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A tour of the global design landscape

Industrial design protection is a rapidly evolving area around the world, reports Peter Leung

Two speakers from Asia, specifically China and Japan, yesterday at the AIPLA Annual Meeting discussed recent changes and some of the unique challenges that international companies will face when looking to protect their designs in their jurisdictions. They were joined by practitioners from Brazil and the United States, giving the audience a global perspective on the status of design protection.

Japan accedes to the Hague System

For Japan, Tomohiro Nakamura of Konishi & Nakamura says that one of the most important changes is the country’s accession to the Hague System for designs. The system, which will be in force in Japan next April, should bring some welcome changes for international filers. However, Nakamura says that there are several unique aspects of the Japanese system of which users must be aware.

For example, Nakamura points out that design applications in Japan generally require up to six drawings. However, other countries may require less and the Hague system allows filers to just file one drawing as part of the application. Thus, applicants filing through the Hague will have to supplement their applications with additional drawings.

Japan’s handling of grace periods is also different from many other countries. In order to take advantage of the six-month grace period for disclosures, the filer must specifically request the grace period in her application. Nakamura notes that while obtaining one is not particularly difficult, applicants from other jurisdictions sometimes do not know about this requirement.

In addition to differences in procedure, there are also substantive issues of which international filers need to be aware. For example, Nakamura points out that though graphic user interfaces (GUIs) can be protected as designs in Japan, the GUI must be attached to a specific device. Thus, the scope of protection is not as broad as users may receive in other jurisdictions.

Furthermore, Nakamura says that though the Hague System is a positive development for rights owners, there are still reasons for making direct filings in Japan. In particular, he notes that direct filings are handled very quickly. It is common for a design right to be granted within six months of filing in Japan, while filings under the Hague System will take one year.

Some applicants may also prefer direct filings because of differences in the maintenance fee payment schedules. Filers under the Hague System must pay maintenance fees every five years, while those with design rights obtained through the national system must pay fees yearly. While the amounts that are paid do not differ, Nakamura notes that some design holders prefer to make smaller annual payments rather than pay five years’ worth of fees at once.

China’s buffet of protection

Christopher Shaowei of NTD Law Office will discuss the complex web of protection available for designs in China, particularly for three-dimensional objects.

Shaowei notes that 3D objects can be covered by four different types of protection – in addition to registered design patents, the rights holder can also get copyright and trademark protection, and even protection for packaging or decoration of a well-known product, a concept that shares some similarities with trade dress in other countries.

Rights holders then need to be aware of the advantages, as well as the limitations, of each type of protection. For example, while a rights holder must file for a design patent or a 3D trademark, copyright vests automatically with the creation of the work. However, Shaowei notes that the protection for just copyright alone is relatively weak, in part because damage awards are generally not very big. By contrast, a 3D trademark may be considered a stronger form of protection, but it can be difficult to establish the requisite level of distinctiveness in order to get the registration.

Meanwhile, a rights holder can get a design patent if the object is novel. Shaowei notes that it is generally easier to obtain design patents in China than in the US. While design patents in the US can only cover ornamental features (ie not functional features), Chinese design patents can cover a mixture of both functional and ornamental features.

Protection for the packaging or decoration of a well-known product can also be a useful tool for rights holders, but Shaowei warns that the key requirement here is that the product is well-known. Thus, a new product that is new to the market cannot receive this protection because it is by definition not well-known.

Once a product has been in the market for a few years, a rights holder wishing to obtain this type of protection must prove that the product is well-known. Though the law is silent as to how this is to be done, Shaowei notes that in practice the process is very similar to establishing well-known trademark status. Thus, the rights holder should seek to present the same type of evidence one would to establish well-known trademark status, such as sales numbers, examples of media coverage and samples of advertising used in the market.

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