1. Introduction: Japan’s revised Design Act comes into force

 

A significant change was brought about by the revision to the Japanese Design Act in 2019, opening the path for design registration of images that are stored only on cloud i.e. images that are not indicated on an article when not in use, as well as architectural structures (which are “real estate” rather than “articles”) and interior designs.

 

The Japan Patent Office (JPO) had started accepting applications involving these new subjects for design protection from April 1, 2020, and several dozens of designs have already been registered, for each subject matter.

 

Some of successful examples of registration are graphic images projected onto a road surface from a vehicle (e.g. motorcycle); a commercial building; a station building; a bookstore interior; and an office interior.

 

Diagram (1)Example of registered designs under the revised law

 

The Design Examination Guidelines were also revised to be in line with the Design Act, setting out the criteria for assessing similarity in purpose and function of articles, images, buildings, etc.

 

Under the Japanese design systems, the right to a registered design can be exercised against a design determined to be similar, and designs are considered similar to each other when their purpose and function are similar, in addition to the similarity in form under the design system. Therefore, it is of great importance to be able to determine whether there are similarities in the purpose and function of designs.

 

In consideration of such a general principle, how the similarity in purpose and function is determined for images, buildings and interior designs, in addition to articles, is a topic of much interest.

 

In such context, this article is intended to describe the concept of similarity in purpose and function for the new types of subject matter protected under the revised Japanese Design Act (images, buildings and interiors) and how they compare with conventionally protected articles.

 

2. General concept of purpose and function in designs

 

Consistent with the practice under the law before the amendment, design similarity is determined by determining the purpose and function of the compared designs by considering, for example, the intended use and the condition of use, for respective designs.

 

For a design for which registration is sought for part of an article (so-called “partial design”, or “dotted-line practice”), a design is considered to be similar to another design where there is (i) similarity between the articles per se as well as (ii) similarity in purpose and function with respect to the parts for which registration is sought.

 

3. Determination of similarity in purpose and function of new subject matters for design protection

 

(1) Image designs

Even under conventional Japanese design practice, design registrations were granted for images appearing on displays of articles. Such registrations were possible if the images were part of an article that had already been incorporated, for example, during the manufacturing stage.

 

With the latest revision, images that exist on cloud, separate from an article, are now also subject to registration. For example, an image on the Internet without a specified article to display the image (such as US design registration D599,372) is subject to protection under the revised law.

 

Diagram (2)Independent image design registered before the USPTO

 

Images subject to protection under the Japanese design system can now be classified into the following two categories:
(a) designs containing an image as part of an article; and
(b) designs consisting solely of an independent image.

 

Image designs are similar to each other if the following requirements are met under the revised Examination Guidelines:
(i) the purpose and function are similar to each other in terms of the whole design;
(ii) the purpose and function of the images per se are similar;
(iii)the forms of the images are similar.

 

It is worth noting that the purpose and function of the whole designs are compared under criteria (i), instead of comparing the purpose and function of the articles.

 

In other words, according to the guidelines, if there is similarity in criteria (ii) the purpose and function of the images and (iii) the forms of the images, the two designs may be considered similar even if the concerned articles are dissimilar, or even in the case of an image design forming part of an article and a design solely consisting of an independent image.

 

For example, a design solely consisting of an independent screen image providing electronic mail transmission and receiving function is not considered similar in purpose and function to a “refrigerator” article provided with an electronic mail transmission and receiving function from the perspective of the entire design. In contrast, a design consisting solely of an independent screen image providing electronic mail transmission and receiving function is considered similar in purpose and function to a “computer” (smart phone, etc.) article having an electronic mail transmission and receiving function from the perspective of the entire design.

 

This is due to the difference between the information processing function of computers, which is typically applied to a variety of articles, and the specific function of refrigerators, which is to refrigerate and store food, as well as any difference in degree to which the function possessed by each article is expressed as a feature in terms of appearance.

 

Diagram (3)Example of cases where similarity/dissimilarity in purpose and function is found between independent image design and article including image(Design Examination Guidelines)

 

For a design application comprising solely of an independent image, similarity in terms of purpose and function is considered in light of how similar the roles of the images are when operated and displayed.

 

In filing a design application for a design consisting solely of an independent image, the purpose and function need to be stated in the application form. The stated purpose and function affect the scope of the design right. The Examination Guidelines explains that purpose and function should be described with the following level of details: “screen image for displaying information, screen image for content viewing operation, screen image for transaction, screen image for learning, screen image for setting sound volume, etc.”

 

The Guidelines provide a specific example in which a “screen image for product inventory confirmation” and a “screen image for conference room reservation” are determined to be similar images because of their similarities in the purpose and function of giving instructions to select one of several choices and display the selected information.

 

(2) Architectural structure designs

 

The revised Design Act provides protection for some civil engineering structures as well as buildings under the category of architectural structures. In filing an application for registration of an architectural structure design, the request form needs to include the description of the purpose and function of the design to facilitate understanding, for example, department store, school, temple, bridge, dam, and stadium.

 

For building designs, the revised Examination Guidelines suggests relatively relaxed criteria for similarity in purpose and function. Specifically, designs of commercial facilities, houses, factories, schools, hospitals, and art museums are considered to be similar in purpose and function because they are all buildings in which people spend time.

 

Diagram (4)In principle, all buildings share a common purpose and function

 

In contrast to building designs, the similarity of civil engineering structures is determined after a more detailed comparison in terms of purpose and function because of the variety of purposes and functions inherent to the respective structures. Therefore, it is also possible to determine dissimilarity in purpose and function between civil engineering structures, as well as between a civil engineering structure and a building.

 

(3) Interior designs

 

The revised Guidelines defines a broad scope of similarity in purpose and function for interior designs since all interior designs are considered similar in purpose and function. For example, the following interior designs are judged to have similar purposes and functions: restaurant, office, hotel guest room, car showroom, barber shop, home kitchen, classroom, hospital room, and airport terminal lobby interiors.

 

In short, the interior designs having similar configurations are judged to be similar in terms of the design as a whole, even though the compared interior designs have different purposes when analyzed in detail.

 

4. Similarity between designs of different categories (articles, architectural structure and interiors)

 

Under the revised law, designs of different categories, such as articles, images, architectural structures, and interiors, can be considered similar in purpose and function if the designs are used for similar objectives and are under similar conditions of use.
For example, the “house” as an architectural structure and the “prefabricated house” as an article are similar in purpose and function because both of these are places to live.

 

Furthermore, design registration can be granted to all of the following designs having a bathroom configuration as their feature:
– A bathroom as a partial design of the interior structure of an architectural structure;
– An integrated unit structure (article) that can be independently traded;
– The Interior of a bathroom in houses

 

The above bathroom featured designs are considered similar in purpose and function since the intended use and the condition of use are the same.

 

In short, the designs of bathrooms can be registered under the categories of architectural structure, article, and interior, and these design registration rights may be exercised against one another. In other words, a feasibility analysis for bathroom designs needs to cover all the categories.

 

Diagram (5) Similarity may be found between different categories (article, architecture and interior)
(Figure: Design registration No. 1501654 “bathroom”)

 

5. Summary

 

The principle applied to determine similarity of conventional articles is also applied to the new types of subject matter protected under the revised Design Act, while it is noteworthy that the actual practice under the revised law allows a broader understanding of the scope of similarity due to a less strict determination of similarity between articles, images, architectural structures, and interiors in terms of purpose and function of designs.

 

This reflects an examination practice that places greater importance on the role of the design features, and the impression of the designs from the perspective of consumers in the marketplace, in consideration of practical circumstances involving design creation.

 

These examination criteria will affect Japanese design practice since they need to be well considered in determining whether to file an application through conducting a search that includes conventional articles.

 

From now on, it will become increasingly important to approach Japanese design practice with a greater understanding of the value of design in terms of realizing purpose and function, how consumers respond to designs in the marketplace, and other circumstances involving design creation.