YUASA AND HARA
LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING
Oct 27-28, 2009
WIPO ASIA-PASIFIC Conference on national Intellectual
Property Strategies for Development
Manila, Philippine
Topic 5:
Some Key Issues for Consideration in a
National IP Strategy
Industrial Designs for Value Addition
Shinjiro Ono
Yuasa and Hara
(Former Deputy Commissioner Japan Patent Office)
Contents
1. Roles of Design and its Registration
2. History of Design Policy in Japan
G-Mark System
3. Protection of Design
Japanese Design Registration System
4. Outstanding issues with respect to IPRs,
which require registration in a nonsubstantive examination country
1
Roles of Design and its Registration
Means to add high value to products and to
differentiate products, especially in a market
flooded by alternative products or dominated
by mature technology
1. Discourage competitors from marketing
the same and similar products
2. Economical and easy means of preventing
copying products (counterfeit goods)
2
FY2008 Good Design Award (G-Mark)
Grand Prize
Toyota iQ
Registration No.1327677
Gold Prize
Sony Handycam HDR-TGI
Registration No. 1341477
Gold Prize
Takaratomy i-SOBOT
Registration No.1309129
3
Example of value addition by design
“Animal Rubber Band” (h concept co.,
ltd.)
◆FY 2003 SME Special Prize
Global Market including Museum of Modern Art (MoMA) N.Y.
Shop
◆The Development Bank of Japan (DJB) lent 10 million yen
loan on registered designs of Animal Rubber Band in January
2007.
Registration No.1244654
Registration No.1244650
4
Example: Role of design registration
Prevention by Customs Office of
importation of counterfeit products
Sharp
AQUOS
Registration No.1127562
Counterfeit product
5
Purpose of Design Protection
• Japanese Design Law*
• Section 1
• The purpose of this Law shall be encourage the
creation of designs by promoting their protection
and utilization so as to contribute to the
development of industry
*Design Law was first enacted in 1988.
Current Law was enacted in 1959 and amended
many times.
6
History of Design Policy in Japan
Design Promotion by the Government
(MITI)
Action against design copying
Promotion of exports
• 1957
Establishment of Export Inspection Law
G-Mark started (privatization in 1998)
• 1958
Establishment of Design Promotion Office
Establishment of Design Promotion Council (-’98)
• 1959
Establishment of Exported Product Design Law
(Law against design copying)
7
History of Good Design Awards
(The G-Mark system) in Japan-1
Foundation of the System
• The purpose of “G-Mark system (formerly “Good
Design Selection System” by Ministry of
International Trade and Industry (MITI) –
sponsored until 1997) can be summarized as
“attaining Improvement in quality of lives and
advancement of industry through design.
• G-mark system was established in 1957 against a
background of problems regarding international
intellectual property rights, specifically in
connection with copied merchandise.
8
History of Good Design Awards
(The G-Mark system) in Japan-2
Promotion of Export
• In 1963 the G-Mark system changed over to a
system open to general submission.
• The MITI stated its clear objective of using design
to encourage exports.
• Japanese exports obtained a good market share
on account of outstanding quality and low cost;
but originality of design was not emphasized.
9
History of Good Design Awards
(The G-Mark system) in Japan-3
Seeking “Superiority Designed Products”
• In the 1970s, as industry underwent major
structural change, electric goods and electronic
devices leaped to the forefront to replace
furniture, interior goods and daily sundries, which
had until then been the main products bearing GMark logo.
• In 1980, the Grand Prize, Categorize Prize and
Long Selling Good Design Prize (15-years, now
reduced to 10 years) were added to the G-Mark
System to single out products leading the way in
Japanese design innovation.
10
History of Good Design Awards
(The G-Mark system) in Japan-4
Ensuring ”Quality of Life”
• In 1984, the range of products considered for GMark status was expanded to encompass” all
industrial goods.”
• The G-Mark system adopted the objective of
“ensuring quality in all aspects of life”, and
toward this end incorporates design in capital
goods, healthcare, education, and the public
sector.
11
History of Good Design Awards
(The G-Mark system) in Japan-5
Ensuring “New International Standard”
• In the 1990s, the G-Mark system adopted its next
objective of global standards in terms of
interactive design, universal design, and
ecological design.
• In 1998, the G-mark system was privatized as a
result of administrative reform.
12
Table 1. The number of Design applications and ratio of
Domestic applications
2004
2005
2006
2007
2008
2008*
Japan (JPO)
40,756
39,254
36,724
36,544
33,569
88.2%
US (USPTO)
24,022
25,635
25,511
27,737
27,781
53.4%
EU (OHIM)
53,892
(14,051)
63,648
(16,817)
69,279
(17,628)
77,237
(19,213)
72,756
(18,751)
77.9%
China (SIPO)
110,849
163,371
201,322
267,668
312,904
95.4%
Korea (KIPO)
42,879
46,615
52,879
55,662
56,296
93.0%
*Ratio of Domestic applications
Table 2. The number of Designs applications in Philippines
2004
2005
2006
2007
2008
1,012
1,265
961
865
1,221
Foreign
476
619
485
434
Japan
119
113
105
112
Total*
205
*Source: ECAP II HP and the county report of WIPO long term trainee at the JPO
13
Protection of Design
I. Japanese Design Registration System
Features of Japanese Design Registration System
II. Content of Amendment
1. Extending of the term of right
2. Clarifying the scope of the similarity of designs
3. Enhancing the protection of screen designs
4. Enhancing the protection of related and partial
designs
5. Enhancing the protection of secret designs
6. Facilitating application system
14
I. Japanese Design Registration System
15
Intellectual Property Act
Laws for protecting intellectual creations
Patent law
Invention
Utility model law
Design law
Copyright law
Seed and seeding law
IP Related
Laws
Act concerning the circuit layout
of a semiconductor integrated circuit
Utility model
Design
Creative work
New plant variety
Circuit Layout of a semiconductor Integrated circuit
Laws for protecting credit maintenance
Unfair competition prevention law
Shape of goods,
Well-known indication regarding goods,
Trade secret, Geographical indication
Trademark law
Trademark
Commercial law
Trade name
Source: The Japan Patent Office (JPO)
16
Features of Japanese Design Registration System
1) Substantive Examination Principle
2) First-to-file Principle
3) Subject of Protection
4) Requirements for Registration (Registrability):
-1. Industrial Applicability
-2. Novelty (Publicly-known in the world, Absolute Novelty)
-3. Creativity (Creative Difficulty) etc.
- One application per design
- Duration: 20 years
5) Unique Systems:
-1. Partial Design System
-2. Design for a Set of Articles
-3. Related Design System
-4. Secret Design System
Source: The JPO
17
1. Substantive Examination Principle
Substantive examination system:
Japan, US, Korea,
Vietnam, etc.
Non-Substantive Examination system: OHIM, France, Germany,
Italy, China etc.
2. First-to-file Principle
In order to grant the design registration in Japan it is
necessary to file an application subject to a formality to the
Japan Patent Office, and only the first applicant can be granted
design right.
Source: The JPO
18
3. Subject of Protection
“Design” in this law means a shape, pattern or color or any
combination thereof in an article (including part of an article)
which produces an aesthetic impression on the sense of sight
(Sec. 2(1)).
-- should be admitted as article
Cell phone
Fire works
-- the shape of article itself
Movable toy
Tied point of tie
Source: The JPO
19
4. Requirements for Registration
-1. Industrial applicability
Design should be mass productive by Industrial methods.
Fine Arts like painting and sculpture or natural objects
cannot be protected under the design law.
i.e.)
Fine Art
bonsai
Source: The JPO
20
4. Requirements for Registration
-2. Novelty
Examiners conduct search not only within the range of prior
arts in Japan but also look into those in foreign countries to
judge whether design in question has novelty and creativity.
Source: The JPO
21
Case: How to judge similarity ?
Registered design
(Design A)
Rejected design
(Design B)
Registered design
(Design C)
Rejection
Registration
No. 829945
Application
No. S60-026559
Registration
No. 744780
Source: The JPO
22
Similar points and Different points among designs A, B and C
◆Overall shape
Design A
Design B
Design C
◆Front grill and Head light
◆Fender
◆Rear Gate, Combination Lamp and Pillar
Source: The JPO
23
Promotion of JAMA-CAAM Motorcycle Industry
Intellectual Property Rights (IPR) Cooperation
Project in China (February 2002 – March 2004)
 Purpose:
 To raise the shared awareness of IPR
To prevent disputes before they can occur
 To raise awareness of the need to respect the
IPR of others while advancing the independent
development of technology
To expand the presence of motorcycles and
contributing to the growth of the motorcycle
industry
• JAMA: Japan Automobile Manufacturers Association, Inc
• CAAM: China Association of Automobile Manufacturers
24
Project Profile-1
 Step 1: Design Similarity Study Workshop
To promote shared awareness of the
knowledge required to understand design
similarity
To avoid infringement of design rights
 Step 2: Symposium on IPR
To achieve shared awareness of the need to
protect IPR
 Step 3: Study on IPR Management Methods
in Japan
25
Second Design Similarity Study Workshop in
Guangzhou (02.11.26 ~ 28)
Discussed in 3 Groups
• Similarity Study on
the basis of recent examples
• Study on Patentability
Results of JAMA-CAAM Motorcycle IPR Project
Reference from JAMA 26
Project Profile-2
 Projects Result of Step 1-3 for 2 years
• Participants over 800 persons
• Set up in-house IP management division
10% to 60% of all participating companies
• Number of applications for IPR filed by Chinese
motorcycle manufacturers steadily increase
2001 75
2003 638
27
Project Profile-3
 Step 4: Establishment of Conciliation Body
for Motorcycle IPR Disputes on March 19,
2004, mutually agreed by the China
Chamber of International Commerce
(CCOIC), CAAM and JAMA
 Purpose:
To achieve a prompt and economical resolution
 Three provisions:
1. The Consultation Consignment Agreement
2. List of Conciliators
3. List of Motorcycle Experts
28
Results of JAMA-CAAM Motorcycle Industry
Intellectual Property Rights Project
2003
2002
2004
J F M A M J J A S O N D J F M A M J J A S O N D J F M A
STEP 1
Design Similarity
Study Workshop
STEP 2
Symposiums on
Intellectual
Property Rights
STEP 3
Study on Intellectual
Property Rights
management methods
in Japan
STEP 4
Establishment of
Dispute Conciliation
Body
1st workshop
2nd workshop
3rd workshop
Apr.22-25
Tianjin
Nov.26-28
Guangzhou
Nov.25-28
Wenzhou
1st symposium
2nd symposium
Jun.14
Beijing
Sep.19
Beijing
suspension
by SARS
1st study session
2nd study session
Oct.21-25
Tokyo, Hamamatsu
Dec.8-12
Tokyo, Motegi
Discussion by JAMA-CAAM “Conciliation Body” Study Committee
1st meeting 2nd
Aug.29
Oct.29
CAAM: (China Association of Automobile Manufacturers)
3rd
Jan.23
4th
5th
6th
Jul.30 Sep.20 Nov.27
Creation
7th Mar.19
Launching
Feb.5 ceremony
News from JAMA Motorcycle
April 2004 29
4. Requirements for Registration
-3. Creativity
No design without creativity can be registered under
design law, even though the design satisfys novelty
requirement.
i.e.)
Eiffel Tower
Ornament of Eiffel Tower
Source: The JPO
30
Example 1: Design without creativity
“Paperweight”
Ordinary
technique
Mere representation of the
shape of a Green Pepper
Natural
object
Publicly known design: Paperweight
Actual case of ordinary technique
Source: The JPO
31
Example 2: Design without creativity
“Gas Stove / Cooking Stove”
Publicly known design 1
Such a design
method is
well known.
Publicly known design 2
Ordinary
replacement
“Cylinders are commonly used in this type of article.”
(Tokyo High Court, Case No. 1990 (Gyo-ke) 148)
Source: The JPO
32
Example 3: Design without creativity
“Speaker Box”
[Reference]
Ordinary
Combination
Publicly known design:
Speaker Box
Example where a speaker
box is NOT recognized as
constituted by collection
of designs which were
publicly known (middle)
by ordinary technique of a
person skilled in the art
Publicly known design:
Speaker
Source: The JPO
33
5. Unique Systems:
-1. Partial Design System
“Design” in this law means a shape, pattern or color or
any combination thereof in an article (including part of an
article) which produces an aesthetic impression on the
sense of sight.”
(Section 2(1))
Reg. No. 1104550
A short shoe
Source: The JPO
34
5. Unique Systems:
-2. Related Design System
- A design similar to the principal design is allowed
to be registered as a “related design.”
-- Applications containing such designs must be filed before
publication date of the principle design by the same
applicant.
- The term of design right of a related design:
-- 20 years from the date of registration of the principal
design right
- Fees, effects of the right:
-- Same as the ordinary application
Source: The JPO
35
Examples of related designs
“vacuum cleaner”
Principal
Design
Related Designs
“refrigerator”
Principal
Design
Related Designs
Source: The JPO
36
“ball-point Pen”
Principal
Design
Reg. 1199219
Related Designs
1199457
1199459
1199461
1201746
1199458
1199460
1199462
Source: The JPO
37
5. Unique Systems:
-4. Secret Design System
- Contents of the registered design may be kept secret
without being published in the Design Gazette
- Maximum period:
3 years from the date of registration
- Protecting the registered design against imitation by
third parties before launched to (launch into) the
market
- Request must be submitted at the time of filing the
design application
Source: The JPO
38
II. Content of Recent Amendment
39
1. Extending of the term of right
Term of design right is extended.
(20 years after registration)
Motorcycle
Beverage container
Source: The JPO
40
2. Clarifying the scope of the similarity of
designs
The basis of judgment on the similarity of designs is
made clear to be a sense of aesthetic of people who
buy the relevant goods
(i.e. consumers and industrial buyers).
Source: The JPO
41
3. Enhancing the protection of screen designs
Subject matter to be protected by Design Law is enlarged
for designs in the operating screen of display of home
information appliances, etc.
(A screen design other than initial screen and a screen
shot design displayed on a separate display unit are
newly protected)
<Examples of screen designs to be newly protected>
W
S
Operation screens of video
recording / play back devices
Setting screens of
digital cameras
Source: The JPO
42
4. Enhancing the protection of related and
partial designs
The time limit in filing an application for design variations (related
designs) and for the designs of components and part of an article
(partial designs) is extended. (Before: Acceptable on the filing date of
a principal design or on the filing date of a design for a whole article.
Now: Acceptable until the issuing date of the Design Gazette.)
<Example of partial designs (current)>
Filing on the same date
Automobile
(the whole design)
Headlight
(Partial design of the whole automobile)
<After amendment>
(Application)
Automobile
By the issue of Gazette
(Application)
Later
Headlight
Source: The JPO
43
5. Enhancing the protection of secret designs
Additional occasion is provided for the request of using
the secret design registration system (in which the
registered design is not made public for a period up to
three years). (Before: Acceptable on the filing date only.
Now: Acceptable on the date of registration fee
payment, as well.)
44
6. Facilitating application system
The time limit to submit certificates to avoid loss of
novelty for filed design application is extended in case
where the design of the applicant himself has been
publicly known.
(Within 30 days from the filing date.)
45
Outstanding issues with respect to IPRs, which
require registration in a non-substantive
examination country
No registration No enforcement
 File similar or identical applications by local companies
on the basis of IPR publication of original applications
or related publications
Unfair Competition Law
is limited
Need for proactively filing
 Utility model and design patent applications are
registered without substantive examination
Safe
guards are necessary such as, easier way to invalidate
them or prerequisite for enforcement (such as a
warning in the form of a report of a technical opinion
under Japanese Law)
46
YUASA AND HARA
LAW, PATENT, TRADEMARK & DESIGN and ACCOUNTING
Thank you
- Thank you for your kind attention
- I would be pleased to answer any questions
- You may contact me at:
ono-ch@yuasa-hara.co.jp
URL: http://www.yuasa-hara.co.jp
47