Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

1. Sorry, Japan has not accepted a multiple design system yet

Geneva Act of the Hague Agreement accepts a multiple design system in which one application can include more than one design.  Such multiple design system is applied in many countries and regions with non-substantive examination system, e.g., Europe China, and in some countries with substantive examination system, e.g., the U,S and Korea.

On the other hand, very unfortunately, Japan dose NOT allow multiple design applications.  The Japanese design law applies a “one design per application system”, therefore, when claiming priority based on a multiple design application, the application has to be separately filed into more than one application according to the number of the designs.

2. What does “one design” mean in Japan?

In the Japanese parctice, “one design” is deemed to include only one shape per one article.  Here are the points to be noted regarding the meaning of “one design ”.

1. Difference between a finished design and a part

If one design is applied to a watch (i.e., a finished product) and another is applied to a face of watch (i.e., a part), then these designs have to be separately filed in Japan.  In the Japanese design system, a whole article and a part of an article are treated different. The explanation is given that both “use” and “function” (the factors which determine the similarity of articles) are regarded different between them under the Japanese design system which dose not allow vague description of article.

2. Difference between a design for a whole article and a design for a part of an article

If one design is applied to a design for a whole watch (i.e., a design for a whole article) and another is applied to a part of the watch (i.e. a design for a part of the article with broken lines), then these designs have to be separately filed in Japan.  In the Japanese design system, a design for a whole article and a design of a part of the article are treated as different designs.  The explanation is given that means by and objects for which design registration is sought are deemed different between them.

3. Different shapes

Even if designs with similar shapes are applied to the same whole article /the same part of an article, they have to be separately filed in Japan.  As long as the shapes are not completely identical, the designs have to be included in different applications.

However, when the designs are similar to each other, you can utilize the related design system in choosing one of them as a principle design and others as related deigns (please refer to our previous post: http://en.aigipat.com/design/articles/detail_54.html ).

Please be noted that broken lines in an application for a design of a part of an article play a significant role in the determination "position (the relative position in the article)", "size (the absolute size )" and "area"(the relative area in the article) in judgment of the scope of the design.  If the broken lines in two design applications indicate different positions, sizes and areas, then the two designs would be treated as having different shapes, thus they have to be separately filed.

3. Our comment

As mentioned above, the basic idea is that designs in a multiple design application have to be filed separately according the number of the designs, which will result in increase in cost.  Therefore, we recommend that you choose the designs which are really need for the Japanese market and obtain the appropriate scope of design rights utilizing the related design system.

End of report

HIROTA, Miho
AIGI Intellectual Property Law Firm