[Patent Attorney Commentary] Protect “Instagram-worthy” products by registering a design! Countermeasures against counterfeit products and brand strategy in the SNS era

The biggest opportunity for modern business is for your products, packaging, or store interiors to become a hot topic and go viral on social networking sites such as Instagram and TikTok.

However, what would you do if one day your ``design that stands out'' was suddenly copied by another company?

"Despite our design, we put a lot of thought into it, but cheap copy products have been sold."
"A shop has opened nearby that looks exactly like the interior of our cafe."

These kinds of troubles occur frequently because of the speed at which things spread on SNS.

What is important here is the legal method called "design registration".
This time, we will thoroughly explain from a patent attorney's perspective why "Instagrammable" and "design" are closely related to "design rights," which are essential for protecting business in the SNS era.

1. Why does “Instagrammable” need legal protection?

In the past, the value of a product was centered on its "functions" and "performance." However, nowvisual appeal (design) has become a major factor in determining consumer purchasing behavior.

SNS diffused light and shadow

Insta-worthy products have the potential to gain explosive recognition without spending on advertising, as users voluntarily take photos of them and share them. However, this is also a double-edged sword.

The fact that people all over the world see your design means that it also catches the attention of ``malicious imitators''. In particular, products that sell based on design alone are extremely easy to imitate (copy) because they do not require complex technological development. The speed at which products are instantly manufactured in overseas factories such as China and sold as "cheap knockoffs" on Amazon and Rakuten in Japan is accelerating year by year.

``Registering after it becomes popular'' is slow

What many business owners tend to fall into is thinking, ``I'll think about it after it sells.'' However, in the world of intellectual property, there is a major principle called ``first-to-file'' (first come first served). Furthermore, "novelty" (not known to the public) is required for design registration.

In order to protect your company's "high-quality" assets, it is necessary to develop an intellectual property strategy from the product release stage or development stage.

2. What is a design registration? Difference with copyright

"Isn't a design protected by copyright?"
There are many people who think so, but it is dangerous to rely on copyright to protect product designs in business.

Design rights = Exclusive rights to "appearance"

Design rights are the rights to protect the design (aesthetic appearance) of an article, such as its shape, pattern, and color. Once an application is filed with the Japan Patent Office and registered after examination, the design can be used exclusively and has strong authority to exclude counterfeit products.

• Patent rights:Protects technical "inventions" (functions, structures, etc.)
• Trademark rights:Protects "brand marks" such as product names and logos
• Design right:Protects the “design (appearance)” of an article

Why can't copyright protect it?

Copyright is a law that protects "cultural products" such as paintings, music, and novels. On the other hand, the general legal interpretation is that designs for "mass-produced industrial products" such as T-shirts, furniture, stationery, and automobiles are, in principle, unlikely to be subject to copyright protection (applied art).

Even if you sue for copyright infringement because your design was copied by another company, there are many cases where your claim is dismissed on the grounds that it is a practical product and not a copyrighted work.

3. "Spatial design" is also subject to protection! 2020 Law Amendment

What cannot be avoided when talking about "Instagrammable" is the revision of the Design Law on April 1, 2020 (Reiwa 2). This revision dramatically expanded the scope of protection and evolved the system to suit the business environment of the SNS era.

Store interior/building design

Until now, "buildings" and "interiors" that are real estate were not subject to design registration. However, due to the revision, designs for "buildings" and "interiors" can now be registered as designs.

• Characteristic interiors of cafes and restaurants
• Photogenic wall design
• Flagship store exterior that embodies the brand's worldview

These came to be protected as "design rights."
For example, let's say that a cafe chain has created a photogenic space with a unique lighting arrangement and counter shape. By registering this design, you can prevent competitors from opening stores with similar interiors.

Image design (UI/UX)

Images themselves, such as smartphone app screens and website operation screens, can now be registered separately from the item (hardware).
The app's user interface (UI), which is easy to use and looks beautiful, is the face of the service. This will also be protected as important intellectual property.

4. Three business benefits of registering a design

Incurring the cost of registering a design has business benefits beyond mere "defense."

Advantage 1: Strong counterfeit product exclusion (injunction/damages)

The greatest effect of a design right is that it allows counterfeit manufacturers to be injuncted to stop sales and to claim compensation for damages.
Determination of infringement of design rights is based on whether the designs are similar in appearance, so in many cases it is relatively easy to prove infringement compared to patent litigation, which involves highly technical disputes.

In addition, if a counterfeit product is sold on an e-commerce site such as Amazon or Rakuten Market, by presenting the design registration certificate to the platform and reporting infringement, there is a higher possibility that the product will be promptly suspended. This is a huge asset for online sales businesses.

Advantage 2: Improving brand value and gaining trust

Displaying ``design registered'' sends a message that ``we take pride and responsibility in the design of our products.''
At the same time, it gives consumers a sense of security that the product is genuine, and at the same time builds trust with business partners and investors that the company is a company with strong compliance that emphasizes intellectual property.

Advantage 3: Building a barrier to entry (preemptive strike)

If you own a design right, your competitors will not be able to create products with similar designs.
It's like creating a "no-go zone" around your designs. By creating a situation where rival companies are forced to change their designs, you can maintain your market advantage.

5. Intellectual property strategy techniques in the SNS era

Here, I would like to introduce three advanced design strategies that match the modern sense of speed that I recommend as a patent attorney.

Technique 1: Hide the design until the release date with a "secret design"

In principle, once a design is registered, the contents will be published in the Design Gazette and anyone can see it. However, if a design is made public before a new product is released, there is a risk that it will be imitated, and the effect of the surprise announcement on SNS will be diminished.

This is where the "Secret Design System" can be used.
You can keep the contents of your design secret for up to 3 years after registration. This makes it possible to implement a strategy of ``while securing the rights, the announcement to the world should be made at the same time as the release date.'' This technique is essential in the apparel and miscellaneous goods industry, where trends change rapidly.

In design registration, the "drawings (or photographs)" attached to the application are the most important element in determining the scope of rights.
The thickness of the line, the way it is drawn, or the way it is omitted can make the range of rights wider or, conversely, become so narrow that it becomes unusable.

In particular, "partial design" and "interior design" require advanced judgment, such as which parts should be drawn with solid lines and which parts should be drawn with broken lines. It takes specialized know-how to analyze from a legal perspective what's interesting about an Instagram-worthy design and create the optimal drawings.

② Accuracy of prior design search

Even if you apply, if a similar design has already been registered, it will not pass the examination. There is also the risk of infringing on the rights of others.
Patent attorneys use a dedicated database and many years of experience to conduct highly accurate precedent design searches. This will reduce unnecessary application costs and increase your chances of registration.

③Strategy proposal that looks at the entire business

Simply "registering" is not the only goal. A patent attorney's strength is that they can propose an ``intellectual property mix'' that combines not only designs but also trademarks and patents, depending on the business strategy, such as ``in which country should the product be sold?'' ``Will there be a series?'' ``How long should the product be monopolized?''
For example, the shape of a product can be protected with a ``design,'' the product name can be protected with a ``trademark,'' and the special internal structure can be protected with a ``patent.'' By defending from multiple angles like this, you can build a strong wall that is impossible for your competitors to conquer.

Summary: Design becomes an asset if you protect it

A design that looks great on Instagram is the result of your company's passion and efforts. It would be an unbearable loss for a business to have it imitated in an instant and be deprived of profits.
In this age where things are spread through SNS, it is essential to be aware of "protect before showing".

• We are planning to release new products
• We are particular about the interior of the store
• Our products are starting to become a hot topic on SNS

If any of the above apply to you, please consult a patent attorney before any trouble occurs.
Get the "strongest value" of design rights and expand your business with peace of mind.

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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