Multiple Design Applications in Japan
Previously, under the Japanese Design Act, when registering for protection of multiple designs as part of a collection, each individual design would require a separate application in order to obtain registration of the design collective. The Japanese Design Act followed the “one application per design” principle that a design application should be directed to only one design.
The Design Act was revised on a number of items and came into effect in 01 April 2020. However, two items had a delay in enforcement, one being the “abolition of article classification table” and the other being “collective application for multiple designs”, the second of which will be discussed here.
The enforcement date for these items was decided as 01 April 2021. Therefore, from 01 April 2021, it is now possible to file for registration of multiple designs in Japan under a single application.
But what does this change mean?
Nothing has changed in terms of the examination and grant process in Japan by the enforcement of the “collective application for multiple designs”. The examination is performed for each design included in the single application, and the design right will be granted for each design (assuming they meet the examination requirements). As mentioned above, the designs have to be part of a collective to be submitted in a single application, with variations in the collective overall design allowed. For example, it is possible to file a single application with designs relating to shape, surface decoration, individual elements, etc., as long as they relate to the same product or overall design concept. More specifically, it is now possible to file a single application in Japan to a design detailing the outline shape of, say a bottle, a design detailing the features of the label of such bottle and a design illustrating the design of the bottle cap.
The revised Design Law, in the aspect of multiple designs in a single application, brings the law in line with other jurisdictions, such as Europe, US, China and Korea, which all allow multiple designs in a single application. Nevertheless, although the change in law streamlines the design application process in Japan to be similar to that of the listed jurisdictions, it should be noted that the examination of designs and interpretation of design rights under Japanese law is still different from such jurisdictions. Therefore, achieving multiple registered designs in Europe does not mean that the same will be granted in Japan. The requirements for the scope of protection need to be met at the Japanese Patent Office (JPO) for a design to be registered.
Even although Japan is now part of the Hague Agreement (as from 2015) and overseas applicants can file design applications through the Hague system, it is always recommended to use a local qualified attorney in order that your application of multiple designs meets the necessary requirements of Japanese Design law. At Murgitroyd we work closely with selected Japanese attorneys to ensure the likelihood of design registration for multiple designs is successful.
The cost of filing a design application including multiple designs in Japan is based on the number of designs in the application and, unlike Europe and UK, the official fees due for each design in the application do not reduce as the number of designs increase.
If you would like advice on filing design application in UK or Europe, or for filing foreign design applications, such as in Japan, please do not hesitate to contact us at Murgitroyd where our dedicated Designs Team will be able to assist.