What is a design?
Designs are a form of intellectual property that protects the appearance of a product (its look and feel) rather than how it functions. Protection can relate to the whole product or to a part of it.
Registering a design grants the holder the exclusive right touse that design, so others may not copy the design as long as the design registration is in force.
Design rights are available worldwide and can be obtained via national or regional intellectual property offices.
This article focuses on a comparison between design protection in Europe and in Japan.
Hague system
The Hague System allows applicants to file a single international application with the World Intellectual Property Organization (WIPO), potentially securing protection in up to 99 countries.
Both the European Union and Japan are contracting parties to the Hague System. As a result, a single international application filed with the WIPO may designate the EU and/or Japan to seek protection there. The European Union Intellectual Property Office (EUIPO) and/or the Japan Patent Office (JPO) will then examine the international registration under their respective laws before deciding whether it can be registered there.
National and regional filing route
In addition to the Hague System, applicants may file design applications directly with national or regional offices such as the EUIPO or the JPO.
In all cases, the application must meet the substantive and formal requirements of the office with which it is filed. Here we focus on the differences between the requirements of the EUIPO and JPO.
What qualifies as a design?
As mentioned before, a design is about protecting the appearance of (part of) a product, but the scope of what constitutes a “product” differs between jurisdictions.
In Europe, a product is defined as:
“Any industrial or handicraft item, including, inter alia, parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs.”
This definition covers a broad range of subject matter, including graphic user interfaces (GUIs), architectural designs, and animated designs.
In Japan, a design may protect:
- an article (a tangible, movable object distributed in the market),
- a building (an artificial structure fixed to land),
- an interior, or
- a graphic image used to operate a device or displayed as a result of its functioning.
Animated designs are also registrable in Japan. However, unlike Europe, Japan does not allow protection for graphic symbols or typographic typefaces as standalone designs.
Grace period
Both the EUIPO and the JPO apply a 12-month grace period preceding the filing or priority date. During this period, disclosure of the design will not destroy its eligibility for protection, provided:
- the design disclosed is identical to the one filed, and
- the disclosure was made by the designer or their successor in title.
In Japan, the applicant must additionally submit documentary evidence identifying the date and manner of disclosure (for example, publication details, exhibition information, or press releases).
Claiming priority
In both Europe and Japan priority may be claimed from an earlier identical design application, provided that the subsequent application is filed within 6 months of the earlier filing.
In Europe, claiming priority can be done at the filing of the subsequent application or 1 month after filing.
In Japan it is only possible to claim priority by filing a declaration at the time of filing.
Representation
Applicants residing outside of the EU or Japan must appoint a qualified representative if they want to file a design application in the respective jurisdiction.
Contents of the application
In both jurisdictions, the application must clearly define the design; however, there are a few differences in how a design has to be identified between the offices.
For the EUIPO it is required to provide a “clear representation of the design”, which can be in the form of graphic or photographic images in black and white or in colour. No more than seven views of the design may be provided. Additionally, when the design is an animated design, moving images may be provided.
Like in Europe, the JPO requires a representation of the design in the form of graphics or photographic images in either black-and-white or colour. But, in Japanthere is no limit to the number of views that can be provided, and it is not allowed to use moving images to show an animated design.
Additionally, in Japan it is required to provide a written description of the design as well.
Classification
In both Europe and Japan, designs are given a class that will indicate what type of goods they relate to. The internationally accepted system is the Locarno Classification system.
Besides the Locarno Classification, Japan additionally has its own classification system, which works in a similar way.
Multiple-design applications
In Europe a design application may contain up to 50 designs. The designs do not need to be related, similar or even be classified in the same Locarno class.
In Japan, a design application may also contain multiple designs, however, the designs have to be related to the same product or same overall design concept.
Substantive examination
In both Europe and Japan, the design application is examined before granting registration.
At the EUIPO, design must be:
- Novel, meaning no identical design has been made available to the public; and
- Of individual character, meaning its overall impression differs from that of any earlier design. In other words, the design shouldn’t remind people of an already existing one.
At the JPO the standard is slightly different. The design must be novel, but also must be creative, which in this situation means that the design could not easily be created by a person skilled in the art.
Related designs (Japan only)
Japan has a special system that is referred to as “Related Designs”. These are designs which are highly similar (not identical) and belong to the same applicant. An applicant may designate one application as the Principal Design. The later filed similar designs can then be registered as a Related Design.
While designation can be made after filing, it is procedurally simpler to do so at the time of filing. This system has no equivalent in Europe.
Registration and maintenance
Once the examiner confirms that all requirements are met, the design is registered and published.
A registered European design (REUD) is valid for 5 years. After these 5 years it can be renewed every 5 years up to a total of 25 years.
In Japan a design also enjoys up to 25 years of protection, but the renewal fees may be paid annually or in advance for multiple years.
In Europe, third parties may file design invalidity proceedings at the EUIPO to challenge the validity of a registered design. In Japan this is referred to as a “trial for invalidation”.
Rejection
In Europe, even if a design is rejected, the design application will be published. In Japan, however, design applications that were filed via the national route will not be published if they are rejected. A case filed through the Hague system designating Japan, will be published when rejected.
Publication
When the decision to grant or reject is made, the design will be published.
However, an applicant can request deferment of publication for their design to keep their design secret for a certain amount of time.
In Europe, this deferment can keep a design secret up to a maximum of 30 months (2.5 years).
In Japan, a design can be kept secret slightly longer, with a maximum of 3 years.
Concluding remarks
While Europe and Japan share many similarities in design protection, particularly through the Hague System, important differences remain in subject matter eligibility, examination standards, filing formalities, and post-registration procedures. Understanding these distinctions is essential when developing an effective international design protection strategy.
Need help protecting your design internationally?
Enlisting the help of a professional representative specialising in designs is of the utmost importance.
