EACH OF THE ABOVE CHANGES
for registrability.
First,
Article 3(1) of the current Design Law stipulates the novelty requirement.
Namely, if a design application is the same as or similar to designs which
are publicly known in Japan or abroad, such a design application cannot
be registered. This Article is applied to design applications for articles
which are the same as or similar to one which is publicly known, and the
shapes or forms are also the same as or similar to each other.
Article 3(2) of the current Design law stipulates that where a design could
easily have been created, prior to the filing of the design application,
by a person with ordinary skill in the art to which the design pertains,
on the basis of a shape, pattern or color or a combination thereof widely
known in Japan, a design registration shall not be granted to such a design,
even if said design meets the novelty requirements of Article 3(1).
Namely, Article 3(2) stipulates the "creativity" requirement
and is applied to design applications that could easily have been created
on the basis of motifs widely known in Japan. Thus, under the current Article
3(2), even if it can be considered that a design application could easily
have been created by a person with ordinary skill in the art on the basis
of designs publicly known in Japan or abroad, and motifs publicly known
abroad, said design application falls under neither Article 3(1) nor (2),
and thus, can be registered if the other requirements for registrability
are satisfied. This means that even if less creative design applications
are filed, such applications are registered and are granted a design right.
Accordingly, the new Article 3(2) will stipulate the following: A design
which could easily have been created on the basis of publicly known designs
or motifs in Japan or aborad will be rejected or invalidated if such a
design is registered by the Examiner's oversight.for portions of articles as partial designs.
Under the current Design law, a design regarding a portion of an article
cannot be protected, if the portion per se cannot be marketed as an independent
article. Accordingly, even if such a portion is creative or characteristic,
it cannot be registered, and even if one of such portions is imitated by
others, the effect of the design right afforded to the design with creative
portions does not extend to the copied designs, if the design is not imitated
as a whole.Accordingly,
where a creative and characteristic design is created regarding a shape,
etc. of a portion of an article, it is desirable to effectively protect
such a portion itself as a partial design and to recognize a copied design
as an infringement of the partial design.
In order to appropriately protect partial designs, it is contemplated that
the definition of a design of an article will be changed and a portion
of an article will be protectable as a design.introduction of the concept of related designs.
Article
10 of the current Design Law stipulates that the owner of a design right
may obtain registration of a design which is similar only to his registered
design.Article
22 of the current Design Law stipulates that the design right relating
to a similar design shall be incorporated in the design right relating
to the design to which such similar design is similar and for which a design
registration was obtained first.The
similar design system is interpreted as being intended to strengthen the
protection of the right of a registered design (principal design) by registering
a design which is similar only to the registered designs. A similar design
application is registered as an exception of compliance with novelty and
first-to-file requirements, if the applicant is the same as that of the
principal design. Besides, the similar design system is intended to clarify
the scope of similarity of the principal design and to extend the scope
of protection of the principal design right itself.
However, it should be noted that, in an actual infringement lawsuit before
a Court, the dispute of whether or not the right of a similar design per
se is infringed is not taken up by the Court as an independent issue and
the proceedings of such a dispute by the Court are based on whether or
not the right of the principal design per se is infringed. Thus, the dispute
of the right of a similar design itself cannot be independently brought
before a Court.
Therefore, industry has claimed that various designs which are created
at the same time are also designs having creative value and strongly requested
that such similar designs be protected in the same way as the principal
designs and that infringement lawsuits for similar designs and that infringement
lawsuits for similar designs per se be permitted to be brought before a
Court.
In order to realize a wide scope of protection of designs which have a
high level of creativity, the following changes will be effected:The
current design Law stipulates the system for protection of the design of
a "set of articles", and the design of articles of two or more
kinds is registered as one design, if the prescribed registration requirements
are satisfied (Article 8). Nevertheless, although the registration requirements
for a design of a "set of articles" are independently examined,
the enforcement of the design right conferred to said design can only be
exercised treating the whole set of articles as one design.
On the other hand, with the diversification and high level of development
of recent products, system designs (designs which are created and designed
by combinating different kinds of articles systematically) can be found,
which makes it possible to construct one design with the combination of
two or more different kinds of articles. Under these circumstances, it
has been pointed out that the protection for a "set of articles"
as one design as stipulated in the current ordinance is restrictive, so
that the registration requirements and scope of protection of a "
set of articles" should be reconsidered.Concrete
changes to the new system design will be as follows:
If the new Design Law is implemented, we anticipate that objects of the
protection can be, for instance, kitchen systems, stationary sets, personal
computers systems, etc.
