As we introduced in our NEWSLETTER (Oct. 4, 2019), the Design Act was revised greatly and enforced on Apr. 1, 2020.  The major revised points include: designs of architectures and interior were added to the subject of protection; protection of graphic images on screens was expanded; the related design system was expanded; and the duration of design rights was extended to "25 years from the date of filing of the application."  The "expansion of the related design system" particularly attracts attentions from applicants in Japan.  Therefore, in this article, we will explain the revised points of the Design Act enforced in this April, regarding the related design system as well as the system before the revision.

1. Related Design System
  In the field of creating designs, wide variations of designs similar to each other are often created continuously from one concept.

  However, since the design right is an exclusive right, if two or more rights having overlapping protection scopes are granted to different persons for one creation, respective right holders cannot work the design.  Therefore, in order to avoid such a situation, there is a provision regarding the prior application (Article 9 of the Design Act).

  The related design system is an exception to this prior application provision, and protects a group of variation of designs having overlapping right scopes (similar to each other) so that the rights of the designs can be executed separately as long as the applications are filed by one applicant.

2. Related Design System before Revision
  As illustrated in the figure below, one of the similar designs was registered as a principal design while the others were registered as related designs, and thus, the scope of effect could be expanded.

  However, the following limitations existed and led to the problems described below.
  *The related design needed to be filed before the date of publication of the Design Bulletin for the principal design.
  *The registration was not granted for the design which was similar only to the related design.

  The substantial period from the filing of the application to the publication of the Design Bulletin is about 8 months, and it was impossible to file the applications for all the variation of designs within the period.  Even if the application for the design similar to the principal design was filed separately after the period, the application was rejected based on the applicant’s own design already registered, and thus, the similar design could not be protected even if it is the latest form of design.  In addition, although designs change according to the long-term market trends, the design which was not similar to the principal design but similar only to the related design could not be registered, and therefore, the group of variation of similar designs was not protected effectively.

3. Related Design System after Revision
  (1) The period for filing related-design application was extended to before the date 10 years has elapsed from the filing date of the application for the principal design (if priority is claimed, from the priority date).

  Note that:
  *the related design cannot be registered if the principal design has been extinguished at the time of registration of the related design; and
  *a design which was applied or registered before Mar. 31, 2020 can also be assigned as a principal design.

  (2) Designs similar only to related designs came to be registerable.

  Note that:

  *the application needs to be filed before the date 10 years has elapsed from the application of the first principal design (basic design); and

  *the design (related design B) similar to the related design A is registerable as long as the related design A is valid even if the basic design which is the principal design for the related design A has been extinguished.

  (3) Other additional revised points
  *The duration of rights of related designs is 25 years from the filing date of the application for the basic design.

  *The prior application provision (Article 9 of the Design Act) is not applied to a plurality of applications of related designs which share the principal design (basic design) so that the related designs are not rejected based on the applicant’s own design, etc.  In addition, in the examination for the related-design application, the Design Bulletin of the basic design and the Design Bulletins of other related designs which share the basic design, and products on which the own design similar to the basic or other related designs is worked, are not considered as materials showing grounds for refusal on the basis of Novelty (Article 3, paragraph 1 of the Design Act) and Creative Difficulty (Article 3, paragraph 2 of the Design Act).

4. Conclusion
  Foreign applicants may also have experienced a case the application is rejected because the filed design is similar to the applicant’s own design registered earlier, and they have to give up acquisition of rights in Japan. However, in the new related design system, such a design can be protected if the additional application is filed within 10 years from the application of the design registered earlier.  In addition, also in a case variations of designs are applied simultaneously, it is recommended to file the applications once as related designs instead of filing the application for each design separately.  If they are registered as the related designs, a scope of similarity of the principal design becomes clear, which allows you to make a response to an infringement easily.  Please use the related design system to acquire a group of rights more effectively.