Cir., Nov. 13, 1995).
(*105) Duraco Products v. Joy Plastic Enterprises, 40 F.3d 1431, 32 U.S.P.Q.2d 1724 (3rd Cir., Nov. 15, 1994).
(*106) Two Pesos v. Taco Cabana, 505 U.S. 763, 23 U.S.P.Q.2d 1081 (U.S., Jun. 26, 1992).
(*107) Wal-Mart Stores v. Samara Brothers, 529 U.S. 205, 54 U.S.P.Q.2d 1065 (U.S., Mar. 22, 2000).
(*108) Sears, Roebuck v. Stiffel, 376 U.S. 225, 140 U.S.P.Q. 524 (U.S., Mar. 9, 1964).
(*109) Compco v. Day-Brite Lighting, 376 U.S. 234, 140 U.S.P.Q. 528, 140 U.S.P.Q. 531 (U.S., Mar 9, 1964).
● 61 ●IIP Bulletin 2005

similar.
In invalidation decisions, similarity shall be
determined by assessment of one on one
comparison with a prior design or assessment of
the substantial part or the whole part of thedesign, based on the design trends for the article
concerned obtained from ex officio prior art
search. On the other hand, in infringement
decisions, any new part of the registered designthat is not found in the submitted references shallbe regarded as a substantial part, and whether or
not the registered design would be confused withthe allegedly infringing design shall be
determined by examining the whole part based on
the overall observation.
The Examination Guidelines provides for
who should determine similarity of designs ininvalidity decisions. With respect to the appeal
proceedings against the invalidation decision, inthe minibike case, the Intermediate People’s
Court, in accordance with the old Examination
Guidelines, defined general consumers who were
to determine similarity as hypothetical people
who would only take the shape of the motorcycle
into consideration.(*110) The High People’s Courtof Beijing City changed this definition to
consumers who had a common knowledge andeducation on motorcycles, and the capability torecognize them, and revoked the declaration ofinvalidation.(*111) In the motorcycle case, theIntermediate People’s Court of Beijing City
adopted this view and revoked the declaration ofinvalidation.(*112) Following the trend of thesecases, the definition of general consumers waschanged under the Examination Guidelines thatwere put into force in July 2004.
In the “Opinion on Several Issues
Concerning the Grant of Patent (Tentative)”published by the High People’s Court of Beijing
City,(*113) it is suggested that in infringement
decisions, similarity shall be determined on thebasis of the aesthetic sense of ordinary
consumers rather than experts, and ordinary
consumers are defined as purchasers of the
products similar to the design patent. This
opinion is only applicable in Beijing City, but

important criteria.
As infringement cases: in the package case,infringement was found on the grounds that theaccused product was misleading general
consumers as the shape was identical, the pattern
was similar, and the color is close to the patented
design(*114); in the electric fan case, infringement
was found on the grounds that the differenceswere not found in visual factors for ordinary
consumers, such as the overall external structure,
the configuration of the grilles, the layout of the
major parts(*115); in the door frame member case,infringement was found on the grounds that while
there were some differences, it would be difficultfor ordinary consumers to find the differences insale or use, and therefore confusion would becaused when both were observed together.(*116)
These judgments were handed down five or six
years ago. There is such an opinion that ordinary
consumers are different from general consumers
in the definition and meaning but they arepractically difficult to distinguish, and therefore
similarity should be determined by creators in thespecific field in the invalidation procedure or by
ordinary consumers in the infringement
proceedings.
It is provided that the scope of protection forthe patent right for design shall be determined by
the product incorporating the patented design asshown in the drawings or photographs. In
accordance with this provision, infringement was
found based on the overall observation and thewhole part assessment in the electric hot water potcase(*117) and the door frame member casementioned above.
The patent right for design shall be declaredinvalid if there is any prior design that is identicalor similar to the patented design according to theinternational design classification. On the other
hand, in infringement decisions, commercial
practices and situations of sales and purchases
are also taken into consideration in addition to theclassification.
In the video player case, the Reexamination
Board decided that the design in question
belonged to a similar product despite the(*110) 本田技研工业株式会社 诉 专利复审委员会 (浙江黄岩华日(集团)有限公司、上海飞羚摩托车制造有限公司)、北京市第一中级人民法院2002年9月20日行政判决 (2002)一中行初字第138号: Design patent 93303569.1.
(*111) 本田技研 诉 专利复审委员会、北京市高级人民法院2003年5月30日行政判决 (2003)高行终字第15号.
(*112) 光阳工业股份有限公司 诉 专利复审委员会 (上海嘉陵车业有限公司)、北京市第一中級人民法院2003年12月3日行政判决 (2003)一中行字第314号: Design patent 99314583.3.
(*113) 北京市高级人民法院关于《专利侵权判定若干问题的意见（试行）》的通知 (京高法发[2001]229号).
(*114) 广西黑类食品集団公司 诉 枣庄市劳技经济发展公司食品厂、山东省济南市中级人民法院1999年2月5日民事判决(1998)济知初字第54号: Design patent 94313601.6.
(*115) 珠海格力雅达电器厂 诉 成都彩虹电器(集団)股份有限公司、四川省成都中级人民法院1999年12月16日民事判决(1999)成知初字第43号: Design patent 97330116.3.
(*116) 危五祥 诉 南海市平洲康実业有限公司、广东省佛山市中级人民法院2000年7月27日民事判决 (1999)佛中法
知初字第199号: Design patent 98318300.7.
(*117) 南海立昌家用电器有限公司 诉 万宝集団公司家用电器研究所、广东省高级人民法院1996年6月11日民事判
决 (1995)粤知終字第10号: Design patent 88301502.1.

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difference in the classification, whereas the High
People’s Court revoked the invalidation decisionon the grounds that similarity should bedetermined based on the drawings andstatements in the reference material.(*118)
Under the amended Examination Guidelines
put into force in July 2004, identity or similarity
in respect of general products should beconcluded by adopting the whole part assessment,
but not based on parts or details.
In the minibike case mentioned above, thefirst instance found similarity by the whole partassessment based on the overall observation,
whereas the second instance denied similarity byboth of first the substantial part assessment andthen the whole part assessment.
According to the Examination Guidelines,
any part of an article that easily attracts attention
when used has a significant impact on the overallvisual effect whereas the functional effect, color,and materials have no such impact.
For copyright protection, works of applied
art are construed as being included in the
category of works of art. In the Lego block case,copyright protection was afforded to the design as
a work of applied art that was reproducible andoriginal.(*119)
Well-known products are protected under the
Unfair Competition Prevention Law from any act
of causing confusion or misleading by applying
identical or similar names, packages, or ornaments.
Three-dimensional trademarks are protectable,
but protection shall not be afforded to a shape thatis solely dictated by the nature of the product perse, or indispensable for achieving the technicaleffect, or provides the product with substantial
value.

Conclusion
The design protection systems in the
countries surveyed in this study can besummarized as follows.
As to frameworks of the systems, two-track
systems are adopted in such manner as, inaddition to the registered design system, toprovide design right system in the United
Kingdom and unregistered Community design
system in the European Community, but thecontents of the two systems differ in therequirements for rights to take effect and theobjects of protection. In particular, theunregistered design systems, under which
validity of rights shall not be presumed, arecriticized as putting more burden on right holders

than registered design systems.
For the objects of design protection, thescope of protectable objects is broader in Europe
because “products” to which designs are applied
include intangibles. The treatment of part designs,
graphic symbols, and icons differs between
Europe, the United States, and China.
As to the requirements for protection, and inparticular, novelty, Europe and China requires
relative novelty whereas the United States, like
Japan, requires absolute novelty. Unlike theUnited States and Japan, there is no requirement
to be determined from the perspective ofdesigners in Europe and China.
For the scope of effect of a design right,
those countries adopt such common approach ofdetermining the scope as not from theperspective of designers or general consumers
but from the perspective of those who exist
in-between them, though respective specificlevels differ. In China, design infringement isfound on the premise of similarity in articles. In
those countries, consideration is given to thebalance with the requirements for protection
when determining whether or not a design rightis infringed.
Designs may be also protected under othersystems than copyright law for directly protecting
creative works, including unfair competition law,trademark law, civil code, and common law, but
protection of design under such laws is only
intended to be complementary. Cumulative
protection of designs under design law andcopyright law is different between France andother countries. In particular, in connection withmoral rights of authors, deliberation is necessary
as to protection under copyright law of industrial
designs that are frequently required modifications.
In light of such differences in design
protection systems in countries, it is necessary toconsider what criteria we should adopt to define
the objects of protection, requirements forprotection, and scope of protection for the
purpose of promoting industries in Japan.
(Senior researcher: Takeyuki Iwai)(*118) 索尼电脑娱乐公司 诉 广东步步高电子工业有限公司、专利复审委员会、北京市高級人民法院2002年12月17日判决 (2002)高民終字第847号: Design patent 99335291.X; Design patent 94311846.8.
(*119) 英特莱格公司 诉 可高天津玩具有限公司 北京市第一中級人民法院2001年12月25日判决、北京市高級人民法院2002年12月18日判决 (2002)高民终字第279号.
● 63 ●IIP Bulletin 2005