Design rights are a powerful weapon to legally protect product designs. However, there are many pitfalls in its use, and there are no shortage of voices of regret, such as, ``If only I had filed the application sooner'' or ``If only I had obtained the rights this way.'' In this article, we will use case studies to introduce failure patterns that often occur in practice, and consider lessons to avoid making the same mistakes.

Case 1: Loss of novelty due to "inadvertent disclosure" at a presentation

What happened

Designer A of a home appliance manufacturer has developed a humidifier with an innovative design. It was well received within the company, and we decided to show it off at an industry exhibition. The exhibition was a great success. It attracted the attention of many buyers and became a hot topic on social media.

However, the design application procedure was scheduled for ``after'' the exhibition. Once a product is exhibited at an exhibition, the design becomes "publicly known" and, in principle, loses its novelty.

What went wrong

Under the Design Act, as a general rule, designs that have been made public before the application is filed cannot be registered because they lack novelty. In Japan, there is an "exceptional provision for loss of novelty," and although relief may be granted under certain conditions, there are strict requirements for this procedure. Specifically, an application must be filed within one year of publication and a document certifying the fact of publication must be submitted.

In Mr. A's case, he did not know about the existence of this exception, so he filed the application without following the necessary procedures, and later received a notice of reasons for refusal.

Lessons learned

If you have any plans for product announcements, exhibitions, or press releases, it is a golden rule to complete your design application ``before'' the event. If the publication must be delayed, it is necessary to check in advance the requirements for applying the exceptions to loss of novelty, and to complete all necessary procedures. Also, be careful if you are thinking of expanding overseas. Requirements for exceptions to loss of novelty differ depending on the country, and some countries do not allow exceptions in the first place.

Case 2: Imitation is allowed in an application with only "overall design"

What happened

Stationery manufacturer B has developed a ballpoint pen that has a unique grip. The grip has a distinctive wave pattern, which received high praise from users. Company B applied for a design for the entire product and successfully registered it.

However, a few years later, a competitor, Company C, released a product with a similar grip pattern. Company B claimed infringement of its design rights, but since the overall shape of Company C's product was different from Company B's product, it could not be recognized as "similar" and could not enforce its rights.

What went wrong

When determining the similarity of designs, the aesthetic appearance of the entire article is compared. What Company B had registered was a design for the "entire ballpoint pen," and not just the grip part that was cut out to protect it. Company C avoided similarities overall by using similar grip patterns but changing the shape of the clip and the design of the nib.

Lessons learned

If a specific part is the source of a product's competitiveness, you should consider filing a "partial design" application. A partial design is a system in which only a part of an article is subject to design registration, and if the parts are similar, you may be able to claim rights even if the surrounding shapes are different. If Company B had also applied for a partial design for the grip, there is a high possibility that it would have been able to exercise its rights over Company C's product.

Case 3: Developing variations without knowing the "related design" system

What happened

Furniture manufacturer D has applied for and registered a basic design for a popular series of chairs. After that, we released a series of products with different color variations and materials, but we did not file additional applications for them because we thought that they were similar and would fall within the scope of our rights.

However, a competitor, Company E, releases a chair with a design similar to Company D's variation product. When Company D claimed infringement, Company E countered by saying, ``It is dissimilar to the registered design, and Company D's variation product itself is unregistered, so it can be used freely.'' As a result of the trial, it was determined that Company E's product was not similar to the registered design, and Company D lost the case.

What went wrong

The effect of a design right extends to designs that are "same or similar" to the registered design. However, the range of similarities is not necessarily wide. Company D believed that variations that were slightly different from the basic form were naturally protected, but if the variations were near the boundaries of the similarity range, competitors could imitate them just outside of them.

Lessons learned

Japan's Design Law has a "related design" system. This is a system in which a design similar to the main design (the basic design) can be protected as a separate and independent right by filing and registering it as a related design. By using related designs, each variation of a design can have its own rights, making it possible to cast a wider net of protection. When developing your product lineup, consider strategic use of related designs.

Case 4: Unexpected loophole due to mistake in identifying "goods"

What happened

Company F, a venture company, has developed a table lamp with an innovative design and has filed a design application. The product name was registered as a "desk lamp."

Later, competitor G released a product with almost the same design, but it was sold as an "aroma diffuser." Company G claimed that although it has a luminous function, its main use is to diffuse fragrance.

What went wrong

Under the Design Act, a design is defined as the shape, etc. of an "article." In determining the similarity of designs, the identity and similarity of articles is also taken into consideration. Company F's "desk lamp" and Company G's "aroma diffuser" may be judged to be dissimilar products from the perspective of usage and function, and if that is the case, no infringement of design rights can be brought against them even if their shapes are very similar.

Lessons learned

If a design is expected to be imitated, a design application should also be considered for articles that can have the same shape. In addition, the scope of protection has expanded to include "interior designs," which were introduced in the 2020 revision of the Design Law, and "image designs" and "architectural designs," which do not fall under articles, so it is important to consider from multiple angles which category your company's designs can be most effectively protected in.

Case 5: Expiration of "priority" when expanding overseas

What happened

Apparel brand H has filed a design application in Japan for the design of a new bag. After that, it was decided to sell the product in European and Asian countries, but the overseas design application procedures were put on the back burner.

Eight months after filing the patent application in Japan, Company H finally begins preparations to file the patent application overseas, and is told a shocking truth by its patent attorney. The priority claim period for designs is only 6 months, unlike patents and trademarks (12 months). The deadline had already passed and priority could not be claimed.

As a result, the product was on the market within eight months of filing in Japan, and this fact could become prior art that would deny novelty in each country.

What went wrong

The priority system based on the Paris Convention is a system in which applications to other member countries can be examined based on the first filing date within a certain period of time from the first application. However, the priority period for designs is as short as 6 months, and if you treat it in the same way as the 12-month period for patents and trademarks, you will miss the priority period.

Lessons learned

For products that have even the slightest idea of ​​overseas expansion, you should set up a schedule for overseas filing at the same time as filing in Japan. A six-month priority period for a design is by no means long, considering the translation and local agent arrangements. Additionally, by utilizing the Hague Agreement (International Design Registration System), you can request protection in multiple countries with a single application, making the process more efficient.

Case 6: Insufficient "confidentiality" before filing

What happened

Startup I jointly developed the design of an innovative wearable device with external design firm J. During the development process, the person in charge at Company J posted the design proposal on social media (although the company name was withheld, the characteristics of the design were clearly visible).

Company I learned of this fact after the design application was filed. During the examination process, this SNS post was cited as a publicly known document, and I received a notice of reasons for refusal stating that it lacked novelty.

What went wrong

In the case of joint development or outsourcing, secret management of design cannot be completed by the company alone. If an external collaborator unintentionally (or intentionally) publishes the design, the novelty is lost. Even if a non-disclosure agreement (NDA) is signed, the fact that novelty is lost once it is made public is not covered.

Lessons learned

When collaborating with outside parties, it is necessary to not only conclude a confidentiality agreement but also to clearly document and thoroughly disseminate rules such as ``what and how much can be disclosed'' and ``no posting on SNS etc.''. Additionally, for important designs, it is ideal to be aware of the timing of design applications from the early stages of development, and to complete applications before the risk of publication arises.

Summary: Tips for successful design strategy

The common lesson that emerges from these cases is that "forward-looking planning" is essential when utilizing design rights.

Firstly, the "timing of application" is extremely important. As a general rule, applications should be completed before publication, and applications should be planned by counting backwards from the schedule for exhibitions, presentations, product launches, etc.

Secondly, strategically design the scope of rights. By combining not only the design of the entire product, but also partial designs and related designs, you can create a lineup that makes it difficult for imitators to slip through the web of rights.

Thirdly, have a "global perspective". Design law systems differ depending on the country and the priority period is short, so early strategic planning is required with an eye to overseas expansion.

Fourth is "internal and external collaboration." The key to preventing problems is for the design department, intellectual property department, marketing department, and external partners to share information and have a common understanding of the timing of design applications and confidentiality management.

Obtaining a design right is not the end; it is just the beginning. By acquiring the right rights at the right time and leveraging them in conjunction with your business strategy, you can make the most of the intangible asset that is design.

If you have any questions or would like to learn more about a particular issue, please feel free to ask. It is also possible to simulate scenarios similar to individual cases.

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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