Subjects and definitions of design rights
Definition of a design in Germany and the EU: According to the German Design Act (Designgesetz), a "design" refers to "the appearance of the whole or part of a product (an article manufactured industrially or by hand)" and its appearance consists of visual features such as lines, outlines, colors, shapes, materials, and patterns. In other words, the concrete shape, pattern, and color combination of a product are protected, and abstract ideas and concepts themselves are not protected. "Products" include not only industrial products, but also handicrafts, packaging, graphical symbols (shapes such as icons), and typography (typefaces). Furthermore,a part of a product can also be registered as a design; for example, the sole of a shoe or the cap of a pen can be protected as an independent design. It is understood that the external design of a building is also included in the scope of protection as a type of article (under the EU definition, "buildings" are also considered industrial products). On the other hand, **shapes that are purely dependent on function (those that cannot assume any other shape due to their functionality)** and designs that violate public order and morals, such as national emblems and flags, will not be allowed to be registered.
Definition of design in Japan: Similarly, under the Japanese Design Act, shapes, patterns, and colors (or combinations) of articles that create a sense of beauty through the sense of sight are subject to protection (Article 2 of the Design Act). In Japan, the scope of protection was expanded in 2020 with the revision of the law, and in addition to the conventional "articles" (including their parts), they now include "buildings" (including their parts) and "images." The term "image" here refers to the screen design (GUI, etc.) displayed by the operation screen or function of an electronic device, and graphical user interfaces, etc., which could previously only be protected as an accessory to an article, can now be protected as a standalone design. Furthermore, a category unique to Japan, ``Interior Design'', has been added. This is a system that protects the unified design of a store or interior space (furniture arrangement and overall aesthetics of the interior) as a single design. On the other hand, the Japanese Design Act also prohibits registration of designs that violate public order and morals, or that include other people's works or portraits (Article 5 of the Design Act).
In summary, Germany, the EU, and Japan all protect ``specific designs of articles, etc.'', and it is also possible to protect partial designs. However, Japan is unique in that it has its own detailed classification of images, interiors, etc. Furthermore, since the object of protection is limited to ``a sense of beauty that can be obtained through sight,'' it is common that shapes determined purely by function cannot be recognized as designs.
Filing requirements in Germany: Design applications in Germany are filed with the German Patent and Trademark Office (DPMA). The basic required documents are (1) an application form (Form R5703, German) containing the applicant's information, and (2) a drawing or photograph representing the design (an image file that meets the format requirements). JPEG format for electronic applications, pasted on the designated paper for paper applications) up to 10 items; (3) the name of the product in which the design is used (Indication of item; enter the applicable name from a predetermined vocabulary list); In principle, the application language is German, and the documents are also in German format. If you apply directly from Japan, you will need to appoint a local representative (patent attorney or lawyer) as you do not have a residence or business office in Germany. Electronic filing (DPMAdirektWeb/Pro) is recommended, and online applications can accommodate up to 20 designs. In the case of a paper application, you can apply for up to 100 designs at once (Multiple Design Batch Application system, described below), in which case information for each design will be entered on an additional sheet (R5703.2).
Requirements for drawings and images (Germany/EU): There are strict formal requirements for drawings and photographs of designs submitted. Draw only the design seen from one perspective in one image, and do not combine multiple variations into one drawing. In addition, only the design must be shown on a plain and neutral background so that unnecessary objects other than the design (such as other objects in the background, explanatory numbers and letters, etc.) are not reflected. Images must have a resolution of at least 300 dpi and 355 x 355 pixels, and each file must be less than 2 MB. The drawings can be actual photographs or CGs, but any parts that are not visible in the drawings submitted at the time of application will not be protected, so it is important toprepare sufficient drawings from multiple angles so that the features you want to protect can be clearly seen. For example, for three-dimensional objects, you can submit up to 10 drawings as necessary, including the main six-sided drawings and perspective views. Colors also affect the scope of protection as shown in the drawings (in the case of black and white drawings, it is understood that colors are not claimed).
Application requirements in Japan: In Japan, when filing a design application with the Patent Office, the required documents are (1) application (in Japanese) and (2) drawings, etc.. The application form should include applicant information, the name of the design (name of article or building, purpose of image, etc.), and creator information. In principle, documents should be submitted in Japanese, and explanations of drawings and designs (if necessary) should also be written in Japanese. Regarding drawings, we usually submit a series of views that show the entire design, including six views of the article (front, back, left and right sides, top, and bottom) and, if necessary, perspective views. In Japan, the principle is one application for one design, and there is no system for filing multiple designs at once (the system for related designs described below is treated as separate applications). Therefore, it is necessary to prepare a separate application form and set of drawings for each design. In addition, when filing in Japan, the "name of the article or image related to the design" is written in the application, but this name should be as concise as possible, in line with existing design classifications and common terminology (if the name is inappropriate, you may be asked to amend it). Similar to Germany, drawing requirements must be clear drawings that do not include other items or characters, and in the case of partial designs, it is permitted to indicate non-claimed parts with dashed lines, etc. In Japan, photographs and CG are also accepted in place of drawings, but line drawings are considered preferable in examination practice because they make it easier to understand the shape.
Application language/electronic filing: Design applications to Japan are basically filed in Japanese, and if filed in a foreign language, a Japanese translation must be submitted. On the other hand, if you apply for a Common European Design (RCD) directly to the EUIPO, you can use EU languages such as English (Japanese companies usually apply in English). As mentioned above, German domestic designs are generally written in German. However, when using the Hague International Application (described below), it is also possible to file in English or French and specify Germany or Japan.
Cost: The application fee for German designs is relatively low at 60 euros per electronic application (70 euros for paper applications), and this is the basic fee if one design is included (if multiple designs are filed at once, there will be additional fees depending on the number of designs). The design application fee in Japan is set at 16,000 yen (for electronic applications) (as of 2023)*. In addition, in Japan, a registration fee is required at the time of registration (a lump-sum payment for the first to three years), but in Germany, the application fee includes protection for the first five years (renewals will be explained later).
In order to obtain a design right, the contents of the design must meet legal protection requirements. The main requirements arenovelty and **originality (creativity)**.
Protection requirements in Germany and the EU: Based on Article 2 of the German Design Act, registered designs must be ``new'' and ``have individual character.'' Novelty means that a design that is identical or substantially identical except for very small details has not been disclosed to the public prior to the filing of the application. Publication here includes making the product publicly available, such as offering it on the market, exhibiting it at an exhibition, or posting it on the web. However, as an exception, there is a grace period for novelty, and if a design is published** by the creator (or successor in rights) within 12 months prior to the application, the design will not be deemed to have lost its novelty. This provision is intended to provide "a one-year grace period to review the market reaction before filing an application." Although there is no explicit grace period for unauthorized disclosure by a third party, it is understood that disclosure under confidentiality obligations (in-house development, secret demonstrations with business partners, etc.) does not constitute disclosure to the public.
"Individual Character" refers to the fact that the overall impression of the design is different from other designs that were publicly known before the application was filed. Judgments are made through the eyes of an ``informed user'' with knowledge in the field and are based on differences in impressions of the design as a whole rather than details. Creative freedom of design is also taken into account, and in fields where there are many similar existing designs (such as wheel rims), even small differences may be recognized as unique. Conversely, fields with a high degree of freedom require more pronounced differences. A high level of artistry or novelty itself is not required, but the requirement is to focus on the difference from existing designs.
In Germany (EU), the Office does not conduct a substantive examination of the above novelty/uniqueness requirements. Even if a design lacks novelty or individuality, it will be registered once, but as described below, these requirements will be reexamined in invalidation trials and infringement lawsuits, and if they are not met, the registration will be determined to be invalid. Therefore, it is important for applicants to apply only for designs that satisfy novelty and individuality at their own risk.
Protection requirements in Japan: Japan also basically requires novelty and difficulty in creation (uniqueness). Novelty is a requirement that a design that is the same or almost the same as a published prior design cannot be registered (Article 3, Paragraph 1 of the Design Act). In Japan, since the 2018 revision, the exception period for loss of novelty has been extended from 6 months to 1 year. As a result, within one year before the filing, an exception to the loss of novelty can be applied to public announcements made by the creator or right holder themselves (presentations at academic conferences, exhibits at exhibitions, posts on SNS, etc.) and exhibits at certain official exhibitions. However, in Japan, **prescribed procedures (submission of application form and certificate for exception application)** are required at the time of application. In this regard, in Germany/EU, self-publication within the period is automatically granted grace without any formalities being required, whereas in Japan there is a practical point to note: if formal procedures are not completed, grace will not be granted.
Easy to create (sophistication) is, simply put, the requirement that the design be "not an ordinary design." Article 3, Paragraph 2 of the Design Act stipulates that ``a design that could easily have been created by a person with ordinary knowledge in the field to which the design belongs'' cannot be registered. This is similar to what is called "individuality (different overall impression)" in Europe, but in Japan, the standard is that a design with only minor differences that can be easily devised from a similar prior design cannot be registered. For example, a design in which the aesthetic appearance is almost the same simply by changing the color or size ratio may be judged to be ``easy to create.'' Judgment criteria are based on the consumer's visual sense of beauty, and a comprehensive evaluation is made by comparing the main differences with the previous design and the overall impression. Basically, even in Japan, it is similar to the EU's individuality requirements in that it looks at whether the aesthetic impression given to consumers is different. However, in Japanese practice, there are detailed examination criteria for determining "easiness of conception," and consideration is given to whether the design in question can be created by simple diversion or combination of constituent elements from a group of previous designs. As a result, the conclusion is not significantly different from the EU's "individuality" requirement, but the difference in practice is that Japan strictly checks whether it is easy to create at the screening stage (described later).
Germany (non-examination registration principle): German designs are operated under theformal examination principle (innocent substance examination). After filing, DPMA will first check the formal requirementsand if there are no deficiencies in the application description, drawing format (are the images in accordance with the regulations), fee payment, etc., the registration process will begin immediately. The examiner will judge from the submitted drawings to determine whether it meets the definition of a design (does it have a specific shape rather than just an idea, does it violate public order and morals, etc.). For example, drawings will be rejected if they are too abstract, if they violate public order and morals (such as obscene expressions or shapes that encourage illegal activities), or if they imitate national emblems. However, the substantive requirements of novelty and uniqueness are not examined, and if there are any problems after registration, these will be subject to invalidation trials or litigation. For this reason, the period from application to registration announcement is very short, and if there are no problems with the application and drawings, registration will be completed in about 2 to 4 weeks. If there are any flaws in the method, you will receive a correction notice, but it usually takes a few months (within 3 to 4 months) for registration to be completed. Once registered, it becomes effective immediately, and images and information of the design are published in the electronic registration register (DPMAregister) and the Design Bulletin (Designblatt).
Supplementary information: In Germany, up to 100 designs can be included in one application (however, in practice, the designs must belong to the same product classification. The EU Directive allows the filing of multiple designs belonging to similar product categories, and Germany follows this). Multiple designs filed at once are treated as separate rights even after registration, and each design is renewed individually.
Japan (substantive examination principle): Japanese design applications are determined whether or not to be registered after substantive examination by an examiner at the Patent Office. Approximately a few weeks after filing, a formality check will be conducted, and if there are any deficiencies in the application or missing drawings, an amendment order will be issued. After clearing the formalities, the examiner investigates past registered designs, published application publications, product catalogs, etc., and determines whether the design is novel or whether it can be easily devised from similar prior designs. If necessary, a Notice of Reasons for Refusal will be issued, and the applicant will respond with written opinions and amendments (for example, deletion of some drawings or limitations). If the deficiencies in the requirements are still not resolved, a decision of refusal will be issued, and if it is determined that the requirements are met, aDecision of Registration will be issued. A design right will only be granted after the registration is approved and the prescribed registration fee (establishment registration fee) is paid. The examination period in Japan has become faster in recent years, but the primary examination results tend to be notified in approximately 6 months to 1 year (this varies depending on the field of the project and the busy season). In Japan, there is no examination request system for designs, and once you file an application, it will be automatically examined (unlike patents, no request is required).
Designs that are registered through examination will be published with drawings in the Design Gazette. However, Japan has a Secret Design System, which allows you to keep design details (drawings, etc.) private in the gazette for up to three years from the date of registration if you wish (during which time, only bibliographic data such as application number and filing date will be published). Design rights still accrue during the period of secrecy, but since the design is not made public, there are restrictions on the enforcement of rights against third parties (for example, against independent creations, no action can be taken against secret designs, and proof that the design is an imitation is required). Once the design is published after the three-year grace period ends or at any other time, rights can be exercised as usual from then on. It is similar in purpose to Europe's deferment system, and is a means for companies to coordinate the publication of designs to coincide with the release of new products.
Advantages and disadvantages of whether or not there is an examination: Although the German (EU) system without an examination allows for the acquisition of rights quickly and inexpensively, it can be said that the stability of rights is low (risk of invalidation later) as designs of dubious novelty are registered once. On the other hand, in the substantive examination system like Japan, although it takes time and money to obtain rights, registered designs are highly reliable as strong rights because their novelty and originality are guaranteed. In recent years, there have been opinions in Japan for a quick and inexpensive registration system to meet the needs for protection of designs, but the system with examination has been maintained. As you can see, the process from application to registration is very different between the two countries, which also affects the application strategy (see practical points below).
Creation and duration of rights: German design rights (registered designs) arise on the date of registration and have an initial protection period of 5 years. Thereafter, the term can be extended by paying a renewal fee every five years, up to a maximum of 25 years from the filing date (priority date). Specifically, you have to pay a renewal fee every 5 years, and it can be extended for up to 5 years x 5 terms = 25 years. If you do not renew, your rights will expire at that point. In Germany, even if multiple designs are registered at once, a renewal fee is required for each design. On the other hand, after the revision that took effect in 2020, Japanese design rights will last for a maximum of 25 years from the filing date (before the revision, it was 20 years from the registration date). In Japan, you pay a set-up registration fee for the first few years (usually 1 to 3 years) at the time of registration, and then maintain it until the 25th year by paying an annual annuity (equivalent to a patent annuity). For example, as of 2025, 8.50 each for the 1st to 3rd years.The system is to pay 0 yen and 16,900 yen each year from the 4th year onward. It expires if you pay up to the 25th year, and there is no further extension system (design rights cannot be renewed). Thus,the maximum term of rights is 25 years, the same as in Germany/EU/Japan, but there is a difference in the pension payment cycle (every 5 years vs. annually).
Scope of effect of design rights: Registered design rights are exclusive rights, and only the right holder can commercially use the design (manufacture, sale, import/export, etc.). If a third party uses the design without permission, it will constitute infringement of design rights. In the case of Germany (EU), the standard for determining infringement depends on whether the design is the same as the registered design or does not give an informed user a different overall impression. In other words, if the visual impression is substantially the same as the registered design, even if the details are slightly different, it can be considered an infringement. For example, a different color or a small change in shape will be considered an infringement if the overall impression does not change. In Japan, the idea is similar, and the law stipulates that the effect of design rights extends to "registered designs and designs similar to them**" (Article 23 of the Design Law). Here, "similar designs" refers to a range of designs that share a common aesthetic from the consumer's perspective, and is determined by comprehensively taking into account the purpose, function, shape, etc. of the product. In short, In both Japan and Germany/EU, if a third party creates a product with a design that is almost the same as the registered design, it will be an infringement. The difference in expression between the two is that in the EU, ``they do not give different impressions to users who have the information,'' and in Japan, ``they are felt to be the same or similar through the consumer's visual sense of beauty,'' but the actual criteria for judgment are similar.
However, There are some points to be aware of when exercising design rights. For example, in Germany/EU, In principle, rights cannot be exercised against designs that have not been published (unpublished or unregistered). As mentioned above, in Germany, designs for which publication has been extended for 30 months only have the effect of "copy protection", and similar designs created independently cannot be injunctioned. Even under the EU design system, in the case of unregistered designs (described below), rights can only be exercised against copies, and rights do not extend to coincidental similarities. Even if a secret design in Japan is made public, it is difficult to claim rights even if someone else makes the same design without knowing it.
Right enforcement (infringement response): If infringement of a design right is discovered, the right holder can request an injunction (suspension of production or sales, disposal of inventory, etc.) or claim for damages against the other party. In Germany, it is possible to request an injunction to stop infringement through civil litigation, and damages can also be awarded if there was intentional or negligent action. In addition, if the design right is common within the EU (joint consent design), an injunction can be obtained in each country's court (a court with jurisdiction over design rights infringement designated in each member state) with the effect area covering all EU member states. In Japan, infringement of design rights is subject to civil injunctions and compensation, and malicious infringement is also subject to criminal penalties (up to 10 years' imprisonment or a fine of up to 10 million yen: Article 69 of the Design Act). However, design infringement lawsuits require professional judgment, so in practice, the first step is to request correction through a written warning and then reach a settlement through negotiation. When rights holders discover counterfeit products in product catalogs, exhibitions, etc., they must promptly consider legal action. In addition, it is also effective to prevent the influx of counterfeit products at the border by filing an application for an import suspension (customs suspension) at customs regarding the distribution of counterfeit products across borders (Japan and Germany both have a system for registering design rights with customs).
In general, design rights are powerful exclusive rights, but the interpretation of their scope (similar scope) varies in detail depending on the country and system. The approach is different in Germany/EU, where emphasis is placed on the "overall impression," and in Japan, "similarity is determined based on both the purpose and form of the product," but the bottom line remains that if someone else looks at it and thinks it's a "similar design," it's an infringement.
As Germany is a member of the EU, there are two routes for design protection: German design rights and European Union design (formerly known as Community design), which covers the entire EU. Although each has different jurisdiction, scope of effect, and procedures, they can be used complementary to each other.
German Design: Registered under the DPMA and valid only in the Federal Republic of Germany. The protection period and requirements are as mentioned above, with a maximum of 25 years, registration without examination, and the ability to extend publication. Suitable if you want to expand your business only in Germany or if you want to keep costs down. Since the application is a domestic procedure conducted in German, it is necessary to have a representative in Germany. However, because registration is extremely quick, it is also useful when you want to obtain rights in a short period of time in conjunction with the release of a product.
European Common Design (RCD): A design right obtained by filing an application with the EU Intellectual Property Office (EUIPO, headquartered in Alicante, Spain), which has collective effect in all EU member countries. The biggest advantage is that you can cover all 27 EU countries, including Germany, with a single registration. The language of the procedure is an EU official language such as English, making it easy for Japanese companies to use it as well. Examination at EUIPO is essentially an unexamined registration, and registration can be completed within a few days to a few weeks at the earliest. The duration and renewal are the same as in Germany in that the license is renewed every five years up to 25 years. The cost starts from around 350 euros per design for the initial application, and becomes cheaper for the second and subsequent applications if multiple designs are filed at once. It is possible to file a bulk application to the EUIPO for up to 100 designs, but all designs must belong to the same Locarno classification (same product category)**.
Unregistered Community Design: The EU has a unique system calledUnregistered Community Design (UCD). This is a three-year limited right that arises automatically upon publication of a design and is valid throughout the EU from the moment a new design is first published within the EU. Because it provides short-term protection without registration procedures or costs, it is used forproducts with short lifecycles such as trendy fashion and seasonal products. However, the UCD is limited to injunctions against copies and cannot be enforced against independently created similar designs. The term cannot be extended and will expire after three years. On the other hand, there are no unregistered design rights in Japan. If the grace period from design publication to application has passed, it will not be possible to obtain rights. Therefore, in Europe it is possible to have a strategy of publishing → obtaining UCD → filing within one year if necessary, but in Japan, it is always necessary to carefully handle publication before filing.
Choosing between German and EU designs: Rights limited to Germany are cost-effective, but have a narrow scope of protection and are not valid in other countries. EU designs can be protected broadly, but the application and administration costs are somewhat higher. In addition, in terms of language and procedures, for example, companies that are not familiar with German may choose EUIPO, where procedures can be conducted in English. In practice, the choices are EU designs if doing business in multiple countries including Germany, and domestic designsif doing business only in Germany. However, it is possible for both to coexist, and it is possible to register the same design twice as a German design and an EU design (although it would be less cost-effective). Although the EU design system was revised in 2025 and the name changed to "European Union Design", the essential system remains the same.
In addition to filing in each country, there is also the International Design Registration System under the Hague Agreement as a way to obtain design protection overseas. Both Germany and Japan are member countries of the Hague Agreement, so you can take advantage of this system.
The Hague International Design Registration System: The Hague Agreement is an international registration system under the jurisdiction of WIPO.Up to 100 designs can be designated in one international application, and currently more than 80 countries can be designated (EU member states can be selected together as one designation). Applications should be filed in English or French (or Spanish), and the International Bureau of WIPO will handle the procedures with the offices of each designated country on your behalf. Applicants may file an international application either through their national office or directly with WIPO online. For example, if a Japanese company uses the Hague system and specifies "EU, US, China, and South Korea," a single English application will be treated as a design application for each of these countries. An examination will be conducted in each designated country, and if there are no reasons for refusal, protection will be granted within six months to several years from international publication. Germany and EUIPO can also be designated in The Hague, so if a Japanese company wants to obtain a design in Germany, they can designate "Germany" in the Hague instead of filing directly with DPMA in German (in this case, the language can be English). The effect of a Hague application is that you obtain the same rights as filing a regular national application in a designated country.
The advantages of the Hague system are that it allows a single point of contact for procedures and reduces costs and effortas a whole. For example, if you specify multiple countries, the total application fee may be lower than if you apply to each country individually. In addition, there is no need for translation into each language (the application only needs to be submitted in one language), so there are no translation costs. Internationally filed designs are published in the WIPO Bulletin (International Design Bulletin), but you can also choose to defer publication for up to 30 months, similar to the EU design system and Germany.
Please note that if you are notified of reasons for refusal by the office of each country after filing the Hague application, you will need to respond to each case individually (you can voluntarily appoint a local representative to respond). Additionally, if Japan is designated, since Japan has a one-design system, international applications containing multiple designs will be treated as divided examinations, and as a result, each design will be registered in Japan. Although it is not a panacea because there are system differences between countries such as Europe and the United States, it is extremely useful for acquiring a wide range of rights.
For example, if you want to obtain a design right in both Germany and Japan, you can consider either (1) filing an application in Japanese with the Japan Office and a separate application in German with the German Office, or (2) simultaneously designating Japan and the EU (or Germany) under the Hague System. In recent years, Japanese companies have been increasingly using The Hague, and Japan is one of the top user countries according to WIPO statistics. When filing a Hague application, Japanese companies can apply through their home country (Japan Patent Office), and German companies can apply online through DPMA or directly to WIPO. In summary, the Hague System is a tool that simplifies simultaneous multi-country filings, and is an option that you should definitely consider when planning a design strategy for multiple regions such as Germany, Europe, and Japan.
Finally, we will explain some important points regarding business matters regarding design applications and patent acquisition. We will discuss the common points and differences between Japan and Germany, such as how to prepare drawings, the timing of filing, and the relationship with information disclosure.
Clear and complete expression: The scope of rights to the design is limited to what appears in the submitted drawings. Therefore,all shapes and patterns that you want to protect must be clearly indicated inthe drawings. Since the invisible back side and internal structure are not protected, cross-sectional views and rear views will also be considered if necessary. On the other hand, parts that you do not want to protect (for example, environmental objects or frames with variable display) should not be illustrated or drawn with broken lines to avoid making the scope of rights too vague.
Do not draw other objects or text: As mentioned above, if objects other than the product (background accessories, scale display, etc.) appear in the drawing/photo, it will be defective. The background is a single color to add contrast and make the product stand out. Also, it is not allowed to include explanatory text such as "front view" or "○○ part" in the diagram. Explanations should be provided in the brief description section of the application form or drawings, and the drawings themselves should be purely visual information.
Color and monochrome: Since color is also an element of design, if you want to cover differences in color with rights, submit a color drawing. On the other hand, if you want to protect only the shape, it is common to make it a monochrome drawing or line drawing so that the rights are not affected by color (for example, in Germany/EU, if you submit a black and white photograph, color is not included in the scope of the rights). The same is true in Japan, but the number of color designs has increased in recent years, so it depends on your application strategy.
Utilization of partial designs and related designs: In Japan, the partial design system allows only a part of a product to be cut out with a broken line and registered. Virtually the same thing is possible in Germany/EU, and if you draw just a part of the product, it will be registered as a partial design. Furthermore, under Japan's unique Related Design System, you can apply for a related design within 10 years even if your company's similar variation designs are delayed, making it possible to comprehensively obtain rights for series designs. Formally, there is no concept of "related designs" in Europe, but it is necessary tofile all necessary variationsseparately, and to apply at the same time so as not to impair the novelty of each application before publication.(*In Europe, once your earlier application is published, you cannot protect subsequent applications that are similar to it, even if you own it, so there is no relief under the related design system like in Japan.)
Batch application for multiple designs: Although multiple designs can be filed in one application in Germany and the EU, a set of drawings for each design is still required. It is not possible to arrange multiple products on a single drawing and make them into a single design (this would result in multiple designs being mixed together within a single design, rather than multiple designs in one application, and would cause the design to be invalidated). Please be aware that the mistake of drawing multiple designs in one drawing is often made in European practice, and there have been cases of invalidity.
Thorough filing before publication: Novelty is the key to a design. If someone else files and publishes your design first, you will no longer be able to protect your own design. Therefore, it is a golden rule to complete the application for the design of a new product as far in advance of its market debut as possible. Especially in Japan, there are no unregistered design rights, so even if you rush to apply after publication (if the exception period has passed), you won't be able to make it in time. Europe also has a one-year grace period, but it is limited to the creator's own publication, and novelty is lost if a third party publishes a similar product. Also, if you place too much faith in the grace period, there is a risk of forgetting the procedures or letting the one year pass. It is important to have the mindset to apply as soon as the final design is finalized, with the idea that ``it's an auspicious day''.
Exhibition at exhibitions and posting on the internet: Exhibiting at product presentations and exhibitions, and posting on catalogs and websites fall under "disclosure to the public." It is best if you can apply before these times, but even if you do, please apply as soon as possible within the grace period. In Japan, apply within one year of publication, and don't forget to submit the certificate within 30 days. In Europe, there is no need to submit a notification if the application is filed within one year, but it is helpful to save evidence of the publication date and contents in cases such as invalidation trials. Also, when showing a product design to a third party, it is important to maintain confidentiality by signing an ND contract, etc., and to maintain novelty.
Coordination between designs and patents/trademarks: Depending on the design, there may be a balance between patents (functional inventions) and trademarks (three-dimensional trademarks, etc.). Publishing drawings for a patent application risks losing the novelty of the design, and vice versa. Designs and patents are two different things, and if both can be protected, it is preferable to apply for each, but be careful about the order of filing and the timing of publication. If the three-dimensional shape of the trademark also overlaps, obtaining one may affect the other (for example, in Japan, it is possible to register both a design and a trademark for the same shape, but care must be taken when applying this).
Using the period of non-disclosure: In Germany and the EU, there is a grace period for disclosure (non-disclosure) of up to 30 months, and in Japan for up to 3 years. By using this, you can keep the design secret and secure the rights until just before the product is released. For example, in the fashion industry, design rights are made public in time for the release season of new products, so the strategy is to keep them private until then. On the other hand, there is also the idea that early publication of a gazette will provide a deterrent effect to third parties (anyone can search for a registered design once it has been published, and this will serve as a warning to potential infringers). The advantage of the design system is that it allows you to choose the timing of publication depending on the product cycle and the situation of counterfeiting damage.
Unregistered design vs. registered design: In Europe, there is a two-step approach in which an unregistered design (UCD) is first obtained for a trendy product, and if it becomes a hit, an application for registration is filed within one year. However, if it is not registered, independent creation cannot be prevented, and competitors may easily develop similar products on their own. If a Japanese company uses UCD in Europe, it must disclose first within the EU (UCD will not occur if the first disclosure is in Japan). With this in mind, we may adjust the global release order. In Japan, there are no unregistered rights, so the design isregistered. If you are unable to obtain the rights before the product goes on sale, you may need to decide to switch to a different approach, such as disclosing the product if it has a short life cycle and considering trade secret protection or protection under the Unfair Competition Prevention Act.
Right Portfolio: For important designs, it is recommended to obtain design rights in multiple ways in major countries. For example, Europe will be covered by EU designs, while Japan, the United States, Canada, South Korea, etc. will be covered by individual applications or Hague applications. In doing so, the practical point is to understand each country's system and build a portfolio, such as supplementing variations with the related design system in Japan and registering the necessary number of designs individually in Europe and America. Since designs are easily imitated, an intellectual property strategy is to procure rights widely in advance and build barriers to market entry.
Based on the above points, we will now summarize the differences between the German (and EU) and Japanese design systems in a table.
Below is a comparison table summarizing the main differences between the German (and EU) design system and the Japanese design system. We have organized the characteristics of both systems for each item so that you can see the differences in system design at a glance.
| Item | Germany/EU design system | Japanese design system |
|---|---|---|
| Protected object | The appearance (in whole or in part) of an industrially or handcrafted product. This includes packaging, graphical shapes, typefaces, etc. Buildings are also considered products and can be protected. *Partial design: Part of the product can also be applied for as is (the part is shown in a drawing). *Image of GUI etc.: The screen design displayed on the product can be protected as a "product (graphic symbol)". *Interior design: Cannot be included in one design as a combination of multiple products (only one product design per application) (interior must be expressed as a collection of multiple designs). | A combination of shapes, patterns, and colors of articles (including parts), shapes of buildings (including parts), etc., and images (including parts such as operation screens) that create a sense of beauty through the visual sense. *Partial design: Possible (indicated by broken lines, etc.). *Image: Operation GUI and display images are also protected (revised in 2019). *Interior: The unified design of the entire store and interior space is also protected as "interior design" (revised in 2019). |
| Examination method | Registration principle without examination (Formal examination only). Novelty and individuality are not examined at the time of registration, and there is no opposition system. Invalidity claims are made in invalidation trials or infringement lawsuits by interested parties. Expedited registration (weeks from application). | Substantive examination principle. The examiner examines novelty, originality, etc., and there is a process from notification of reasons for refusal to written opinion/amendment to decision. It takes about 6 months to 1 year to obtain rights. An appeal can be filed against the decision of refusal. |
| Duration of life | Up to 25 years from the filing date (up to 4 renewals every 5 years). Protection for the first 5 years with the initial registration fee. Renewals can be paid in one lump sum for 5 years (DPMA) or every 5 years (EUIPO, next payment is due by the end of the 5th year). | Up to 25 years from the filing date (applications from 2020 onwards). Payment is made for 1 to 3 years at the time of registration, and annual pension payments are made thereafter. No renewal system (until expiration of 25 years). |
| Number of designs in one application | Multiple designs allowed: German applications can include up to 100 designs (usually within the same class). EUIPO applications can also be filed for up to 100 designs (limited to the same Locarno classification). Even if a collective application is filed, each design has independent rights. | One design, one application: In principle, only one application and one design. When protecting multiple identical or similar designs, similar designs can be linked in separate applications within 10 years from the filing of the main design (however, each has independent rights) under the Related Design System. There is no batch application system. |
| Novelty requirement | Absolute novelty: Not allowed if the design is identical to a design that is publicly known throughout the world. Disclosures that are unknown to experts within Europe are excluded. Grace period: Applications filed within 12 months of publication by the creator are exempt from loss of novelty (no procedure required). | Absolute novelty: Not allowed if it is the same or similar to a publicly known design. Applies to published materials both domestically and internationally. Grace period: Within 12 months from publication by the creator, etc. (revised in 2018, previously 6 months). Exception procedures are required at the time of application. Exhibitions and academic presentations are also eligible. |
| Creativity requirements | Individuality (unique features): Giving an overall impression that is different from existing designs. Judgment is made from the perspective of the user who has the information. Design flexibility is taken into account, and even small differences can be unique. A certain level of beauty is not required. *No actual examination. Determined at the time of rights exercise/invalidation trial. | Difficulty in creation (cannot be easily devised): Not a common change or combination (Article 3, Paragraph 2 of the Design Law). Judgment is based on whether it is easy to get an idea for the design from a group of prior designs. Comprehensive evaluation based on the aesthetic perception received by consumers. *The examiner checks the application during examination and rejects it if it is too easy. |
| Public/Public | Published at the same time as registration (Published in DPMA register/Published in official bulletin). Publication grace period: Up to 30 months (requested at the time of filing). During the grace period, the images will be kept private and temporarily protected. In order to keep it running for 5 years, it must be published and officially registered within 30 months by paying an additional fee. During the grace period, only intentional copying can be prohibited. Similarly, at EUIPO, the release can be postponed for up to 30 months. | Publication of gazette at the same time as registration. Secret design: Drawings may be kept private for up to 3 years from the date of registration (request made at the time of filing). During the secret period, rights cannot be exercised by others (it is virtually difficult to prove imitation). Can be published after a period of time or at any time. After that, normal rights can be exercised. |
| Scope of rights (judgment of infringement) | Identical or similar overall impression is an infringement. Infringement determinations are made based on the overall perspective of ``users with information.'' Compare not only the main parts of the design but also the entire design. Unregistered Design (UCD): 3-year protection, but only extends to copying (independent creations are not infringed). | The scope of rights extends to same or similar designs (Article 23 of the Design Act). Judgment of infringement is made comprehensively based on the consumer's visual impression of beauty. Products with different uses tend to be dissimilar, but if they have some common uses, they can be recognized as similar. *There is no rights protection system for unregistered designs. |
| Jurisdictional authority | German domestic design: DPMA (Munich) EU design: EUIPO (Alicante) Invalidity trial: DPMA Design Division / EUIPO Opposition Division Infringement litigation: Patent office jurisdiction courts across Germany / Other EU member states also have jurisdiction (EU-wide injunction is also possible in a single lawsuit) | Japanese design: Patent Office (External Bureau of the Ministry of Economy, Trade and Industry/Tokyo) Invalidation trial: Japan Patent Office Trial and Appeal Board (Design invalidation trial) Infringement lawsuit: Tokyo/Osaka District Court (Intellectual Property High Court appeal) |
| International application | Joined the Hague Agreement (Germany and EU are also members). Can be specified via WIPO. Specification for Germany or EU is also possible. | Same as left (joined in 2015). Japan can be specified via The Hague. International registrations that designate Japan are subject to examination (notification will be given in case of non-registration). |
*In the table above, "Germany/EU design system" mainly describes common points between German domestic designs and EU common designs. We have included some German-specific (for example, language requirements and fees) and EU-specific (unregistered designs, etc.) matters.
Although the basic principles of the German and Japanese design systems are the same, there are many operational differences, such as the presence or absence of examination and the differences in system options. It is important for IP practitioners to accurately understand these differences and develop optimal strategies on a case-by-case basis. For example, in Germany, a strategy could be to take advantage of the advantage of being able to obtain rights quickly and secure registration early, while also using EU designs if coverage across Europe is required. In Japan, it is important to file applications systematically in anticipation of the examination period and to carefully protect your company's designs under the related design system.
According to official sources, German designs have a simple procedure, taking just a few weeks from application to registration, while Japanese designs are evaluated as having examinations and high stability of rights. Rather than saying which is better, the important thing is to use both systems properly and complement each other depending on the type of design and area of business development. If you are a global company, it would be desirable to make full use of the Hague system to acquire design rights in Japan, Germany, and the EU as a set, and use it for countermeasures against counterfeit products and brand strategy.
We hope that the comparisons and points mentioned in this article will be helpful to everyone involved in design practice in both Japan and Germany. In today's world where the value of design is increasingly valued, we hope that you will be able to navigate the differences between countries' systems and make the most of your designs as intellectual property.
References/Sources: Numbers in parentheses in the text indicate sources, and indicate the corresponding information sources below.
[1] Excerpt from the official website of DPMA (German Patent and Trademark Office) "Examination and Registration - Designs" (Contents of formal examination of German designs, non-examination of novelty, etc.) Protection'' (novelty/individuality requirements and explanation of 12-month grace period)
[10] From DPMA official website ``Application'' (application procedure overview, online application, up to 100 designs allowed, processing period, etc.)
[11] From DPMA official website ``Required data and documents'' (drawing requirements for submission, maximum of 10 drawings, limitation on illustrated objects, etc.)
[12] DPMA official website ``Required data" (Three requirements for drawings: 1 image, 1 viewpoint, single color background, no explanations, etc.)
[18] INPIT "How long is the duration of a design right?" FAQ (Duration of a Japanese design is 25 years, transitional measures)
[20] INPIT "Please tell me what a design is." (Purpose and definition article of the Japanese Design Act)
[24] Wikipedia "European Union design" (Overview of the EU design system. Regarding three-year protection for unregistered designs and infringement determination based on overall impression) "Procedures" page (Certificate submission deadline: 30 days, etc.)
[17] Japan Patent Office press release "Summary of the Reiwa 1 Design Law Amendment" (10-year extension for related designs, addition of images, buildings, and interiors)
[9] Seifried IP Law Office Blog "Design application EUIPO DPMA" (Examples of drawing errors: Invalid examples of drawing multiple products in one design, etc.)