JAPAN Law and Practice Contributed by: Takahiro Inoue, Tomohiro Kuribayashi, Yoshiyuki Takanashi and Daisuke Inaba, TMI Associates
for three years from the first introduction of the goods into the Japanese market. This includes the external and internal shape of goods, as well as patterns, col- ours, gloss and texture perceptible during ordinary use. Product containers and packaging may also constitute the “configuration of goods” where they are integrated with and inseparable from the goods themselves. Product parts independently traded in the market, as well as combinations of goods, may also constitute protectable “configurations of goods”. Trade dress may also be protected under Article 2, Paragraph 1, Items 1 and 2 of the UCPA. Although product configuration is not generally regarded as inherently functioning as a source identifier, Japa- nese courts have recognised protection for various product configurations, including bags, shelving sys- tems, medical devices, cosmetic masks and even the exterior appearance of restaurants in certain circum- stances. 4.2 Requirements for Protection Under the Design Act, a design must satisfy the fol- lowing requirements: • industrial applicability; • novelty; • creative non-obviousness; • no conflict with another prior-filed design applica- tion; • compliance with the first-to-file rule; and • the absence of statutory grounds for refusal, including designs consisting solely of shapes indis- pensable for securing the function of the relevant article, building or image. Under Article 2, Paragraph 1, Item 3 of the UCPA, nov- elty and creative non-obviousness are not required. However, configurations indispensable for securing product function are excluded from protection, as are ordinary configurations commonly found in simi- lar goods. Protection extends only to configurations developed and marketed through the developer’s own investment and effort, and does not extend to con- figurations derived from imitation of another person’s goods.
Under Article 2, Paragraph 1, Items 1 and 2 of the UCPA, product configuration is protected only where it functions as a source identifier. Courts require: • distinctiveness compared with similar goods; and • well-known status among relevant consumers and traders. Configurations inevitably resulting from functional requirements are generally excluded. 4.3 Registration and Term Applications for design registration are filed with the JPO together with drawings, photographs or other visual representations identifying the relevant article, building or image. The JPO then conducts a substan- tive examination, including review of novelty and crea- tive non-obviousness; if grounds for refusal are raised, the applicant may submit arguments or amendments. After allowance and upon payment of the registra- tion fee, the design right is registered and comes into effect. Japan is also a contracting party to the Hague Agreement, allowing applicants to designate Japan through an international design application. Under standard examination, the average period from filing to the first office action is approximately six months, and the average period from filing to registra- tion is approximately 6.8 months. Accelerated exami- nation is available for eligible applications, including designs already in use or planned to be used. Applicants without a domicile or residence in Japan are required to act through a local representative, par- ticularly where responses to office actions are nec- essary. Official fees for a single design application include a filing fee of JPY16,000 and annual registra- tion fees after registration (eg, JPY8,500 for the first year and JPY16,900 per year from the second year onward). A registered design is protected for 25 years from the filing date and is not renewable. 4.4 Enforcement and Remedies Design infringement requires:
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