Since the revised Design Act (the “Revised Act”) came into effect in 2022, we regularly introduced the details of the Revised Act in the past newsletters (Japan Patent & Trademark Update Issue 19, 20, 21, 22, and 23). In this article, we will introduce the related design system under the Revised Act.

Revision of Related Design System

In principle, so-called double patenting is not allowed in Japan while as an exception, an applicant may obtain design registration of similar design as “related design” under Article 10.

However, the following issues existed before the revisions:
(1) The period to file related designs was limited until the date of publication of the registration of the principal design (approximately 8 months). This did not provide the flexibility needed to secure protection for related designs based on long-term market trends, etc.
(2) While a design which is similar to the "principle" design is accepted for registration, a design which is only similar to "related" design, but not to the "principle" design may not be registered to prevent an unending chain of protection. As such, this provision fell short of the protection for evolving designs as it inhibited a series of similar designs from being protected.

To illustrate the issues, during a government meeting to discuss the details of the Revised Act, Mazda Motor Corporation presented a case that took approximately 8 years from designing and disclosing the first concept model to selling the last mass-production model, continuously using consistent design concepts (see the following figure).

(Source: https://www.jpo.go.jp/resources/shingikai/sangyo-kouzou/shousai/isho_shoi/document/07-shiryou/04.pdf )

To remedy these issues, the Revised Act, has instituted several changes.
Firstly, it extends the period for applicants to file a related design to 10 years. Article 10 was amended to recite that “an applicant for design registration may have a registration made for a design that is similar to a single design which the applicant has selected either from among the applicant's own designs for which an application for design registration has been filed or from among the applicant's own registered designs…, but only if the filing date of the application to register the related design… falls on or after the filing date of the application to register the principal design, and also falls prior to the last day before the passage of 10 years' time after the filing date of the application to register the principal design.”

Secondly, the Revised Act has made designs which are similar only to a related design eligible for registration. Article 10(4) was modified to recite that “a design that is similar only to the related design… may be granted a design registration by deeming the related design to be the principal design.”

Conclusion

As introduced above, under the revised Design Act, the filing period for a related design has been extended to 10 years, and the requirements for using the system have been relaxed. With these revisions, Japan's related design system now provides extended/comprehensive protection for design variations which are derived from the same design concept, thus aiding in establishing a company's signature design.

Consequently, the related design system becomes as an important tool for companies to brand themselves through design, making it crucial to consider taking advantage of this system.