(~'22/02/05) Design Act Article 10: Related Designs
This article provides an exception to Article 9 of the Design Act. This article is a unique provision of the Design Act (there are no corresponding provisions in the Patent Act, etc.).
1. Design Act Article 10(1)
In principle, a design (related design) that is similar to a certain design (principal design) cannot be registered under the provisions of Article 9. However, by utilizing the related design system under this article, it is possible to obtain registration for a design (related design) that is similar to a certain design (principal design).
The related design system was established to respond to (i) the trend where design strategies were becoming more agile and diversified, and (ii) the trend of building a unique worldview and increasing the added value of products by using a common, consistent design concept for a company's products.
2. Design Act Article 10(2)
Regarding related designs, in relation to the principal design, the application of Article 3(1) and (2) is excluded (Article 10(2)). This is because it is conceivable that the principal design may have become publicly known at the time of filing the related design due to the issuance of a design bulletin or the applicant's own implementation.
3. Design Act Article 10(3)
If a related design is similar to the applicant's secret design (prior application), and the related design is filed during the period from the issuance of the secret design (prior application) bulletin to the lifting of secrecy, it will be rejected under Article 3-2. For this reason, the application of the proviso to Article 3-2 regarding related designs is excluded until the day before the issuance of the design bulletin published when secrecy is lifted (Article 10(3)).
4. Design Act Article 10(4)
This paragraph is a provision that allows for related designs of related designs.
Specifically, a design that is similar only to a related design can be registered as a related design under the provisions of paragraph 1 by treating said related design as the principal design. Furthermore, for a design that is similar only to a related design that is linked in stages to said related design, it is also possible to obtain registration in the same manner by treating the related design to which said design is similar as the principal design.
Note that previously, to prevent an infinite chain of similarities, designs similar only to a related design could not be registered.
5. Design Act Article 10(5)
This paragraph stipulates the filing period for related designs of related designs under Article 10(4). If the filing period for a related design of a related design under Article 10(4) were to be up to 10 years from the filing of the related design treated as the principal design, a single group of designs would be permanently protected through a chain of related designs. For this reason, the filing period for a related design of a related design under Article 10(4) is set to up to 10 years from the filing of the initially selected principal design.
6. Design Act Article 10(6)
This paragraph stipulates that a related design cannot be registered for a principal design for which an exclusive license has been established.
Note that (i) establishing a non-exclusive license only for the principal design, or (ii) establishing an exclusive license for both the principal design and the related design simultaneously, is not a problem.
7. Design Act Article 10(7)
This paragraph addresses cases where multiple related designs are registered for a principal design, as it is possible that the related designs themselves are similar to each other. In such cases, the provisions of Article 9(1) and (2) do not apply between the related designs.
8. Design Act Article 10(8)
There are cases where a related design of a base design and related designs linked in stages to said related design are registered (especially in the case of an infinite chain). Exception provisions to Article 3(1) and (2) are established for these related designs among themselves.
・Design Act Article 10
(Related Designs)
Article 10 (1) An applicant for design registration may, notwithstanding the provisions of Article 9(1) or (2), obtain design registration for a design that is similar to one design selected from among the applicant's own designs for which an application for design registration has been filed or the applicant's own registered designs (hereinafter referred to as the "principal design") (such a similar design is hereinafter referred to as a "related design"), only if the application for design registration for said related design is filed on or after the filing date of the application for design registration for the principal design and before the day on which ten years have elapsed from the filing date of the application for design registration for the principal design. Provided, however, that this does not apply if, at the time of the registration of the establishment of the design right for said related design, the design right for the principal design has been extinguished under the provisions of Article 44(4), a trial decision to the effect that it should be invalidated has become final and binding, or it has been abandoned.
(2) Among the applicant's own designs that have come to fall under Article 3(1)(i) or (ii), those that are identical or similar to the principal design of the design for which the applicant intends to obtain design registration under the provisions of the preceding paragraph are deemed not to have come to fall under Article 3(1)(i) or (ii) for the purpose of applying the provisions of Article 3(1) and (2) to the design for which the applicant intends to obtain design registration.
(3) For the purpose of applying the provisions of the proviso to Article 3-2 to a design for which the applicant intends to obtain design registration under the provisions of paragraph 1, the phrase "(excluding those in which the matters listed in item (iv) of paragraph 3 of the same Article are published under the provisions of paragraph 4 of the same Article)" in the proviso to the same Article is deemed to be replaced with "(limited to those in which the matters listed in item (iv) of paragraph 3 of the same Article are published under the provisions of Article 20(4) if the applicant requested that the application for design registration be kept secret under the provisions of Article 14(1) for said earlier application for design registration)".
(4) A design that is similar only to a related design for which design registration is to be obtained under the provisions of paragraph 1 may be registered as a related design under the provisions of the same paragraph by treating said related design as the principal design. The same applies to a design that is similar only to a related design that is deemed to be eligible for such design registration, and to a design that is similar only to a related design that is linked in stages to said related design.
(5) For the purpose of applying the provisions of paragraph 1 in the case referred to in the preceding paragraph, the term "said principal design" in the same paragraph is deemed to be replaced with "one design initially selected for said related design".
(6) If an exclusive license has been established for the design right of the principal design, a related design pertaining to said principal design cannot be registered, notwithstanding the provisions of paragraphs 1 and 4.
(7) In the case where an application for design registration for a related design has been filed, if the application for design registration is for two or more designs that each fall under a related design (meaning a related design of said base design and a related design linked in stages to said related design) pertaining to a base design (meaning one design initially selected for said related design; the same applies hereinafter), the provisions of Article 9(1) or (2) do not apply to these designs.
(8) In the case prescribed in the preceding paragraph, among the applicant's own designs that have come to fall under Article 3(1)(i) or (ii), those that are identical or similar to a related design pertaining to said base design (excluding cases where the application for design registration for said related design has been abandoned, withdrawn, or dismissed, or where a decision or trial decision to the effect that the application for design registration for said related design should be rejected has become final and binding, or where the design right for said related design has been extinguished under the provisions of Article 44(4), a trial decision to the effect that it should be invalidated has become final and binding, or it has been abandoned) are deemed not to have come to fall under Article 3(1)(i) or (ii) for the purpose of applying the provisions of Article 3(1) and (2) to the design for which the applicant intends to obtain design registration under the provisions of paragraph 1.
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