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Branding by Design

Intellectual Property

2022.02.03

Author: Shinichiro Hara, Attorney at Law/Patent Attorney

1. The first branding strategy to be considered using intellectual property is the naming of the product, etc., called the trademark, but there is also a branding strategy focused on the “design” of a manufactured product.
In 2019 a revision of the Design Act was undertaken to expand the scope and increase the period of protection, etc.. Among those revisions, the “expansion of the related design system” has a great effect on the branding strategies of an entity.
In this article we would like to introduce an outline of the new related design system.

2. When developing a design, one design concept can produce many derivative variations of designs at the same time. The related design system protects the variation design group equally with the goal of being able to exercise rights based on each design, and was incorporated in the revisions to the Design Act in 1998.
In order to obtain registration as a related design, (i) the related design must be a design similar to the principal design (one design selected from the variation design group to be the principal design), and (ii) the related design must be applied for by the day prior to the day of publication of the principal design, and other conditions were applied. In addition, the principal design was published around eight months after the application for the principal design and a design that was not similar to the principal design could not be registered.
For that reason, it was pointed out that long term protection of designs that progress based on trends in the marketplace, such as automobiles, tablet terminals, GUI designs, etc., where the product has annual model changes as the basic design concept is developed, cannot be protected.

Considering these circumstances, the registration requirements for the Design Act have been changed as set out below.

(1) It is now possible to register a design that is only similar to a related design.

Under the prior related design system, a design that only is similar to a related design but is not similar to the principal design could not be registered because it might lead to an infinite chain of associations. However, branding strategies that add improvements on the floor to the principal design little by little while watching the market trends have increased. By the present revisions, it has become possible to register a design that is similar to other related designs even if it is not similar to the principal design.
In other words, even if the similar scope of the principal design is exceeded, if there are similarities with the related designs then it can be taken as a variation of the related designs and be registered as a design. Compared to the structure of the prior design system, this is a significant change.

(2) Time frame to apply for a related design registration

Under the prior related design system the deadline for filing a related design application was the day before the publication date of the principal design, but due to the revisions the deadline is now the date prior to 10 years after the application date for the principal design and the deadline has been greatly extended.
As a result, it has become possible to widely protect the annual model changes that are repeated design variations over the long term.

(Source: 16th Patent Office Design Investigation Standards WG, material 5)

3. As above, the expansion of the related design system under the revisions to the Design Act are significantly bold and represent a clear stance to widely protect branding strategies over the long term based on the product designs of entities.

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