1. Summary of the case
 
 One application per design is stipulated in the article 7 of the Japanese Design Act, so that an application for design registration shall be filed for each design in accordance with a classification of articles as specified.
 This is the case of a litigation cancelling the trial decision which rejected the request for a trial against examiner's decision of refusal against the application of design registration and a point of issue is whether or not the decision of requirements of one application per design is appropriate or not.
 A plaintiff filed an application for design registration specifying "a frozen dessert" for the article to the design on March 7, 2013, and examiner's decision of refusal was given on May 7, 2014. The trial against examiner's decision of refusal was requested with providing an amendment of the article to the design to "a frozen dessert with a container" on August 25, 2014. The Japan Patent Office decided that "The request of this trial should be rejected." on November 20, 2015 and the plaintiff filed a litigation cancelling said trial decision, contesting about "illegal criterial of trial decision made by Japan Paten Office (The first reason for cancellation) and "error of the decision with respect to "one design nature" of the design as claimed in the application concerned (The second reason for cancellation). The Intellectual Property High Court accepted plaintiff's request since it found ground therefor.

 
 
2. Summary of court's decision
 
[1] Regarding the illegal criteria of trial decision made by the Japan Patent Office (The first reason for cancellation)
Regarding the decision of the article 7 of the Design Act which is "An application for design registration shall be filed for each design in accordance with a classification of articles as specified in an Ordinance of the Ministry of Economy, Trade and Industry," as shown in the trial decision made by the Japan Patent Office, the plaintiff claims that the decision criteria of trial decision which is "The requirement of one design should be considered from the viewpoint of cohesion as a design creation and, in particular, it is required, concerning the creation of design, that the detailed creation of each applicable part over the whole creation is considered and adjusted as it is requisitely related each other as well as is comprehensively designed and sculpted as a whole, and, further, the details of each creation made to each of such applicable parts is assessable as a cohesive unit," is illegal by itself.
 
Reviewing this case, it is interrupted that the article 7 of the Design Act stipulates that the application for the design registration should be filed for "each article" and "each configuration."
 
"Each article" shall be interrupted to mean a single article having one specific purpose and function.
 
"Each configuration" shall be interrupted to mean that the configuration shown in the drawings in the application for the design registration should be a single configuration having overall cohesion.
 
"The detailed creation of each applicable part is considered and adjusted as it is requisitely related each other," "and is comprehensively designed and sculpted as a whole." described in the decision criteria of the trial decision, is substantially equivalent to "the article to the design should have one specific purpose and function as a whole."
 
Similarly, "the details of each creation made to each of such applicable parts is assessable as a cohesive unit" is substantially equivalent to "the configuration shown in the drawings in the application should be a single unit having overall cohesion."
 
Therefore, apart from the expression, the decision criteria shown in the trial decision is substantially equivalent to the same described above.
 
The plaintiff's assertion is not acceptable as stated above.
 
 
[2] Regarding the error of decision with respect to "one design nature" of the design as claimed in the application concerned (The second reason for cancellation)
 
(1) Unity of article
 
In the event that the article embodying the application for design registration is not in the classification of the articles listed in the appended table 1 of the Design Act Enforcement Regulations, the decision of whether or not such article is one article should be made by deciding whether or not such article is one article having a single specific purpose and function in light of common practice, after referring to the description of "the article to the design" of the application form and "the explanation of the article to the design" and considering the following viewpoint of:
･ details, manufacturing method, form of distribution and usage form of the article embodying the application for design registration,
･ whether or not a part of the article embodying the application for design registration can separate from the other part with maintaining its appearance, and
･ whether or not such part becomes individually the subject of transaction under the normal condition and the like.
 
The article embodying the design of the design as claimed in the application concerned is "a frozen dessert with a container" and is not in the classification of the articles listed in the appended table 1.
 
Reviewing from its name, it should be interrupted that "a frozen dessert" is the main body and "a container" is subordinated in the name of "a frozen dessert with a container."
 
It is described in "the explanation of the article to the design" that "a frozen dessert" to the design as claimed in the application concerned is produced by filling up material of frozen dessert in a container and sequentially placing material of sweet bean past and material of rice cakes in order thereon, and thereafter cooling and hardening all material.
 
"A frozen dessert" which consists of the material of frozen dessert, sweet bean past and rice cakes is distributed with "a container."
 
In considering the use cases, we would expect that "a frozen dessert" is eaten while it is usually in "a container" by scooping it with a spoon.
 
It is recognized in each stage of production, distribution and use that "a frozen dessert" keeps the integral state after filling it up in "a container" and cooling and hardening it.
 
It is understood that it would not be easy to separate "a frozen dessert" to the design as claimed in the application concerned from "a container" while keeping such integral state.
 
Since "a frozen dessert" is never separated from "a container" in any stage from production to distribution and use, we cannot say that "a frozen dessert" becomes individually the subject of transaction under the normal condition while being separated from "a container."
 
In comprehensive consideration of these reviews, as it is recognized that "a frozen dessert with a container" is a single article having a specific purpose and function under common practice, we cannot say that only a part of "frozen dessert" is a single article having any purpose and function which is independent from a part of "a container."
 
(2) Unity of configuration
 
As a matter of formality, more than two configurations are not described in the drawings of the design as claimed in the application concerned.
 
We cannot say substantially that more than two configurations are not described since the drawings show the state of putting the frozen dessert in the container and there is no gap between the frozen dessert and the container so that they are in the state of a lump.
 
Therefore, the configuration of the design as claimed in the application concerned meets the unity of configuration.
 
The conclusion stated above should be approved under common practice since the following examples of registered designs correspond thereto.
 
i) Design registration No.1317997
 
[The article to the design] Solid cosmetic with a container

 
 
ii) Design registration No.1154256
 
[The article to the design] A frozen dessert with a stick

 
 
iii) Design registration No.1211064
 
[The article to the design] Fish paste with a plate

 
 
 
3. Comments
 
In this judgement, the illegality of the decision criteria of the trial decision of the article 7 of Design Act concerning to the first reason for cancellation is denied and the plaintiff's assertion is not accepted. The main point of this judgement is the second reason for cancellation which is the decision of "a single design nature." Whether or not the design complies with the requirement of the article 7 of Design Act is decided in the viewpoint of "unity of article" and "unity of configuration," and further the judgement shows the details to decide "unity of article" "in light of common practice." This will serve as a good reference in the future when filing an application for the article which is difficult to decide whether or not it is "a single design."
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