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Requirements for design registration Bangladesh – In 2023, a new Industrial Design Act (Industrial...
Registration requirements
Registering a Swiss design requires novelty and uniqueness. Specifically, the design must have not been published or used publicly, must be new, and must have characteristics that are sufficiently different from existing designs. In addition, the contents of the design must not be illegal or contrary to public order and morals, and designs consisting only of shapes that are essential to the functionality of the product are also not eligible for protection. The Swiss Design Act (DesA) stipulates these requirements (Art. 2) and grounds for refusal of registration (Art. 4). In the registration procedure, the examiner checks for reasons for refusal other than determinations regarding the functional form of the design (whether the design is purely functional), but no substantive examination of novelty or originality is conducted. Therefore, it is recommended that applicants themselves check whether similar designs exist before filing (IPI also encourages prior design searches before filing).
Comparison with Japanese design registration requirements: Japanese design law also strictly requires novelty, and designs that are publicly known at home and abroad or designs that are similar to them cannot be registered. Furthermore, in Japan, designs that can be easily created from known designs and that are not difficult to create are also rejected. This is similar to the originality requirement of Swiss law, which states that the design must be "different from existing designs in important respects," but in Japan, examiners substantively examine novelty and ease of creation, and reject if applicable. On the other hand, in Switzerland, requirements such as novelty are Registration without examination, and violations of these requirements become a problem in invalidation trials and litigation. Regarding the exception to loss of novelty (grace period), the period is the same: 12 months in Switzerland and 1 year in Japan, but it should be noted that in Japan, procedures (application application and submission of certification documents) are required at the same time as the application (Switzerland also allows a 12-month grace period under Art. 3 of the Design Law).
Application procedure
Design applications in Switzerland are under the jurisdiction ofSwiss Federal Intellectual Property Office (IPI). Documents required for application include application form (names and addresses of applicant and creator, design name, product classification, etc.), drawings or photographs of the design (at least one), and at least one design image must be included at the time of application. In Switzerland, it is possible to comprehensively apply for multiple designs in one application, and up to 100 designs can be filed at once if they belong to the same or similar product classification (Locarno classification). The basic application fee is CHF 200 per design, and each additional design is added to the same application (a flat rate of CHF 700 for 6 or more designs), and includes the publication fee for one figure per design. The language of the procedure can be selected from the official languages of German, French, and Italian, and when foreign companies and individuals apply in Switzerland, they must appoint a local representative (patent attorney). The processing period from application to registration averages from several months to one year, and if things go well, registration can be achieved in a relatively short period of time. IPI conducts formal examination only and does not examine substantive requirements (novelty/uniqueness) as mentioned above. If there are any deficiencies in the formalities examination, a notice of amendment will be issued, and if the amendments are not made within the period, registration will be disqualified. In Switzerland, there is no system for filing an opposition after publication, and there is no way for a third party to file an opposition before the right arises other than filing an invalidation trial (cancellation action) after registration.
As a procedural feature, Switzerland can delay publication of a design for up to 30 months. If you request **deferred publication** at the time of filing, the publication can be deferred for up to 30 months from the filing date (or priority date), and during that time it is possible to proceed with obtaining rights in a private state. This is useful when you want to keep the design secret at the time of product announcement.
Comparison with Japanese application procedures: In Japan, the principle is one application for one design, and there is no system for filing applications for multiple designs at once like in Switzerland. In addition, for applications in Japan, the procedural requirements are detailed, such as A strict set of drawings such as 6 views is required in the application (Japanese), and drawing amendments are also restricted. Regarding examination method, Japan uses the substantive examination system by the Patent Office, where novelty, ease of creation, violation of public order and morals, etc. are scrutinized during examination. On the other hand, in Switzerland, there is no substantive examination, so the process from application to registration tends to be faster than in Japan. In Japan, it takes an average of 6 to 8 months from application to notification of initial examination, and in many cases, it takes more than a year to receive a response and registration if there are reasons for refusal. Regarding the disclosure system, Japan also has asecret design system, which is similar to the postponement of publication in Switzerland in that it is possible to keep a design private (concealed) in the official gazette for up to three years after registration (the period is 36 months in Japan and 30 months in Switzerland). However, unlike Japan's system of delaying the publication of secret designs in the gazette untilafter the rights have been granted, Switzerland's system of postponement of publication is different in that the registration itself is kept private at theapplication stage. In addition, when applying in Japan, it is necessary to pay a registration fee (for the first three years) at the time of establishment registration on the application, and then it is a pension system in which the registration fee is paid every year to maintain the validity period. In Switzerland, the renewal fee is paid at the time of renewal, but there is no need to pay maintenance fees for the initial 5 years or more at the time of registration (the initial registration fee includes the first to fifth year).
Protection period
The duration of a Swiss design right is 5 years from the filing date. The initial protection period of 5 years can be renewed (extended) up to 4 times, and each renewal will be extended by 5 years. Therefore, a design right can be maintained for up to 25 years from the filing date. Renewal procedures can be accomplished by applying for renewal and paying the prescribed renewal fee within 12 months before the expiration of the term (with a grace period of 6 months after expiration). For example, a design that was applied for and registered in 2025 will be extended until 2035 if you first go through the renewal procedure in the fifth year (2030), and then you can keep the rights until 2050 by continuing to do so in 5-year increments. The starting date for the term of rights is the date of filing, and rights accrue on the date of registration, but it is important to note that the term of protection is calculated from the filing date, not from there (for example, even if it takes six months from application to registration, that six-month period is included in the duration). If not renewed, the rights will expire at the end of five years and the design will become public domain.
Comparison with the term of protection in Japan: In principle, the term of a design right in Japan is 25 years from the filing date, and with the 2020 law reform, it is now possible to protect for up to 25 years, the same as in Switzerland. Under Japanese law before the revision, it was ``20 years from the date of registration,'' but under the current law, it has been changed to ``25 years from the date of application,'' effectively extending and harmonizing the protection period internationally. However, in Japan, similar to patent rights, rights are maintained by paying an annual annuity (registration fee), and if you fail to pay the annuity midway through, the rights will expire at that point. On the other hand, in Switzerland, the renewal system is every five years, and maintenance fees are paid in increments of five years. There are procedural differences in Japan, such as the fact that there is no concept of renewal and the license is maintained for up to 25 years by paying a pension, and although the starting date is the same as the filing date in Switzerland, rights accrue on the registration date (annual payments for the initial period are required at the time of registration). However, both countries currently agree on the maximum term of protection of 25 years, and from the perspective of the term of protection, it can be said to be at approximately the same level internationally.
Infringement lawsuit
Scope of rights and infringement: Registered designs in Switzerland have exclusive rights, and the design owner has the right to exclude unauthorized use by third parties. Specifically, the act of manufacturing, selling, or importing a registered design (or a virtually identical design) without the permission of the design right holder falls under infringement. Swiss law also has provisions regarding the scope of similarity between designs, and a design that is "common in major features" (i.e. not sufficiently different) from a registered design is considered to be in conflict with the scope of rights. Therefore, if a counterfeit product isidentical or confusingly similar to the original, then design infringement can occur. However, in the design field, there are many cases of unintentional infringement of someone else's design, and IPI urges people to be aware that ``infringement of design rights often occurs unintentionally.''
Pre-litigation steps: In Switzerland, it is customary for design right holders to monitor the market themselves, and if they need to enforce their rights, they first send a warning letter (certificate of content, etc.) to the other party, urging them to voluntarily cease production and sale or to negotiate. As a prudent and practical measure, IPI recommends that you first try to resolve the issue privately through a warning letter. It is desirable to clearly state in the warning letter the fact of the infringement, the content of the design right, and possible legal action (injunction or claim for damages) if it continues, and to try to reach a settlement and correction outside of litigation as much as possible. If the other party still does not respond, we will consider seeking an injunction or damages through civil lawsuit, or in severe cases, we will consider sanctions throughcriminal prosecution.
Legal proceedings and remedies: Although Switzerland has a Federal Patent Court that handles patent infringement cases, the commercial or civil courts of each canton generally have first instance jurisdiction for design infringement suits (some cantons, in particular Zurich and Bern, have specialized divisions). In civil litigation,injunctions (judgments) and damagesare the primary remedies. Regarding injunctions, if the right holder seeks prompt relief, it is possible to apply for a temporary injunction (provisional disposition) to temporarily halt the manufacture and sale of illegally designed products. Compensation for damages requires intentional negligence on the part of the infringer, but it is possible to claim damages such as loss of business profits or an amount equivalent to license fees. Infringement of design rights is also subject to criminal penalties, and those who knowingly infringe the design rights of others may be prosecuted and subject to fines and/or imprisonment (based on the provisions of the Swiss Criminal Code or Design Law). Although criminal proceedings are actually taken only in cases of malicious and large-scale infringement (for example, systematic production and distribution of counterfeit products), the existence of criminal penalties has the effect of deterring infringement.
Other enforcement measures: Customs seizures are also available as a means of enforcing intellectual property rights in Switzerland. A design right holder can apply to the Federal Customs and Border Security Service (FOCBS) to obtain an injunction against the importation of suspected infringing goods. If your application is approved, customs officials will find the infringing goods in the mail, at the airport, or at the border and seize and detain them. As a measure against counterfeiting of intellectual property, border measures are in place for designs as well as for trademarks and copyrights.
Comparison with Japan's infringement lawsuits: Similarly, Japanese design rights grant exclusive rights to registered designs and designs similar to them, and the act of commercially using the design (manufacturing, sales, import/export, etc.) without permission constitutes infringement. In Japan, in addition to civil remedies (such as requests for injunctions and claims for damages), infringement of design rights may result in criminal penalties of 10 years' imprisonment or less or a fine of up to 10 million yen (for corporations, a fine of up to 300 million yen) based on Article 69 of the Design Act. In practice, the general process is to first send a warning letter, then try to reach a settlement through negotiation, and if the matter is still not resolved, a lawsuit is filed in a district court in Tokyo or Osaka that has a division specializing in intellectual property. Japanese courts make detailed determinations of similarity between designs (overall similarity based on aesthetics between the registered design and the accused design), and the cases are often heard in a specialized division (such as the Intellectual Property High Court or a division knowledgeable about intellectual property), so although the trial period is longer than in Switzerland, you can expect professional judgment. Remedies are almost the same as in Switzerland, and mainly consist of injunctions and compensation for damages (in Japan, there are special provisions to provide relief to interested parties, such as provisions for estimating the amount of damages and provisions for presuming negligence (Article 40 of the Design Act)). In Japan, it is also possible to register a design right with customs and apply for an import suspension, which is especially used to prevent counterfeit products from entering from overseas. Overall, the framework for enforcing rights is not significantly different between the two countries, and is based on civil procedures, with criminal penalties provided in the most egregious cases. However, Japan is unique in that measures have been taken to strengthen the enforcement of rights, such as the 2020 revision of the Indirect Infringement Provision (which considers the provision of parts that facilitate direct infringement of a designed product to be an infringement). On the other hand, in Switzerland, there is no written provision regarding indirect infringement, and it is treated as an accomplice. Despite these differences in detail, the Japanese and Swiss systems share a common foundation for the practical purpose of protecting designs from counterfeits.
Relationship with international applications
Both Switzerland and Japan are parties to the Hague Agreement and can use theInternational Design Registration System (Hague System). If Switzerland is designated in an international design application under the Hague Agreement (via WIPO), the design will be communicated to IPI through the WIPO Secretariat in Geneva, where it will be examined and registered with the same effect as a Swiss domestic application. In the case of Switzerland, substantive examination is limited as mentioned above, so even if Switzerland is designated in an international application, it is likely that the application will be automatically registered unless there is a notification of refusal. In fact, IPI only issues Refusals in obvious cases such as violations of public policy or designs consisting only of technical functions, and many internationally registered designs can be protected smoothly in Switzerland. Internationally registered designs that designate Switzerland are then recorded in the Swiss design register, and the protection period and renewal procedures are handled in the same way as domestic applications (direct renewal to IPI is possible every five years).
On the other hand, if Japan is designated in the Hague application, the Japan Patent Office (JPO) will conduct a substantive examination in the same way as a domestic application. Therefore, Japan may issue a notice of reasons for refusal within six months of international registration, and if it is determined that the design lacks novelty or falls under the grounds for non-registration, the applicant (holder of the international application) must submit a written opinion or amendment to the Japan Patent Office within the response period to resolve the reasons for refusal. In practice, there are many cases in which a Japanese patent attorney is appointed to respond to the Japanese designation, and even if the application is an international application, it is necessary to follow the domestic procedures in Japan. This isa major difference from the Swiss designation, which is registered without examination. For example, if Switzerland and Japan are designated in an international application for the same design, the design will be quickly registered and issued in Switzerland, but in Japan it may take time and effort to respond to a notice of reasons for refusal and finalize the examination results. When Japanese companies seek to protect their designs overseas, they can use the Hague system to obtain rights in multiple countries, including both countries, with a single application.ong>Differences in examination standards in each countrymust be kept in mind. Although Switzerland's registration requirements are lenient, there remains a risk that even if a patent is granted, it will be invalidated later on, whereas Japan's approach is to ensure the stability of rights through strict examinations. Furthermore, since both Japan and Switzerland are members of the Paris Convention, it is possible to claim Paris priority (six months)** even if you apply directly to each country. For example, if you apply first in Japan and then file in Switzerland within 6 months, you can eliminate disadvantages due to priority rights in addition to the exception period for loss of novelty (the priority period for designs is 6 months under the Paris Convention, and both countries have adopted this). Overall, the use of international applications (Hague) is well established in both Japan and Switzerland, making it easier for Japanese companies to obtain design rights in Switzerland, and for Swiss companies to obtain design rights in Japan. However, since there are differences in the examination flow and stability of rights, it is necessary to take into account the characteristics of each country's system when formulating strategies.
Comparison table with the Japanese system
| Perspective | Swiss design system | Japanese design system |
|---|---|---|
| Registration requirements | Novelty and Originality required (not publicly known and sufficiently different from existing designs). Shapes that violate public order and morals or are purely functional are not allowed. Although a design is registered without substantive examination, a design that does not meet the requirements can be invalidated in an invalidation trial. | Novelty and Easy to create are required (designs that are publicly known or similar to them are not allowed, and designs that can be easily derived from existing designs are also not allowed). Violations of public order and morals are also prohibited. The Japan Patent Office conducts a substantive examination, and applications that do not meet the requirements will be rejected. |
| Application procedure | Submit application (German, French, Italian) to IPI. Rapid registration with formal examination only. One application can include up to 100 designs (within the same classification). There is a release postponement system (30 months). No opposition system (only invalidation trial after registration). Foreign applicants need a local agent. | Submitted application (Japanese) to the Patent Office. Substantive examination included (average examination period 6 to 12 months). One application and one design (*There are exceptions such as interior design). There is a secret design system (undisclosed for up to 3 years after registration). After publication of a design gazette, there is no opposition system, only invalidation trials. Foreign applicants need a domestic agent. |
| Protection period | Up to 25 years with 5 years + 4 renewals from the filing date. Pay a renewal fee every 5 years after the initial period (6 months grace period). The starting date is the filing date (rights arise on the registration date). | 25 years from the filing date (after 2020). You can maintain it for the longest time by paying the annual registration fee. The starting date is the filing date (before the revision, it was 20 years from the registration date). There is no concept of renewal procedure, and it automatically expires after 25 years. |
| Infringement/litigation response | The scope of the right is any design that is same or has major features in common with the registered design. It is possible to seek injunctions and damages against the infringer through civil litigation. Preliminary resolution by sending a warning letter is recommended. Customs injunction can be applied for. Intentional infringement carries criminal penalties (fines and imprisonment). | Scope of rights is registered designs and similar designs. Claim for injunction/compensation in a civil suit (tried by a district court with an intellectual property division). There is a customs injunction system. Infringement of design rights is subject to criminal penalties of up to 10 years' imprisonment or a fine of up to 10 million yen (for corporations, a fine of up to 300 million yen). The 2020 amendment established indirect infringement provisions. |
| International Application (The Hague) | Joined in 1961. Switzerland can be designated by international design registration via WIPO. IPI only conducts a formal and partial substantive examination, and if there is no reason for refusal, domestic rights will arise directly from the international registration. The protection period and renewal of internationally registered designs are handled in the same way as domestically. | Joined in 2015. Japan can be designated in international applications. Since the JPO conducts a substantive examination in the same way as a domestic application, there may be a notification of refusal. A written opinion/amendment by the Japanese agent is required to respond to the refusal. The duration of an internationally registered design is the same as that of a domestic application (25 years based on the filing date). You can apply directly with Paris priority (6 months) without filing an international application. |
Source: Information published by the Swiss Federal Intellectual Property Office (IPI), provisions of the Swiss Designs Act, WIPO Hague System guide, etc. We also referred to published materials from the Japan Patent Office and related organizations and explanatory articles by patent attorneys. From the above comparison, you can see that while the design systems of Switzerland and Japan have some things in common, such as the term of protection, there are practical differences, such as the presence or absence of examination and the flexibility of procedures. For companies doing business in both countries, it is important to understand these system differences and acquire and exercise rights strategically.
AUTHOR
Takefumi SUGIURA （杉浦 健文）
EVORIX Intellectual Property Law Firm Managing Patent Attorney
Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).