Overview of the French design system

Application procedures (place of application, language, fees, examination system, etc.)

Filing location and language: French design applications are filed with theIndustrial Property Institute (INPI), the equivalent of the French Patent Office. In principle, applications should be filed in French. Since October 2019,design applications have only been acceptedonline, and paper-based procedures are generally not accepted. Additionally, if the applicant is a foreign company that does not have a residence or base in France, it is necessary to appoint a local industrial property attorney (patent attorney).

Required documents and procedures: At the time of application, in addition to the **application (applicant information, etc.)**, drawings or photographs of the design must be submitted. Drawings/photos must accurately represent the aesthetic features of the design being protected, and it is recommended that multiple images of the same product be attached from different angles and in use. The image must not contain backgrounds, decorations, text, etc. that are unrelated to the design, and must only show the design on a plain background.

Multiple designs in one application: In France (and the EU), it is possible to apply for several designs in one application (up to 100 can be filed simultaneously). However, in that case, all designs mustbelong to the same product category (class in the Locarno classification). For example, it is possible to submit 100 furniture designs in one application. This will improve efficiency in terms of fees and procedures. On the other hand, in Japan, the principle is one application for one design, and there is no system for filing multiple designs at once (similar designs are dealt with under the related design system described below), so this is a big difference.

On the other hand, the term of design rights in Japan is stipulated as 25 years from the filing date. Due to the legal revision that took effect in April 2020, the previous "20 years from the date of registration" was extended, and now protection is now available for 25 years, the same as in France and the EU. However, in Japan, it is necessary to pay an annual pension (registration fee) during the term of the license, and if there is no payment, the rights will expire midway. France also requires a renewal fee every five years, so maintenance is a hassle, but the maximum period is now the same 25 years, so there is no longer a big difference between Japan and France. Similarly, the EU Community Design has a maximum of 25 years with renewal every 5 years.

*For your reference, the EU also has a system called unregistered designs, in which a design may be protected for 3 years from publication without registration. However, unregistered designs are limited rights that apply only to counterfeiting, and there are no such unregistered design rights in Japan (measures against unauthorized copying of designs are covered by the Unfair Competition Prevention Act in Japan).

Infringement litigation (enforcement of rights, court, burden of proof, compensation for damages, etc.)

We will explain the practical points regarding litigation proceedings for design right infringement in France.

• Court of Jurisdiction: In France, the district court (Tribunal judiciaire), which has a specialized division for intellectual property cases, has jurisdiction over design infringement cases. In particular, the Court of Grand Instance of Paris (Paris Court of Justice) has established an intellectual property division, and it is stipulated that litigations concerning Community designs (EU designs) are under the exclusive jurisdiction of the Paris Court of Justice. There are several IP courts throughout France, but important cases tend to be handled in Paris. On the other hand, in Japan, the intellectual property specialized divisions of the Tokyo District Court and Osaka District Court are primarily in charge of the first instance of design infringement lawsuits, and the appeals court is heard at the Intellectual Property High Court (within the Tokyo High Court).

• Flow of enforcing rights and proof: In France, before or at the same time as filing a lawsuit, you can use the evidence preservation procedure calledSaisie-contrefaçon, which secures evidence of the other party's infringing material with permission from the court. Under this system, an enforcement officer (judicial officer) visits the business premises of the suspected infringer, seizes and photographs the design products and production documents, and is extremely useful for gathering evidence of infringement. This injunction (seizure) can be enforced immediately even before a lawsuit if the plaintiff reasonably shows the probability of infringementand is a powerful weapon in design litigation, which cannot begin without evidence. Japan also has document submission orders as a means of gathering evidence, but these are more limited than France's cerci, and this is where the difference in practice can be seen.

  In a lawsuit, the plaintiff (design right holder) proves that the design of the defendant's product is substantially the same as his/her own registered design (identical or only slightly different). French/EU law stipulates that a design right infringement occurs "if the design of the defendant's product does not give an 'overall impression' that is different from the registered design." In other words, if the aesthetic impression given to the viewer is similar, it will be considered the same or similar design and constitute infringement. In Japan, it is stipulated that it is an infringement if a "registered design or a design similar to it" is used in the course of business (Article 24 of the Design Act), and the standards for determining substantial infringement are similar in both countries. However, in France, the defendant can assertinvalidity (lack of novelty/uniqueness) of the registered design as a defense, and the court also examines the validity of the right in infringement proceedings. On the other hand, in Japan, invalidation trials are the exclusive responsibility of the Patent Office, so the defendant files a separate request for invalidation trial and counters infringement lawsuits with the defense of abuse of rights (in cases where the patent is clearly invalid). Due to this difference, it should be noted that in many cases, French courts judge infringement and validity at the same time when reaching a conclusion.

• Relief (such as injunctions and damages): If infringement is found, the plaintiff may seek relief for injunction and damages. In France, an injunction can be issued as a provisional measure even before a lawsuit is filed, and if the case is won, it usually takes effectimmediately without any suspension of execution. In addition, in order to ensure the fulfillment of the judgment, it is common for the defendant to be ordered to impose a fine (astran) such as ○ euros per day if the defendant violates the law. Regarding damages, in France, since the implementation of the EU Directive in the 2000s, courts have been required to determine the amount of damages by taking into account the plaintiff's actual loss (lost profits, market reputation damage, etc.), as well as the defendant's unjust enrichment and the hypothetical license fee equivalent. Even in cases where it is difficult to prove, it is possible to at least certify "the amount of royalties that would have been earned under normal circumstances" as a type of statutory compensation, and consideration has been taken to prevent victims from missing out on relief. In Japan, the Design Act has the same provisions for estimating damages as the Patent Act (Article 102 of the Patent Act applies mutatis mutandis), and the amount of damages can be estimated using the sales volume of the infringing product and the defendant's profits. Therefore, although there is not much difference in the calculation method, French courts often require the defendant to bear part of the litigation costs and attorney's fees (in recent years, there has been a trend of awarding the winning party an amount close to the actual costs), and the scope of economic relief is more extensive than in Japan.

• Criminal penalties: In France, infringement of design rights can only be subject to criminal penalties if committed intentionally. Those who commit deliberate design infringement can be sentenced toup to 3 years in prison and a fine of 300,000 euros (aggravated by the number of violations). Criminal proceedings can be initiated by the customs authorities, public prosecutors, or by the right holder himself. In Japan, infringement of design rights is punishable by up to 10 years in prison or a fine of up to 10 million yen (it is now a non-prosecution offense), and criminal prosecution is also carried out in serious cases of counterfeit products. However, in both Japan and France, civil injunctions and compensation remedies are the mainstay, and the reality is that criminal prosecution is limited to malicious cases.

Relationship with international applications (Hague system, consistency with European designs)

The Hague International Design System: France is a member of the Hague Agreement (Geneva Act) and has access to the international registration system. In other words, by filing an international design application with WIPO (World Intellectual Property Organization) and registering France as a designated country, it is possible to obtain the same effect as a domestic design registration in France. Hague applications have the advantage of obtaining design protection in multiple countries with a single application, and are used not only by French companies but also by Japanese companies (Japan also joined the Hague Agreement in 2015). For example, if a Japanese company designates France via The Hague, it can obtain a French design right by omitting the direct application to the French Institute (INPI). However, it is important to note that French-specific fees (such as the first 5-year registration fee mentioned above) will also be required.

European Community Design (EU Design): As France is a member state of the EU, it has the option ofthe Registered Community Design (RCD) system, which is valid throughout the EU. Community designs are obtained by applying to the European Union Intellectual Property Office (EUIPO), and it is a powerful system in which a single registration extends design rights to the entire EU (currently 27 countries), including France. Regarding consistency between French domestic law and the EU community design system, the substantive requirements of each country are harmonized under the EU Design Protection Directive (98/71/EC). Therefore, the definitions, requirements, protection period, etc. of French Design Law are almost in line with EU regulations, and there are no differences between French domestic designs and Community designs, such as the criteria for determining novelty/uniqueness and the maximum duration of 25 years. Therefore, in practice, there is basically no need to file a double application for French local design protection and EU-wide design protection, and you will have to choose one or the other depending on the scope you want to protect. For example, if the market for your design is limited to France or if you want to keep costs down, you may choose to apply for a French design (starting at about 39€), and if you plan to sell your product throughout Europe, you may choose to apply for a Community design (basic fee starts at 350€). If you obtain a Community Design, there is no need to register it separately in France (it will automatically be protected in EU member states, including France). Conversely, even if you only have design rights in France, if you want to monopolize the design within the EU, you will need to consider acquiring rights in other countries (community design or national application).

Also, the EU has the aforementioned Unregistered Community Design system (3-year protection), and in some cases, you can automatically obtain a certain level of protection just by publishing your design in France. Although unregistered designs are limited to eliminating counterfeit products, they are of practical importance in rapidly changing fields, such as the fashion industry. Although there is no system for unregistered designs in Japan, when French companies expand into Japan, they should be aware that if they forget to obtain design rights in Japan, they will be vulnerable.

As described above, while the French design system has a complete protection system on its own, it is organically incorporated into the EU-wide system and the international system. In the next section, we will summarize the main commonalities and differences between the French and Japanese design systems in a table.

Comparison of design systems in France and Japan

Finally, we present a table comparing the important points of French and Japanese design systems. Please understand the characteristics of each system and use it as a reference when formulating a global design protection strategy.

It also includes the design of

Item	French design system	Japanese Design System
Protected target	Exterior design of the product (industrial product/handicraft product) (including part of the product). A form derived from lines, shapes, colors, textures, materials, etc. Decorative designs and typography (typefaces) are also protected. * Shapes determined by function only and parts inside composite products that are normally invisible cannot be registered.	goods (tangible objects that can be used in industry) and buildings and images (expanded with the 2020 law amendment). It also includes the combination of shapes, patterns, and colors of parts of articles. *Although there are no explicit exemption provisions in the law, shapes that are determined purely by function are not subject to protection. Designs that violate public order and morals cannot be registered (Article 5 of the Design Act).
Partial design system	By definition, the appearance of a part of a product is also included in the design, but there is no system to give special treatment to only that part. (If you wish to protect a part, file an application with a drawing depicting only that part.)	Partial design system available. It is possible to mark one part of a product with a broken line, etc., and register only that part as a design (even if the whole part is not novel, it is acceptable as long as the part is novel).
Registration requirements	Novelty: There is no identical design known to the public before the application is filed (world standard, exception if self-publication is made within 12 months). Originality (creativity): Giving a overall impression that is different from existing designs (a range of similarities is judged to be non-unique). *Excludes functional shapes and invisible parts.	Novelty: There is no publicly known identical or similar design before the filing (whether domestically or internationally, publicly known or published). If the self-publication is within one year, an exception to the loss of novelty can be applied. Difficulty in creation: A design cannot be easily devised from an existing design (similar designs are considered to be "easily devised" and are rejected). *Even if there are some similarities, it can be registered as long as it gives a different aesthetic impression as a whole (examiner will judge whether it is similar or not).
Examination method	Formality examination only (Only the format of application documents and public order and morals will be examined). Novelty or originality is not examined, and registration is made public approximately 3 to 4 months after application. *Since there is no substantive examination, the validity will be challenged in invalidation trials and infringement lawsuits after registration.	Substantive examination included (The Patent Office examiner examines similarities with prior designs and ease of creation). Examination results are available on average in 6 to 12 months. If there is no reason for refusal, the registration will be granted and the registration will be established and a gazette will be published. *If you are dissatisfied with the refusal, you can appeal. Even after registration, interested parties can request an invalidation trial to the Japan Patent Office.
Application method	Electronic filing with INPI (French Industrial Property Office). Submit the applicant's name and address, drawings/photos of the design, etc. One application can include up to 100 designs (within the same Locarno classification). *Representative: If the applicant does not reside in France, a French representative must be appointed.	Filing online or in writing with the Japan Patent Office (JPO). Submit applicant information, application form, drawings, etc. In principle, one application, one design (similar designs must be filed separately under the related design system). There is basically no system for filing multiple designs at once. *Representative: Those residing outside of Japan must appoint a Japanese patent attorney, etc. as their representative (in accordance with the Patent Law Enforcement Regulations).
Fees/maintenance costs	Application fee: 39€ (basic fee). **Initial registration fee: **Five years' worth is included in the application fee. If you wish to register for 10 years, add +52€. **Drawing submission fee: **Additional 23€ for each black and white item, 47€ for each color item. **Renewal fee:** From the 6th year onward, pay the prescribed renewal fee for each 5-year extension (e.g. 5-year extension = around 52€). Extendable up to 25 years.	Application fee: 16,000 yen (electronic application). **Registration fee (at the time of setup registration): **8,500 yen for the first year (2-3 years can be paid in advance). **Pension (maintenance fee): **From the 4th year onwards, 16,900 yen will be paid annually (revised fee in 2020). *For applications before 2020, the old fee system applies (20 years from registration). Currently, the standard is 25 years from the date of application.
Publication grace system	Publication extension (deferment): Publication in the design gazette can be postponed for up to 3 years upon request at the time of filing. During the non-disclosure period, the design content can be kept secret from third parties. Automatically published at the end of the period.	Secret design system: If requested at the same time as the application, the design can be kept private without being published in the design gazette for a maximum of 3 years from the date of registration. A public notice will be issued after the secrecy period has passed. *The basic information of the application will be made public even when a secret design request is filed (only the details of the design will be made public).
Duration of life	5 years (or 10 years) + renewal. The initial registration period is 5 years (10 years upon request). After that, you can pay an extension registration fee every 5 years for a maximum of 25 years. *Rights expire after 25 years. It may be protected by copyright.	25 years lump sum. Expires 25 years from the filing date (applications filed after April 2020). *Under the old law, the period was 20 years from the date of registration, but the current law extends it to 25 years. If you fail to pay your pension at any point, your rights will be forfeited at that point.
Scope of rights	The commercial exploitation of a design (regardless of the type of product) that gives an impression of being the same or not different from the registered design constitutes infringement. *Design rights are absolute exclusive rights to the appearance of a product, and the scope of protection also includes designs similar to industrial designs.	A registered design or a design similar to it is an infringement if it is used commercially (Articles 23 and 24 of the Design Act). *Whether or not it is "similar" is determined comprehensively based on the aesthetic appeal that attracts the attention of consumers. Even if the purpose or function of the registered design and the product are different, it can be considered an infringement if the design is similar in appearance (recent legal amendments have made it clear that the design is similar to other products).
Jurisdiction for infringement proceedings	Specialized District Court has jurisdiction (designated courts such as Paris and Lyon). Infringement of Community designs falls under the exclusive jurisdiction of the Paris Court of Justice. *In civil litigation, grounds for invalidity can be examined at the same time.	**The civil division (specialized intellectual property division) of the district court (Tokyo, Osaka, etc.)** has jurisdiction of the first instance. The appeal court is the Intellectual Property High Court. *Request for invalidation trial to the Japan Patent Office (appeal to the Intellectual Property High Court). When claiming invalidity in an infringement lawsuit, the court usually waits for the patent office's decision unless the patent is clearly invalid.
Exercising rights/remedies	Request for injunction: Preliminary injunction (infringement prohibition order) can be obtained. If the case is successful, an injunction will be issued as the main remedy. To ensure compliance, it is also possible to impose a fine of ○€ per day of violation. Damages: Calculated by taking into account the actual loss (loss of profits, etc.), as well as the profit earned by the infringer and the amount equivalent to the license fee. The court will appoint an expert witness as necessary to assess the amount of damages. Evidence collection: Infringing products can be seized and identified before litigation using the security control system. Criminal penalty: Imprisonment of up to 3 years and fine of up to 300,000 € (up to 1.5 million € for corporations) for intentional infringement. Customs injunctions and criminal charges can also be used.	Claim for injunction: An injunction based on a preliminary disposition or judgment on the merits to prevent or stop infringement. There is also a system of indirect coercion (money per day) in civil litigation. Compensation for damages: Article 38 of the Design Act applies to Article 105 of the Patent Act (estimated amount of damages). Calculated based on lost profits, the infringer's profits, or the amount equivalent to license fees. You can also claim compensation for attorney's fees, etc. within a certain range. Evidence collection: Respond by ordering document submission, expert opinion, petition for verification, etc. (Japan's own infringing product protection system is not yet in place). Criminal penalty: Applicable up to 10 years' imprisonment and a fine of up to 10 million yen (for corporations, up to 300 million yen). In recent years, it has become a crime of non-reporting and has been investigated by the competent authorities.

*Source: French design system, etc., Japanese design system, etc.

From the above comparison, it can be seen that while the French and Japanese design systems share the same basic framework (objects of protection, term, etc.), there are differences in the flexibility of examination methods and procedures. In particular, France (EU) uses non-examination-free registration, which is quick and low-cost, while Japan takes a contrasting approach, aiming for stability of rights through substantive examination. In addition, regarding the international use of design protection, France is able to provide wide and efficient protection through the EU Designs and the Hague Agreement, and it is important for Japanese companies to make good use of both their home country and Europe's systems. Based on the above knowledge, in practice, it is desirable to compare the merits and demerits of each system and construct a rights acquisition plan that is suitable for your company's design strategy.

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).

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