CASRIP Newsletter - Spring/Summer 1997, Volume 4, Issue 2

Trends and Direction of Reform of Japanese Design Law

The current Design Law of Japan (Ish^o H^o)¹ has not undergone radical reforms since its enactment in 1959. The number of applications for design registration doubled by the mid-1980s² when compared with that at the time of the enactment of the Design Law. The subject matter of design registration applications has expanded to include household appliances and electronic equipment, in addition to the initial subject matter of textile fabrics and clothes.

Because of the shortening of the life-span of articles embodying designs and the development of reproductive technology, the current Design Law does not necessarily provide senior designers who first entered into the relevant market with effective protection against early imitation by junior competitors. As a result, Japanese Design Law is now seeking a proper direction of reform, mainly with a view to resolving estrangement from the actual state of design development in Japan. The Japanese Patent Office (Tokkyoch^o, "JPO") has released a series of reports in recent years for purposes of identifying issues to be discussed for prospective reform of the Design Law.

The 1995 Round Table Report³ set forth three major standards that lead future reform to a desired direction: that is, (1) initial protection, (2) wide scope of protection, and (3) simple system of registration application procedure. First, initial protection aims at affording lead-time benefit to senior designers so that they may recapture investment in design development immediately after creation of designs or, at the latest, first sale of products.⁴ The factors considered under the standard of "initial protection" mainly comprises: (1) introduction of laying-open of an application file to public inspection (shutsugan k^okai) with provisional protective rights; (2) retroactive effect of design rights up to the application date; (3) expansion of subject matter of early examination (s^oki shinsa seido).

Second, "wide scope of protection" includes issues such as: (1) appropriateness of admitting that registered similar designs (t^oroku ruiji ish^o) shall constitute separate causes of action for purposes of an infringement lawsuit that is independent from corresponding registered designs (hon ish^o); (2) description of major portion or claim of designs in application documents for purposes of both clarifying the scope of design protection and expediting examination; (3) expansion of scope of protectable designs in sets (kumimono no ish^o); (4) extension of design protection to portion of articles (bubun ish^o); (5) strengthening design rights by exclusion of designs easily created in view of the "publicly" known prior art, in addition to the "widely" known prior art, with a view to protect truly creative designs only; (6) extension of design protection to designs as abstract motifs that are not embodied in articles, such as architecture, computer icons, typefaces, pictographs, designs solely comprised of patterns; (7) affiliation with the Hague Agreement on international deposit of designs.

Third, "simple system of design registration application" is concerned with requests, such as: (1) adoption of a plural-designs-per-application system in order to accommodate design registration application by way of the Hague route; (2) adoption of non-examination system partly applied to certain designs, such as those as abstract motifs, textiles designs; (3) relaxation of strict requirements regarding application drawings.

The 1996 Research Report⁵ examined the same scope of issues in detail from the same standpoint as employed in the 1995 Round Table Report, but it concluded that most issues should be subject to further scrutiny before reaching decisive conclusion.

The 1996 Reexamination Report,⁶ under the title of "strengthening protection for creative designs keeping up with internationalization," has further identified seven major issues to be discussed by the council of Nihon Dezain Hogo Ky^okai as follows: (1) reexamination of subject matter, such as portion designs, computer icons, pictographs; (2) reexamination of registerability requirements (in particular, (i) prior similar design as novelty defeating acts, and (ii) inventive step in view of the widely known prior art) and scope of design protection that covers designs similar to the registered design; (3) reexamination of system of registered similar designs, and adoption of plural-designs-per-application system; (4) expansion of scope of protectable designs in sets; (5) which measures best serves to clarify the scope of design rights between design feature description and design claim description; (6) introduction of laying-open of an application file; and (7) relaxation of strict requirements regarding application drawings.

Although the 1996 Reexamination Report remains silent as to a final concrete proposal on reform of Design Law, emphasis appears to be placed upon initial protection of designs since it specifically referred to the "DR-1 Project" under which JPO shall expedite the substantive examining procedure through improved operating measures under the current Design Law, such as reinforcement of examiners and computerization of examining procedure. As a result of implementation of the first 5-year term DR-1 Project (1991-1995), the number of unsettled design registration applications has been reduced from 116,000 to 65,000.

The JPO has been carrying out the second 5-year term DR-1 Project (1996-2000) with an interim goal set so that the first action by the JPO in response to design registration application, i.e., determination of either rejection or registration, shall be taken within twelve months of the application filing date. The eventual goal of the JPO is to shorten the period of design registration to a maximum of one year of registration application filing through fulfillment of the third term DR-1 Project, commencing from the year of 2001.⁷

With regard to initial protection of designs, it should be noted that prohibition against slavish imitation of configuration of goods has been introduced by the 1993 amendments to the Unfair Competition Prevention Law of Japan ("UCPL") (Fusei Ky^os^o B^oshi H^o)⁸ which came into effect on from May 1, 1994.⁹

According to the explanation by the Intellectual Property Policy Office in the Industrial Policy Bureau of the Ministry of International Trade and Industry (Tsushosangyo Sho, Sangyo Seisaku Kyoku, Chiteki Zaisan Seisaku Shitsu), the drafter’s legislative intent lies in prevention of a free ride by competitors on a prior entrant’s investment of fund and labor, giving the prior entrant the protection of a lead-time benefit in the relevant market so that an incentive for developing new products may be assured to a prior entrant.¹⁰

Accordingly, this protection under the UCPL is designed to extend to the configuration of goods, despite the absence of secondary meaning and likelihood of confusion among prospective purchasers -- so long as a three-year period from the date of first sale of such goods has not elapsed.¹¹ Thus, unregistered industrial designs have come to enjoy early protection under the UCPL rather than the Design Law. Taking into consideration this amendment to the UCPL, the JPO appears to consider that the significant role of the current Design Law resides in an early establishment of strengthened design rights to be well worthwhile for spending time and costs on substantive examination of design registration applications.¹²

-- Tomohito Ihara

¹The Design Law of Japan, Law No. 125 of April 13, 1959, as amended.
²The number of design registration applications with the Japanese Patent Office amounted to approximately sixty thousand per year in the mid-1980s. It was reduced to forty thousand per year by the mid-1990s, which, however, still constitutes one-fourth of the total number of design registration applications all over the world.
³Miryoku Aru Ish^o Seido No Kakuritsu E Mukete: Ish^o Seido Round Table Rep^oto (Toward Establishment of Attractive System for Design Protection) (Ish^o Seido Round Table Jimukyoku (Secretariat of Design System Round Table) ed., August 1995).
⁴As of 1996, the average time period of examination for a design registration application is 33 months (application through determination of either design registration or refusal being 28 months). The 1996 Research Report, infra note 5, at 3. As of 1994, other countries that adopt substantive examination systems have accomplished shorter periods of application through determination of registration or refusal than Japan (U.S.: 21 months, U.K.: 10 months, Sweden: 9 months, Korea: 11 months). The 1996 Reexamination Report, infra note 6, at 10.
⁵Dezain Katsud^o No Jittai Ni Gacchi Shita Ish^o Hogo No Arikata Ni Kansuru Ch^osa Kenky^u H^okokusho (Report on Research regarding Design Protection Conforming to the Actual State of Design Development) (Zaidan H^ojin Chiteki Zaisan Kenky^usho (Institute of Intellectual Property), March 1996) (This 1996 Research Report was prepared at the request from JPO.).
⁶Ish^o Seido No Minaoshi Ni Tsuite (Reexamination of Design System) (Ish^o Seido Kent^o Tokubetsu Iinkai Jimukyoku (Secretariat of Special Committee for Reexamination of Design System) ed., October 1996).
⁷For the DR-1 Project, see the 1996 Reexamination Report, supra note 6, at 10; the 1995 Round Table Report, supra note 3, at 8.
⁸The Unfair Competition Prevention Law of Japan, Law No. 47 on May 19, 1993. On the gist of the 1993 amendments to UCPL generally, see Doi, Teruo, The Principal Features of the new Unfair Competition Act of Japan (1)-(6), 134 -139 Patents & Licensing (1994 -1995) (available in English).
⁹UCPL, Article 2, Paragraph 1, Item 3 redefines the statutory language "fusei kyoso (unfair competition)" to include the act of transferring, lending, displaying for transfer or delivery, exporting, or importing goods which copy the shape (excluding a shape which is commonly used for goods of the same kind as those of another person or, in the case where the same kind of goods do not exist, goods which have the same, of similar, function and use as those of such other person) of another person’s goods (excluding goods with respect to which three years has elapsed since the date they were first sold). Using the above definition of unfair competition, UCPL entitles a person to an injunctive relief and a claim for damages if business interests of the person are injured by unfair competition.
¹⁰Chikujo kaisetsu fusei kyoso boshi ho (Verbatim commentary on UCPA) (The Intellectual Property Policy Office of the Ministry of International Trade and Policy, ed. 1994) at 37-38; Yamamoto, Yosetsu shin fusei kyoso boshi ho (Gist of New UCPA) (1993) at 100.
¹¹UCPL, Article 2, Paragraph 1, Item 3. See, supra note 9.
¹²The 1995 Round Table Report, supra note 3, at 8.

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