Revisions to the Design Law (April 1, 2020)
May 1, 2020
The revisions to the Design Law promulgated on May 17, 2019, came into effect on April 1, 2020. The revisions are summarized as follows.
1. Expansion of Scope
(1) Protection of image design
Protection is now extended to an image that is neither recorded nor displayed on an article, such as an image in the cloud or a projection image. (Hitherto, only an image that is recorded or displayed on an article could be protected under the Design Law.)
(2) Protection of building and interior design
Protection is also now extended to the exterior design of real estate and civil engineering structures.
In addition, protection is extended to interior design configured by combinations and arrangements of plural articles such as desks and chairs, and by decoration of walls, floors and the like.
2. Expansion of the Related Design System
The related design system allows for registration of a design that is similar to a design for which the same applicant has already filed an application (the "main design"), if an application for the similar design ("related design") is filed within a certain period.
(1) Extension of the period for filing
The period for filing a related design has been extended to within ten (10) years from the date of filing of the application for the main design (the base design). (Hitherto, the related design had to be filed before publication of the main design in the Design Gazette.)
(2) Linked protection of similar designs
Hitherto, protection was only afforded to related designs that are similar to the main design; however, the revised law now extends protection to related designs that are similar to related designs (i.e., a related design designating another related design as the main design).
3. Changes to the Duration of Design Rights
The duration of a design right is now twenty-five (25) years from the filing date (hitherto, it was twenty years from the registration date).
4. Clarification of Criteria for Non-easiness of Creation
It is now the case that design registration is not possible for designs that could have been easily created from shapes, patterns or the like published in distributed publications, websites, or the like, regardless of whether or not these are publicly known.
5. Expansion of Scope for Designs of Set of Articles
A "set of articles", here, refers to the system whereby, when plural articles evoke a unified aesthetic as an integrated whole, the plural articles may be registered as a single design.
(1) In addition to combinations of designs of articles, combinations of designs of buildings, and combinations of designs of images, it is now possible to obtain design registration for combinations of different kinds of design (e.g., a set of a passenger vehicle and an image, or a set of a building and an image).
(2) It is now also possible to obtain registration for a design of a set of articles in a case in which a "portion" of plural articles have a unified aesthetic.
6. Expansion of Indirect Infringement Provisions
Actions such as manufacturing or importing a component element of an infringing article may now be subject to control.
7. Revision of Method for Calculating Amounts of Damages
For portions exceeding, for example, the production or retail capabilities of the design right holder, the amount of damages can now be presumed to be an amount commensurate to an appropriate licensing fee.
Compiled by Ayako Nozaki, Patent Attorney, Trademark and Design Section
Please use the following form to forward us any inquiries regarding the revisions discussed above, noting the title of the foregoing article in your inquiry.