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Requirements for design registration Bangladesh – In 2023, a new Industrial Design Act (Industrial...
Overview of the British design system
1. Registration requirements (novelty, uniqueness, etc.)
In the UK, the requirements for design registration are novelty and individual character. Novelty means that there is no identical or substantially identical design available to the public before the application is filed, and the difference must be more than a minor difference in detail. Uniqueness refers to the fact that the design gives a knowledgeable user (skilled consumer) an overall impression that is different from previous designs. These decisions are made based on designs that have been published around the world. Furthermore, in the UK, under the grace period (exception to loss of novelty), if the application is filed within 12 months of publication by the creator (or successor) of the design, loss of novelty and originality due to self-publication is not recognized. However, independent publication by a third party is excluded, so it is recommended that applications be filed as early as possible before publication.
On the other hand, the main registration requirements under Japanese design law are novelty and difficulty in creation (lack of a high degree of ease of creation). Novelty means that the design is new and not publicly known at home or abroad before the application was filed (Article 3, Paragraph 1 of the Design Law). Difficulty in creation refers to the fact that the design is so creative that it cannot be easily devised by a person skilled in the art from a known design (Article 3, Paragraph 2 of the Design Law). In addition to these requirements, in Japan, the design must be related to an "article (or building, image)" and can be used industrially, must not have a prior application by another person, and must not fall under any grounds for non-registration under the Design Law. In Japan, there is also an exception to the loss of novelty (grace period) for publication by creators, etc., and with the revision that will take effect in 2024, this will be relaxed so that novelty will not be lost if the application is filed within one year of self-publication (previously it was within six months). However, in order to apply Japan's grace period, certain procedures (certificate submission) are required.
The above is summarized in a table as follows.
| Registration requirements | UK | Japan |
|---|---|---|
| Novelty | Novelty according to world standards: The same design must not be known to the public before the application is filed. Grace period 12 months after self-publication. | Novelty according to world standards: Not publicly known before filing. Applications filed within one year of self-publication are exempt from loss of novelty (certificate must be submitted). |
| Originality/Creativity | Individual character: Giving an overall impression that is different from the previous design. *In fields where the degree of creative freedom is low, even small differences can satisfy originality. | Difficult to create: A high degree of creativity that cannot be easily created from an existing design. *Substantially, it is required that the design has notable features in its composition and is not obsolete. |
| Other requirements | Scope of design: Appearance of the whole or a part of the product (both 2D and 3D can be protected). Includes patterns, colors, logos, GUI, etc. Exclusion requirements: Designs that violate public order and morals, designs that include the national flag or emblem, and designs that are purely functional cannot be registered. | Scope of design: Design of articles (including parts), buildings, and images (buildings and images were added in the 2019 revision). Exclusion requirements: Designs that violate public order and morals, are similar to other people's works or trademarks, and purely functional shapes cannot be registered (Article 5 of the Design Act). |
*The UK's originality requirement is a similar concept to Japan's difficulty in creating, but in Europe it is unique in that it is judged from the perspective of ``differences in overall impression''. On the other hand, in Japan, examiners judge the similarity of individual designs and the difficulty of creation. In the UK, novelty and originality are not subject to preliminary examination**, and are determined if a problem arises in an invalidation trial or infringement lawsuit after the patent is granted (for details, see "Application Procedures and Examination System" below).
2. Application procedures (required documents, fees, examination system, etc.)
In Japan, applications for design registration are filed with the Japan Patent Office online or on paper. Required documents are application form (prescribed format) and drawings. Based on the Design Law Enforcement Regulations, it is common for drawings to be submitted in six views (front, back, left and right sides, top, bottom) and perspective views that specifically express the applied design. Although it is possible to submit images in Japan, drawings (line drawings) are generally used, and although photographs are also accepted, black and white with clear contrast are recommended. In Japan, there is a partial design system, which allows you to apply for a design for only a part of a product independently (in this case, there is a rule to draw the part related to the design and the rest using broken lines etc. in the drawing). However, in Japan, unlike in the UK, there is no practice of excluding parts by stating a disclaimer at the time of filing, and if you want to protect a part, you need toseparately file it as a partial design. The application fee is approximately 16,000 yen (for electronic applications), and a registration fee will be charged separately. For example, in Japan, rights only arise after the establishment registration fee (registration fee for the first to third years) is paid after the registration assessment. **Pension (annual maintenance fee)** must be paid every year, and the amount increases each year.
〈Examination System/Multiple Design Applications〉 The United Kingdom has adopted anunexamined registration system (formality examination only), and substantive examination is not conducted for novelty and originality. A formality examination will be conducted within 2 to 3 weeks from the application, and if there are no reasons for refusal (e.g. insufficient expression or eligibility issues), the application will be promptly registered and published. Even if a problem is pointed out in the formalities examination, you will be given approximately two months to respond with an amendment. Additionally, in the UK, it is possible to apply for multiple designs, which means that you can apply for registration of multiple designs in the same application. When filing an application for multiple designs at once, there is no need for the products to be similar or to belong to the same classification, and you can apply for multiple designs at once (in that case, there is an additional fee discount system). In addition, the UK system allowsdelayed publication, which allows you to delay publication of the contents of your design for up to 12 months by requesting it at the time of filing. Registration will be suspended during the postponement period and official registration will be made pending publication.
Japan has adopted a substantive examination system, in which examiners at the Patent Office examine requirements including novelty and ease of creation for each application. In recent years, the average time from application to the first examination result (notice of reasons for refusal or decision to register) is approximately 6 months to 1 year. If there are reasons for refusal, a response will be made with a written opinion and procedural amendment, and if the requirements are met, a decision of registration will be made (if the reasons for refusal are not resolved, the decision of refusal will proceed from decision of refusal to appeal). In Japan, the principle is one application for one design, and only one basic design can be included in one application. If you wish to apply for multiple designs at the same time, you will need to submit applications for each design. Furthermore, Japan does not have an application publication system like the UK, and design applications are usually published and published in the Design Gazette once they are registered after examination. However, Japan has its own Secret Design System, and at the request of the right holder, it is possible to keep the design details (drawings, etc.) secret without publishing them in the registration gazette for up to three years after registration. This system responds to the need to keep the design secret until the product is released, and can be requested at the time of filing or paying the registration fee. If you request a secret design, it will be republished in the official gazette after the secrecy period has passed.
Below is a comparison table regarding application procedures.
| Procedure items | British system | Japanese System |
|---|---|---|
| Documents to be submitted | Application form (online form) + drawings, etc. (JPEG/GIF/TIFF format, maximum 12 drawings). Explanation can be optionally attached. Line drawings, CAD, photographs, etc. are acceptable as illustration methods (however, they cannot be mixed within one design). | Application form (online or paper) + drawings (in principle, 6 views + perspective view, etc. if necessary). Drawings are basically line drawings (photos are also acceptable). It is necessary to specifically and completely represent the applied design. For a partial design, unclaimed parts are drawn with broken lines (filed separately as a partial design). Include an explanation (name of product related to the design, name of creator, display of related designs, etc.). |
| Official fee | Basic application fee of £50 (electronic application). When applying for multiple applications at once, a discount fee will be applied for each additional application. No registration fee required (included in application fee). | Application fee is approximately 16,000 yen (electronic). A separate registration fee (setting registration fee) of 8,500 yen for the first to third years must be paid. From the 4th year onward, pay the annual maintenance fee every year (annual amount increases gradually, e.g. 4,300 yen + additional amount for 4th to 6th years). |
| Examination method | Registration principle without examination: Immediate registration without examining novelty or originality, only formal examination. Registration takes an average of 2-3 weeks. It is rare to receive a notice of reasons for refusal (in cases of violation of public order and morals, etc.). | Substantive examination principle: The examiner examines novelty, ease of creation, etc. Primary results in an average of 6 to 12 months. After dealing with the reasons for refusal (opinion/amendment), the decision to register is granted → the rights become available upon payment of the registration fee. |
| Multiple design application | One application can include multiple designs (no product similarity or same classification requirements). Fee discounts are available for each additional design. | In principle, one application, one design (one design, one application principle). Similar designs can be filed separately as "related designs" (a special case where the filing date is the same as the original design), but it is not a one-stop procedure. There is no multiple design application system. |
| Publication/Announcement | Publication deferral system: You can apply at the same time as filing and postpone publication for up to 12 months. During the postponement, registration is on hold (immediate registration and acquisition of rights can be delayed). Deferred fee of £40. | Secret design system: You can request that your design not be published in the official gazette (disclosure) for up to 3 years from the time of registration. Rights are granted, but the content is not made public. Fee: 5,100 yen/case. There is no application announcement system for domestic applications (publication at the time of registration). *International publication (in principle, 6 months later) is possible if the application is submitted via The Hague. |
3. Drawing requirements (submission format, viewpoint, shading, etc.)
〈Submission format/type of drawings〉 There are differences in requirements and practices between the UK and Japan when it comes to expressing designs through drawings (images). As mentioned above, in the UK we accept electronic images in JPEG/GIF/TIFF format, both black and white and color are acceptable. The background of the figure should be a solid color, and the image should be clear and have sufficient contrast. The type and perspective of the drawings are at the discretion of the applicant, and up to 12 drawings can be submitted. Although there is no stipulation for required views, it is important to include all necessary viewpoints to sufficiently identify the shape of the product (for example, for three-dimensional objects, front, rear, left, top, bottom, and perspective views). The UK IPO will examine the submitted drawings to see if they meet the formal requirements, and will issue correction instructions if there are any deficiencies. Although there are no clear rules regarding shading, it is recommended that shading and hatching be used as appropriate to help understand the shape. Although not as strict as in the United States, drawings that use shading to create a three-dimensional effect are useful because they increase recognition. In the UK, display using dashed lines or dotted lines is permitted, and it is possible to draw dashed lines to indicate areas where rights are not claimed, as described above in the disclaimer. For example, when claiming a partial design, by drawing the other parts of the product with broken lines, you can clearly indicate that the broken line does not fall within the scope of the right.
In Japan, when creating drawings (design drawings), the examination standards stipulate the thickness of lines and the usage of solid lines, dashed-dotted lines, dashed-double-dotted lines, etc. Basically, the parts that require protection are drawn with solid lines, and broken lines (dotted and dashed lines) are used to indicate parts that are not related to the design, such as environmental objects, or to outline unclaimed parts in the case of partial designs. In Japanese examination practice, it is recommended to submit six-sided drawings (six-sided drawing method), and in the case of three-dimensional objects, it is a general rule to submit drawings viewed from at least six main directions. Unless the overall shape is symmetrical and some parts can be omitted, missing views may be considered a reason for refusal as an "application based on incomplete drawings." Regarding shading, the depiction of shading lines is optional in Japanese design applications, but it can be used to show three-dimensionality and surface undulations. However, when adding shading, it is required to draw it uniformly using line drawings, and there is no problem if the shading is expressed using shading when submitting the photo. Although the presence or absence of shading lines is not a registration requirement like in the United States, in many countries, including Japan, drawings that clearly show the shape of the design are required. For this reason, emphasis is placed on theclarity and completeness of drawings, and blurry photographs or drawings from insufficient angles may lead to correction orders or reasons for rejection. As a general rule, drawings for Japanese design registration applications must be drawn in all black in the case of line drawings, and color drawings cannot be submitted (color photographs are exceptionally acceptable, but they will be output in black and white). In principle, characters, numbers, and other indications unrelated to the design should not be included in the drawings, and should be treated as "reference drawings" if necessary.
We will summarize the differences between the drawing requirements of the two countries.
| Drawing requirements | UK | Japan |
|---|---|---|
| Submission format | JPEG/GIF/TIFF electronic data. Color images can be submitted. Paper submissions are also accepted (unlimited number of figures). | Electronic or paper. Drawings are usually submitted in PDF format (A4 drawings if paper). Monochrome principle (color not allowed, photos must be submitted in black and white). |
| Number of viewpoints in diagram | Up to 12 diagrams can be attached. Optional selection of necessary and sufficient viewpoints (no required specific diagrams). | In principle, the entire shape is disclosed in 6 side views + perspective view. If the 6-page drawings are not complete, there is a risk that deficiencies will be pointed out during the examination. |
| Display shading | Optional (recommended). You can show a three-dimensional effect with shading lines and hatching. In the case of photos, the actual shadows can be used as is. | Optional. It is possible, but not necessary, to indicate relief with shaded lines. Rather, the focus is on clearly drawing the outline. Although shadows can be seen in photographs, the expression of light and shade in line drawings is supplementary. |
| Using dashed and dotted lines | Possible. A disclaimer is allowed, indicating the unclaimed portion with a broken line. It is also possible to display the environment using dotted lines, etc. | Possible. However, dashed lines are allowed in the outline of non-claimed parts only when filing as partial design. It cannot be used for any other purposes that limit the scope of rights (dotted and dashed lines are used to indicate environmental objects). |
| Notes | Draw each figure in a consistent format (line drawings and photographs cannot be mixed). Each image is less than 4MB. A single color background is preferable. | Unified scale and touch for all figures. Submit enlarged drawings and cross-sectional views of important parts as necessary. The name of each figure (front view, etc.) is clearly stated in the drawing description. |
4. Protection period (starting point, renewal system, etc.)
〈Term of protection in Japan〉 The duration of design rights in Japan has been extended to 25 years from the filing date due to recent revisions. It applies to applications filed after April 1, 2020, and is significantly more internationally harmonized than the previous "20 years from the date of registration." The starting point is the filing date, and the rights expire 25 years after the filing date. In Japan, there is no system for extending or renewing the term of protection. In other words, once registered, it is generally valid for 25 years, and during that time the rights are maintained by paying an annual registration fee (maintenance annuity) (if you are in arrears, the rights will expire). Although there is no need to renew the license every five years, it is important to note that if you fail to pay the annual fee, your rights will expire. Japanese design rights can also be waived before the expiry of their term.
〈Other differences〉 In the UK, there is a gradual renewal system as mentioned above, whereas in Japan there is no formal renewal application until the expiration of the period. Additionally, Japan has a special duration rule for related designs. A related design is a design based on a similar relationship with the main design, but its design right lasts only until 25 years from the filing date of the main design (even if it is registered after the main design, the term of validity will be the same as the main design). This is a special situation in the protection of design concepts that span multiple designs.
Below is a comparison table of protection periods.
| Protection period | UK | Japan |
|---|---|---|
| Duration of life | Maximum of 25 years (5 years x 5 terms) from the filing date. | 25 years from the filing date (all-inclusive period, no renewal). |
| Renewal system | Yes: Extended by applying for renewal and paying fees every 5 years (can be renewed 4 times in total). Relief for forgotten renewal (6 months grace period + additional fee) available. | None: Automatically expires in 25 years from the filing date. Pension payments are required every year (annual payments can also be made in advance). |
| Special notes | Stepwise update method similar to EU. Renewal fees are set to increase each time. There is a system to apply for restoration of rights within a certain period of time after renewal is incomplete. | The 2020 amendment extends international harmonization from 20 years to 25 years. Related designs comply with the 25-year time limit for the main design, so they expire on the same day regardless of when they were registered (Article 21, Paragraph 2 of the Design Act). |
5. Existence and content of protection system for unregistered designs
〈Unregistered design system in the UK〉 In the UK, there is a design protection system that does not require registration. There are two main types: one is the unique UK Unregistered Design Right, which existed before the UK left the EU, and the other is the UK Supplementary Unregistered Design, which was newly established after leaving the EU. Furthermore, as a transitional measure, a ``continuing unregistered design''** was also established, which continues the protection in the UK of the EU's unregistered Community Design that existed before Brexit.
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UK Unregistered Design Right (UK UDR): A unique right in the UK based on the Copyright, Designs and Patents Act 1988, which arises in relation to the shape and structure (three-dimensional shape) of an article. Patterns and surface decorations are not protected, so the scope is narrower than that of registered designs, but on the other hand, they have a longer term of existence. The term of validity is up to 15 years from the end of the year in which the design was created or incorporated into a product, but up to 10 years starting from the end of the year in which the design product was first put on the market (rights often expire after 10 years from the first sale). UK UDR isautomaticright and does not require any registration process. However, for rights to accrue,the design must be original (originally created) and not common. "Original" here only needs to be not a copy of an existing design, and is not as strict as novelty. Also, "not commonplace" means that the design is not commonly seen in the field, and the hurdle is lower than the requirement for uniqueness (individuality). Therefore, registered designs are required to have novelty and originality, but unregistered design rights do not need to be completely new and can be protected if they are not imitations of existing designs. There are also restrictions on eligibility for rights acquisition, and UK UDR only occurs when the creator or his or her employer is a national or corporation of a limited number of specific countries, including the UK. Designated countries include the UK, Hong Kong, and NZ, but do not include Japan, so Japanese companies and creators are generally unable to obtain UK UDR. As an infringement requirement, in order to exercise the UK UDR, it is necessary that the other party has copied the design in question (counterfeiting); if you create your own design, it will not be an infringement even if it is similar. As with registered designs, you can request for an injunction or compensation for damages, but since the rights have not been examined by the Japan Patent Office, etc., the scope of the rights (defining the design) will be determined for the first time through litigation.
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Unregistered Community Designs & Ancillary Unregistered Designs: Introduced in the EU in 2002,Unregistered Community Designs (UCDs) are a system that provides protection throughout the EU for a period of three years from the date of first publication of the design. The UK also benefited from this system while it was a member of the EU, but due to Brexit, the EU's unregistered design rights will no longer extend to the UK from 2021. Therefore, as a transitional measure, the UK has created a Continuing Unregistered Design that has the same effect in the UK for Unregistered Community Designs that are in existence as of the end of 2020, and protects them for the remaining period. Additionally, to address future new designs, we createdSubsidiary Unregistered Design Rights (SUD). This is an unregistered design right that is established on the date of first publication in the UK.The protection period is also 3 years, and the protection requirements are the same as for registered designs: novelty and originality. In short, the UK has created a new 3-year non-registration right after leaving the EU. However, both the EU's UCD and the UK's SUD depend on the place of first publication, so if a Japanese company first publishes a design in its own country (outside the EU/UK), it will lose its novelty in Europe and an unregistered design right will not be established. In reality, Japanese companies usually first announce their products domestically, so it is difficult to benefit from unregistered design rights in the EU/U.K. In this way, the place of first publication and timing of publication are important for unregistered design protection. NaFor a UCD or SUD to be considered infringing, it must be proven that the accused person copied the design. Unlike registered designs, mere coincidence of similarity does not constitute infringement; rights can only be exercised if there is an act of imitation.
〈Is there any protection for unregistered designs in Japan?'' In Japan, there is no unregistered design protection system under the Design Act like in the UK. To obtain exclusive protection through a design, it is necessary to register the design. Unregistered designs basically belong to the public domain, and even if they are imitated by others, they cannot be remedied under the Design Law (design rights infringement cannot be claimed). However, it may be complementary to protection under the Unfair Competition Prevention Act and the Copyright Act. For example, artistic designs (highly artistic designs) that can be protected as copyrights are automatically protected as copyrighted works, and if the product form is a copy that causes confusion with a well-known product of another company, it may be possible to request an injunction as an act of misusing business indications under the Unfair Competition Prevention Act. However, these are not systems that exclusively protect the design itself, and the requirements are strict and limited. For Japanese companies, as there is no remedy for unregistered designs like there is in Europe, it is recommended that important designs be registered. In the UK and EU as well, it is considered desirable to obtain protection through a registered design as a measure against counterfeits, as unregistered rights have a short term and are difficult to defend against third parties.
For your reference, here is a comparison table of the unregistered design system.
| Unregistered design system | UK | Japan |
|---|---|---|
| General framework | Yes (automatically generated design rights): "UK unregistered design rights (10/15 years)" + "unregistered Community design/subsidized unregistered design (3 years)". | None (There is no exclusive protection system for unregistered designs under the Design Act). |
| UK UDR | Target: Only the shape and structure of the article (excluding surface patterns). Period: Up to 15 years from creation, up to 10 years from first commercialization. Requirements: Original and unusual design. Qualification: Available only to creators/corporations in the UK and specific countries (not Japanese). Infringement: If there is copying, an injunction and damages can be claimed (independent creations are not infringed). | No applicable system. Unregistered designs are treated as publicly known and do not give rise to legal exclusivity. |
| Unregistered Community Design(EU UCD) | Subject: Same area as the registered design (all shapes, patterns, etc.). Period: 3 years from first release. Requirements: Novelty/uniqueness (first public release in the EU). Notes: Valid throughout the EU. In the UK, it will no longer be valid at the end of 2020 → it will be protected for the remaining period as a continued unregistered design. | (none) |
| UK assisted unregistered design(UK SUD) | Subject: Same scope as the registered design. Period: 3 years from first release (UK). Requirements: Novelty/uniqueness (first published in the UK). Notes: Introduced in 2021. It cannot be established if it is first released outside the EU. | (none) |
| Notes on exercising rights | Unregistered rights (UDR, UCD, SUD) are rights intended to prevent copying, and in infringement lawsuits, the plaintiff must prove the fact that the other party has imitated the work (independent creations are exempt). Registration is recommended for important designs because the term expires quickly and there is uncertainty. | If a design is not registered, there is no remedy under the Design Act even if it is imitated. The only option is to make a claim under other laws such as copyright and non-competition laws. Japanese companies should first obtain design registration even overseas. |
6. Enforcement of rights (infringement lawsuit, injunction, compensation for damages, etc.)
If your design rights are infringed in the UK, you will normally bring a civil claim in the Intellectual Property and Enterprise Tribunal (IPEC) of the High Court or in a competent court. As with procedures for patents and trademarks, you can seek injunctions, claims for damages, and even orders to destroy infringing products. Under English law, in addition to using injunctions** to stop or prevent infringing acts, you can choose to claim either damages or an account of profits. Damages are calculated based on actual losses and lost profits, but in egregious cases additional damages may be awarded, including punitive elements (additional damages may be added at discretion for willful infringement). Furthermore, in the UK, the law was revised in 2014 to provide for criminal penalties for intentional infringement of registered design rights. Malicious infringement of design rights (intentional manufacture and sale of counterfeit products) can be a criminal offense, punishable by up to 10 years in prison or an unlimited fine (a measure to strengthen countermeasures against counterfeit products; however, there are not many actual cases of application).
〈Exercise of rights in Japan〉 Japanese design rights are also exclusive rights, and design right holders can seek civil remedies against unauthorized licensees. Specifically, the typical examples include the right to demand an injunction (Article 37 of the Design Act) and the claim for damages (Article 39 of the Civil Code and the Design Act). An injunction request can be made not only to stop the infringing act, but also to prevent future infringements, destroy infringing products, and remove infringing equipment. Depending on the circumstances, prompt implementation of an injunction through a provisional disposition may be considered. For claims for damages, the Design Act has specific provisions for estimating damages (calculating lost profits similar to those in the Patent Act and requesting an amount equivalent to license fees), which reduces the burden of proof on right holders. For example, it is possible to treat the amount of profit earned by the infringer as damage to the right holder, or to treat the amount equivalent to the royalty that would normally have been earned as damage (Article 39 of the Design Act). Also, Design Law 40According to the Article, the infringer's negligence is presumed by law, so the right holder can omit proving intentionality or negligence. In addition to civil penalties, Japan also has criminal penalties, and those who infringe on design rights or exclusive licenses for commercial purposes may be sentenced to up to 5 years in prison or a fine of up to 5 million yen (or both) (Article 69-2 of the Design Law). In practice, there are cases in which criminal charges are filed against malicious counterfeit product dealers in order to expose them and impose penalties. However, the first goal is usually to resolve the issue with an injunction and compensation through civil litigation.
| Exercise your rights | UK | Japan |
|---|---|---|
| Main claims | Claim for injunction (prohibition of use, manufacture, or sale), compensation for damages, or return of profits. Ancillary remedies such as destruction of infringing goods are also possible. In cases of malicious behavior, additional compensation will be considered. | Claims for injunctions (stopping/preventing infringement, disposal of infringing goods, etc.), claims for damages (with estimated calculation of lost profits, etc. pursuant to Article 39), claims for return of unjust enrichment, claims for measures to restore credit, etc. |
| Treatment of independent creation | With a registered design right, even an independent creation constitutes infringement (the scope of the right extends regardless of whether there is imitation or not). With unregistered rights, independent creations that are not copies are not infringing. | Only registered design rights are protected. Even if an independent creation is similar to a registered design, it constitutes infringement (regardless of whether it is an imitation or not). No rights to unregistered designs. |
| Burden of proof/presumption | Additional punitive damages are available for intentional infringement. In litigation for infringement of unregistered rights, proof of copying is required. | The infringer's negligence is presumed by law (Article 40). There is a special provision for calculating the amount of damages (Article 39). |
| Criminal punishment | Since 2014, intentional infringement has been criminalized (up to 10 years in prison and fine). Actual application is limited. | Infringement of design rights: Imprisonment for up to 5 years or a fine of up to 5 million yen. In malicious cases, criminal charges and prosecution are also possible. |
7. Relationship with international applications (applications under the Hague system/practical points to note)
〈Effects and Procedures for International Applications〉 If you designate the UK or Japan via The Hague, all procedures will be conducted through the World Intellectual Property Organization (WIPO). Once an international application is registered (international registration), the design will be published in the International Gazette approximately six months later and notified to the offices of each designated country. Each designated country conducts an examination within a specified period (6 months in principle, but may be extended up to 12 months in substantive examination countries), and if there is no notification of refusal, a domestic design right will immediately arise. Since the UK is a formality examination country, domestic registration is established relatively quickly after international publication (within a few months after publication). Since Japan conducts substantive examination, you will be notified of the presence or absence of reasons for refusal within a maximum of 12 months after publication. If you receive a notification of refusal regarding the designation of Japan, you will need to respond by submitting a written opinion or amendment to the Japan Patent Office through the international application agent (in this case, you will need to appoint a representative in Japan). If the measures are successful and the refusal is resolved, a Japanese design right will be established within about one year from international registration.
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Drawing preparation: It is important to prepare drawings that are compatible withthe drawing requirements of each country. In international applications, one set of drawings covers all designated countries, so for example, we try to balance Japan's six-view drawing requirement with the UK/EU drawing allowance. In practice, a maximum of 100 drawings can be submitted in an international application, but adjustments need to be made to satisfy Japan's required view drawings while taking into account the European Community Design (EUIPO) limit (up to 7 drawings) and the UK's 12 drawing limit. In some cases, we may consider dividing the application into multiple designs.
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Deferral of publication: For Hague applications, you can request deferral of international publication at the time of filing (up to 30 months, depending on the designated country). The UK only allows a deferral of up to 12 months under its own law, so even if you request a 30-month deferral for an international application that designates the UK, you should be aware that the application will be published at the 12th month (it will be published according to the shortest permissible period among designated countries). Japan does not have a public announcement deferral system under the Hague Agreement, so if Japan is included in the designated countries, public announcement deferrals cannot be designated. Therefore, please note that it is not possible under the system to designate Japan and the EU at once and use the EU's 30-month deferral.
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Agent/Language: The international application itself can be filed in English, but if you wish to respond to a refusal request for designation in Japan, you will need to appoint a Japanese representative to carry out the procedure in Japanese. Similarly, in the unlikely event that a refusal is notified in the UK designation (mostly only in cases of incomplete formality), a UK-based representative may be required. However, in the UK, there is no examination, so there is usually no notification of refusal.
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Cost: The cost of filing a Hague application consists of a basic fee + a fee for each designated country. If Japan and the UK are designated, an individual fee will be applied for Japan (3,900 yen x varies depending on the number of drawings, etc.), and a lump-sum designation fee (fixed amount) for the UK. Filing for multiple countries at once has the advantage of reducing cost and effort compared to filing for each country individually. However, in Japan, consideration is given to the fact that there is a possibility that there will be costs associated with responding to refusals.
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Relationship with European Community Designs: Previously, applications for Registered Community Designs (RCDs) were the most effective way to cover the entire EU, including the UK. However, after the UK leaves the country, the RCD will no longer be effective in the UK. In addition to filing with the EUIPO, it is now necessary to file with the UK IPO. Using the Hague Agreement, it is possible to designate the EU and the UK at the same time, so after Brexit, there are an increasing number of cases where applications for the EU and UK are filed together via The Hague. In practice, if you had an existing EU design right, you were automatically granted a clone design right (re-registered design) in the UK from 1 January 2021. However, in future new applications, you will need to remember to specify not only the EU but also the UK, or you will need to file a separate application for the UK.
Finally, based on the above points, understanding the differences between the design systems in the UK and Japan, When Japanese companies seek to protect their designs in the UK, it is advisable to adopt strategies such as: early acquisition of rights by taking advantage of the unexamined system, thorough application for registration as unregistered design rights are basically difficult to utilize, consideration of each country's requirements when creating drawings, and efficient acquisition of rights by actively utilizing the Hague System.
References/Sources (*The number shown in [ ] in each item indicates the source):
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[1] EIP, “Registered and unregistered design system in the UK”, AIPPI JAPAN Monthly Report Vol.66 No.3 (March 2021), etc.
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[4] EIP, same as above – Characteristics of the UK design system, unregistered design rights, etc.
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[5] EIP, same as above – Explanation of UK unregistered design rights, etc.
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[15] JETRO London, “UK Intellectual Property Rights System – Designs” (2021)
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[16] JETRO, same as above – UK design application procedures, term of protection, unregistered designs, etc.
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【17】Mewburn Ellis, “British Registered Design – Basic Edition”etc.
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[20] Japan Patent Office, Explanation of the Design Law Amendment (2020) – Extension of the term of validity to “25 years from the filing date”
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[27] Japan Patent Office, “Remedy Procedures for Design Right Infringement” (JPO website), etc.
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[35] Japan Patent Office, "Secret Design System" Explanation page