Collaboration of Intellectual Property
Tetsuya Fuse, Soei Patent & Law Firm (Japan)
In recent years, efforts to coordinate each field of intellectual property have become more active in Japan. It has heretofore been convention to protect a single creation or brand through multiple industrial property rights, as well as to use the method of protecting a company’s products and services comprehensively through copyright and unfair competition prevention laws for advantageous use in business. Along with this, many in recent years have been advocating the combined use of intellectual property (IP) centered around designs.
Design rights as a right relating to the appearance of objects are an important tool for protecting the achievements from creative activities by corporations and individuals. The results of technological development appear in the appearance of some products, on the other hand, and play a functional role, in which case, the design can be used in combination with a patent. Additionally, designs that appeal to consumers by displaying aesthetics in their form and patterns also contribute to the brand formation of products and companies that provide them, thus also having significant relations with trademarks. Furthermore, the field of designs is often considered in relation to copyright and unfair competition prevention laws. As described above, designs thus have a high affinity with each field of IP, and are in position for high expectations of utilization in coordination with other laws.
The idea of IP mixing is important as a corporate market strategy, and designs are expected to play a central role. In this paper, we therefore explain circumstances surrounding coordination with each field of IP law in Japan centered around designs, by referring to examples.
- Design-Patent Coordination
The results of technological development in inventions are the subject of patents but are also the subject of design registrations when they appear in the appearance of products.
Take, for example, the golf ball shown below. It is a product in which three types of dimples – large/medium/small – are arranged in accordance with a constant rule in order to increase flying distance. This is a technology from taking into consideration the outer surface shape and aerodynamics of a ball, for which a patent was obtained. On the other hand, it is also a subject of design registration due to being a creation that manifests in the appearance of the article.
Although a patent was obtained in the case of this golf ball, it was registered after numerical limitations and the like during examination, and its scope (of rights) is not very wide. In terms of design, however, a broad scope including variations was obtained for the golf ball with large, medium, and small dimples, utilizing the related design system.
In such cases where obtaining patent rights is difficult or only limited in scope, products can be protected through solid rights by also obtaining design registrations.
The registration of both patents and designs is effectively utilized in the creation of the sanitary masks shown below.
Although the role of sanitary masks dictates that they fit the face, fitting the face overly tightly has caused the problem of the earpiece strongly pulling the ear and thus causing ear pain. In response, the manufacturer succeeded in developing a product that eases ear pain while maintaining a good fit to the face by cutting a notch in the bottom of the sanitary mask. This is subject to patenting due to being the result of technical development but can also simultaneously be eligible for pursuing a design registration due to being a creation that relates to the article’s appearance. This company, therefore, registered not only patents but also partial designs claiming its features as designs.
Furthermore, coordination between patents and designs is effectively utilized in the field of clothing. These leggings for sports were designed by identifying parts of the body prone to injury or fatigue, with a substantively X-shaped tightening portion in the front of the thigh after selection of the material and consideration of the knitting method and the like. Counterfeits are rampant in this field, however, and, in particular, patent rights do not apply to inferior goods that are not sufficiently functional and only superficially imitate patterns. Design rights are greatly utilized in this field, therefore, as countermeasures against counterfeit goods.
Some believe regarding the protection of products whose technical functions manifest in their appearance that only one right from between a patent or design should be obtained. Patents and designs have their respective merits and drawbacks, however, and the advantages of having both are significant. For example, designs have a higher registration rate than patents and, in many cases, can garner registration even for simple shapes that would be denied Inventive step as a patent. Another important point is that designs are easy to grasp at first glance in terms of exercising rights, making them excellent in terms of infringement detection and customs countermeasures. Additionally, designs are less likely to be invalided in litigation, compared to patents. Further, design rights are conducive to being exercised because infringing parties are often forced to desist before any technical disputes occur.
On the other hand, a design needs to be registered in a specific form, so patents are better at capturing concepts themselves, and they can have net-like rights in fewer cases.
It is thus desirable to effectively utilize both patents and designs based on a solid understanding of their respective merits and drawbacks.
- Design-Trademark Coordination
Many may already be practicing double-protection through designs and trademarks in the field of packaged goods. Designs and trademarks differ in the nature of their respective rights and can be used in complementary ways. Their main differences are as follows.
Additionally, standards for judging trademark distinguishability and use differ between countries have and, depending on the patterns of packaged products, judgments of non-distinctiveness may be rendered due to mere indications of the mode of use. It is effective in such cases to have the package covered by design rights. It is generally difficult to obtain rights for the actual shape as a 3-dimensional trademark, and it is often advantageous to protect 3-dimensional objects with design rights.
Novelty is required to register designs, however, and trademarks are semi-permanent rights, making them very attractive in comparison to designs, which have a fixed term of validity.
It is therefore conceivable to use the tactic of aiming for a trademark registration as a distinctive product shape after a product representing a new shape has been sold exclusively by first obtaining a design right and making it sufficiently known in the market. This tactic is effective in some cases. For example, the products below succeeded in trademark registration after having first obtained a design right and sufficiently penetrating the market.
- Coordination between Designs and Other Fields of Law
The scopes of protection for design rights and copyrights are fundamentally differentiated in Japan. That is, design rights generally protect industrial products, but copyrights do not. Therefore, character designs and pure art are protected by copyrights, for example, and protected by design rights if they are applied to articles.
Industrial products, however, have also been judged to be protected by copyrights if they are highly aesthetic and an object of aesthetic appreciation apart from their function. The dolls and T-shirt designs below, for example, were recognized as being protected by copyrights. Additionally, there have been examples of the design of a chair being recognized as copyrightable due to it demonstrating the originality of its maker, which draws attention to future developments as this has yet to become a mainstream opinion.
(2) Unfair Competition Prevention Act
Protections for designs in Japan under the Unfair Competition Prevention Act are mainly those from provisions applied in cases where labeling of well-known products causes confusion (Article 2(1)(i)) and configurations are imitated (Article 2(1)(iii)).
These can be expected to complement design law in that rights can be exercised after an incident occurs, without the processes of application filing and obtaining registration. Obstacles to exercising such rights are significant, however, as much time and money is required to prove any facts relating to notoriety or confusion in cases where product labeling and the like are imitated. There have been cases where the element of design observation from the consumer perspective was given much weight, however, and there are also examples where the scope of similarity is interpreted more broadly than the design right.
Additionally, provisions on the imitation of product configurations are interpreted as for mainly regulating exact/dead copies, such that the scope of similarity cannot be expected to be as broad as the design right, and the period wherein rights can be exercised is limited to three years from market introduction. Therefore, it may be advisable as a candidate means in cases where protection is sought for product designs for which design applications can no longer be filed or for designs not protected under current design law.
The comprehensive utilization of IP is thus important for protecting products in the market. In which case, it is essential to understand the merits and drawbacks of each field of law, and for them to thus complement each other and provide solid, layered protection. We believe that particularly in the field of designs, designs wherein the effects of functional effectiveness and brand enhancement are manifest in therein can be used as tools for protecting dominant positions in the market of a company’s products and services.