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 hasnot undergone radical reforms since its enactment in 1959. The number of applications fordesign registration doubled by the mid-1980s2 when comparedwith that at the time of the enactment of the Design Law. The subject matter of designregistration applications has expanded to include household appliances and electronicequipment, 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 thedevelopment of reproductive technology, the current Design Law does not necessarilyprovide senior designers who first entered into the relevant market with effectiveprotection against early imitation by junior competitors. As a result, Japanese Design Lawis now seeking a proper direction of reform, mainly with a view to resolving estrangementfrom 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 ofidentifying issues to be discussed for prospective reform of the Design Law.
The 1995 Round Table Report3 set forth three majorstandards 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 thatthey may recapture investment in design development immediately after creation of designsor, at the latest, first sale of products.4 The factorsconsidered under the standard of "initial protection" mainly comprises: (1)introduction of laying-open of an application file to public inspection (shutsugank^okai) with provisional protective rights; (2) retroactive effect of design rights upto the application date; (3) expansion of subject matter of early examination (s^okishinsa 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 isindependent from corresponding registered designs (hon ish^o); (2) description ofmajor portion or claim of designs in application documents for purposes of both clarifyingthe scope of design protection and expediting examination; (3) expansion of scope ofprotectable designs in sets (kumimono no ish^o); (4) extension of design protectionto portion of articles (bubun ish^o); (5) strengthening design rights by exclusionof designs easily created in view of the "publicly" known prior art, in additionto the "widely" known prior art, with a view to protect truly creative designsonly; (6) extension of design protection to designs as abstract motifs that are notembodied in articles, such as architecture, computer icons, typefaces, pictographs,designs solely comprised of patterns; (7) affiliation with the Hague Agreement oninternational deposit of designs.
Third, "simple system of design registration application" is concerned withrequests, such as: (1) adoption of a plural-designs-per-application system in order toaccommodate design registration application by way of the Hague route; (2) adoption ofnon-examination system partly applied to certain designs, such as those as abstractmotifs, textiles designs; (3) relaxation of strict requirements regarding applicationdrawings.
The 1996 Research Report5 examined the same scope ofissues in detail from the same standpoint as employed in the 1995 Round Table Report, butit concluded that most issues should be subject to further scrutiny before reachingdecisive conclusion.
The 1996 Reexamination Report,6 under the title of"strengthening protection for creative designs keeping up withinternationalization," has further identified seven major issues to be discussed bythe council of Nihon Dezain Hogo Ky^okai as follows: (1) reexamination of subjectmatter, such as portion designs, computer icons, pictographs; (2) reexamination ofregisterability requirements (in particular, (i) prior similar design as novelty defeatingacts, and (ii) inventive step in view of the widely known prior art) and scope of designprotection that covers designs similar to the registered design; (3) reexamination ofsystem of registered similar designs, and adoption of plural-designs-per-applicationsystem; (4) expansion of scope of protectable designs in sets; (5) which measures bestserves to clarify the scope of design rights between design feature description and designclaim 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 proposalon reform of Design Law, emphasis appears to be placed upon initial protection of designssince it specifically referred to the "DR-1 Project" under which JPO shallexpedite the substantive examining procedure through improved operating measures under thecurrent Design Law, such as reinforcement of examiners and computerization of examiningprocedure. 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 reducedfrom 116,000 to 65,000.
The JPO has been carrying out the second 5-year term DR-1 Project (1996-2000) with aninterim goal set so that the first action by the JPO in response to design registrationapplication, i.e., determination of either rejection or registration, shall be takenwithin twelve months of the application filing date. The eventual goal of the JPO is toshorten the period of design registration to a maximum of one year of registrationapplication filing through fulfillment of the third term DR-1 Project, commencing from theyear of 2001.7
With regard to initial protection of designs, it should be noted that prohibitionagainst slavish imitation of configuration of goods has been introduced by the 1993amendments to the Unfair Competition Prevention Law of Japan ("UCPL") (FuseiKy^os^o B^oshi H^o)8 which came into effect on from May1, 1994.9
According to the explanation by the Intellectual Property Policy Office in theIndustrial Policy Bureau of the Ministry of International Trade and Industry (TsushosangyoSho, Sangyo Seisaku Kyoku, Chiteki Zaisan Seisaku Shitsu), the drafterslegislative intent lies in prevention of a free ride by competitors on a priorentrants investment of fund and labor, giving the prior entrant the protection of alead-time benefit in the relevant market so that an incentive for developing new productsmay be assured to a prior entrant.10
Accordingly, this protection under the UCPL is designed to extend to the configurationof goods, despite the absence of secondary meaning and likelihood of confusion amongprospective purchasers -- so long as a three-year period from the date of first sale ofsuch goods has not elapsed.11 Thus, unregistered industrialdesigns 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 thesignificant role of the current Design Law resides in an early establishment ofstrengthened design rights to be well worthwhile for spending time and costs onsubstantive examination of design registration applications.12
-- Tomohito Ihara
1The Design Law of Japan, LawNo. 125 of April 13, 1959, as amended.
2The number of design registrationapplications with the Japanese Patent Office amounted to approximately sixty thousand peryear 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 registrationapplications all over the world.
3Miryoku Aru Ish^o Seido NoKakuritsu E Mukete: Ish^o Seido Round Table Rep^oto (Toward Establishment of AttractiveSystem for Design Protection) (Ish^o Seido Round Table Jimukyoku (Secretariat ofDesign System Round Table) ed., August 1995).
4As of 1996, the average timeperiod of examination for a design registration application is 33 months (applicationthrough determination of either design registration or refusal being 28 months). The 1996Research Report, infra note 5, at 3. As of 1994, other countries that adopt substantiveexamination systems have accomplished shorter periods of application through determinationof 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 NiGacchi Shita Ish^o Hogo No Arikata Ni Kansuru Ch^osa Kenky^u H^okokusho (Report onResearch 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 the1996 Reexamination Report, supra note 6, at 10; the 1995 Round Table Report, supra note 3,at 8.
8The Unfair Competition PreventionLaw of Japan, Law No. 47 on May 19, 1993. On the gist of the 1993 amendments to UCPLgenerally, see Doi, Teruo, The Principal Features of the new Unfair Competition Act ofJapan (1)-(6), 134 -139 Patents & Licensing (1994 -1995) (available in English).
9UCPL, Article 2, Paragraph 1,Item 3 redefines the statutory language "fusei kyoso (unfaircompetition)" to include the act of transferring, lending, displaying for transfer ordelivery, exporting, or importing goods which copy the shape (excluding a shape which iscommonly used for goods of the same kind as those of another person or, in the case wherethe same kind of goods do not exist, goods which have the same, of similar, function anduse as those of such other person) of another persons goods (excluding goods withrespect to which three years has elapsed since the date they were first sold). Using theabove definition of unfair competition, UCPL entitles a person to an injunctive relief anda claim for damages if business interests of the person are injured by unfair competition.
10Chikujo kaisetsu fusei kyosoboshi ho (Verbatim commentary on UCPA) (The Intellectual Property Policy Office of theMinistry of International Trade and Policy, ed. 1994) at 37-38; Yamamoto, Yosetsu shinfusei 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.