JP003: Designs, Law (Consolidation), 13/04/1959 (14/12/1994), No. 125 (No. 116)
Design Law
(Law No. 125 of April 13, 1959,
as last amended by Law No. 116 of 1994)
Chapter I
General Provisions
(Purpose)
1. The purpose of this Law shall be to encourage the creation of designs by promoting their protection and utilization so as to contribute to the development of industry.
(Definitions)
2.-
(1) "Design" in this Law means the shape, pattern or color or any combination thereof in an article which produces an aesthetic impression on the sense of sight.
(2) "Registered design" in this Law means a design for which a design registration has been effected.
(3) "Working" of a design in this Law means any act of manufacturing, using, assigning, leasing, importing or offering for assignment or lease (including displaying for the purpose of assignment or lease-hereinafter the same) of, the articles to which the design has been applied.
Chapter II
Design Registration and Applications Therefor
(Registrability of designs)
3.-
(1) Any person who has created a design capable of being used in industrial manufacture may obtain a design registration therefor, except in the case of the following designs:
(i) designs which were publicly known in Japan or elsewhere prior to the filing of the design application;
(ii) designs which were described in a publication distributed in Japan or elsewhere prior to the filing of the design application;
(iii) designs which are similar to those referred to in the two preceding paragraphs.
(2) Where a design could easily have been created, prior to the filing of the design application, by a person with ordinary skill in the art to which the design pertains, on the basis of a shape, pattern or color or any combination thereof widely known in Japan (other than a design referred to in any of the paragraphs of the preceding subsection), a design registration shall not be effected for such a design, notwithstanding the preceding subsection.
(Exceptions to lack of novelty of design)
4.-
(1) In the case of a design which has fallen under paragraph (i) or (ii) of Section 3(1) against the will of the person having the right to obtain a design registration, such a design shall be deemed not to have fallen under said paragraph (i) or (ii), provided that such person has filed a design application for the design within six months from the date on which the design first fell under those paragraphs.
(2) In the case of a design which has fallen under paragraph (i) or (ii) of Section 3(1) due to an act on the part of the person having the right to obtain a design registration, the preceding subsection shall also apply, provided that such person has filed a design application for the design within six months from the date on which the design first fell under those paragraphs.
(3) Any person who desires the application of the preceding subsection with respect to a design in a design application shall submit a written statement to that effect to the Director-General of the Patent Office simultaneously with the design application. Within 14 days of the filing of the design application, he shall also submit to the Director-General of the Patent Office a document proving that the design in the design application is a design falling under the said subsection.
(Unregistrable designs)
5. A design registration shall not be effected for the following designs, notwithstanding Section 3:
(i) designs liable to contravene public order or morality;
(ii) designs liable to give rise to confusion with respect to articles connected with any other person's business.
(Applications for design registration)
6.-
(1) Any person desiring a design registration shall submit a request to the Director-General of the Patent Office, together with a drawing of the design for which registration is sought, stating the following:
(i) the name and the domicile or residence of the applicant for a design registration and, in the case of a legal entity, the name of an officer representing it;
(ii) the date of submission;
(iii) the name and the domicile or residence of the creator of the design;
(iv) the article or articles to which the design is applied.
(2) Whenever an ordinance of the Ministry of International Trade and Industry so prescribes, a photograph, model or sample of the design for which registration is sought may be submitted instead of the drawing referred to in the preceding subsection. In such a case, the fact that a photograph, model or sample has been submitted shall be noted in the request.
(3) Where a person desires a design registration for a design that is similar to one which has been registered in his name or registration of which he has applied for, the number of the relevant design registration or application shall be stated in the request.
(4) Where the statement referred to in subsection (1)(iv) concerning the article or articles to which the design is applied, or of which the drawing, photograph or model is attached to the request, is not such as to enable a person with ordinary skill in the art to which the design pertains to visualize the material or dimensions of the article or articles to which the design is applied, so that such a person is unable to recognize the design, the material or dimensions referred to shall be stated in the request.
(5) Where the shape, pattern or color of an article to which the design is applied varies according to the function that the article possesses and where registration is sought for the shape, pattern or color or a combination thereof as it appears before, during and after the variation referred to, the request shall contain a statement to that effect as well as an explanation concerning the said function of the article.
(6) When the colors of the design are applied on the drawing, photograph or model submitted under subsection (1) or (2), any parts that are white or black need not be colored.
(7) Where parts are not colored, in accordance with the preceding subsection, the request shall contain a statement to that effect.
(8) In the case of the drawing of a design submitted under subsection (1) or the photograph or model submitted under subsection (2), where the whole or part of the article to which the design has been applied is transparent, the request shall contain a statement to that effect.
(Unity of design)
7. An application for design registration shall relate to a single design corresponding to an article in the classes of articles prescribed by an ordinance of the Ministry of International Trade and Industry.
(Design of a set of articles)
8.-
(1) In the case of a design of articles of two or more kinds that are customarily sold or used together as a set of articles, forming the articles prescribed by an ordinance of the Ministry of International Trade and Industry (hereinafter referred to as a "set of articles,"), an application for design registration may be made as for one design, provided that the set of articles is a coordinated whole.
(2) In the case of the preceding subsection, design registration may be effected only where each of the designs of the articles forming the set of articles is eligible for registration under Sections 3, 5 and 9(1) and (2).
(First-to-file rule)
9.-
(1) Where two or more design applications relating to the same or a similar design are filed on different dates, only the first applicant may obtain a design registration for the design.
(2) Where two or more design applications relating to the same or a similar design are filed on the same date, only one such applicant, agreed upon after mutual consultation among all the applicants, may obtain a design registration for the design. If no agreement is reached or no consultation is possible, none of the applicants shall obtain a design registration for the design.
(3) Where a design application is withdrawn or invalidated, such application shall, for the purposes of the two preceding subsections, be deemed never to have been made.
(4) A design application filed by a person who is neither the creator of the design nor the successor in title to the right to obtain a design registration shall, for the purposes of subsections (1) and (2), be deemed not to be a design application.
(5) The Director-General of the Patent Office shall, in the case of subsection (2), order the applicants to hold consultations for an agreement under that subsection and to report the result thereof, within an adequate time limit.
(6) Where the report under the preceding subsection is not made within the time limit designated in accordance with that subsection, the Director-General of the Patent Office may deem that no agreement under subsection (2) has been reached.
(Amendment of statement in a request or of drawings, etc., and change of gist)
9bis. Where, after registration of the establishment of the design right, it is found that an amendment of the statement in the request (excluding matters listed in Section 6(1)(i) to (iii) and matters described under Section 6(2) and (3)-referred to in Sections 17bis(1) and 24 as "the statement in the request") or of drawings, photographs, models or samples attached to the request has changed the gist thereof, the design application shall be deemed to have been filed at the time when the amendment in writing was submitted.
(Similar designs)
10.-
(1) The owner of a design right may obtain registration of a design which is similar only to his registered design (hereinafter referred to as a "similar design").
(2) The preceding subsection shall not apply in the case of a design that is similar only to a similar design registered under that subsection.
(Division of design applications)
10bis.-
(1) An applicant for a design registration may divide a design application comprising two or more designs into one or more new design applications.
(2) A design application may not be divided under the preceding subsection after the examiner's decision or the trial decision with respect to the application has become final and conclusive.
11.-
(1) An applicant for a design registration may divide a design application under Section 8(1) so as to make applications for each of the designs of articles forming a set of articles.
(2) Where a design application has been divided under the preceding subsection, the application under Section 8(1) shall be deemed to have been withdrawn.
(Conversion of applications)
12.-
(1) An applicant may convert his application for registration of a similar design into an application for registration of an independent design (meaning a design application other than an application for registration of a similar design-hereinafter referred to as an "application for registration of an independent design").
(2) An applicant may convert his application for registration of an independent design into an application for registration of a similar design.
(3) A design application may not be converted under the two preceding subsections after the examiner's decision or the trial decision with respect to the application has become final and conclusive.
13.-
(1) An applicant for a patent may convert his application into a design application. However, this provision shall not apply after 30 days from the transmittal of the examiner's first decision [including the transmittal thereof deemed to have been made under the provisions of the Law on Special Provisions for Procedures, etc., relating to Industrial Property (Law No. 30 of 1990)] that the patent application is to be refused.
(2) An applicant for a utility model registration may convert his application into a design application.
(Special provisions concerning conversion of applications
under the Patent Cooperation Treaty)
13bis.-
(2) Conversion of an international application having been deemed a utility model application under Section 48ter(1) or 48sedecies(4) of the Utility Model Law (Law No. 123 of 1959) into a design application may not be made until, in respect of a Japanese language utility model application referred to in Section 48quinquies(4) of the Utility Model Law, after the proceeding under Section 48quinquies(1) of the Utility Model Law has been taken, and in respect of a foreign language utility model application referred to in Section 48quater(1) of the Utility Model Law, after the proceedings under the said subsection and Section 48quinquies(1) of the Utility Model Law have been taken and, further, after the fee to be paid under Section 54(2) of the Utility Model Law has been paid (or-in respect of an international application having been deemed a utility model application under Section 48sedecies(4) of the Utility Model Law-after the decision referred to in the said subsection has been made).
(Secret designs)
(1) An applicant for a design registration may demand that the design be kept secret for a period which shall be designated in the demand and shall not exceed three years from the date on which the establishment of the design right was registered.
(2) A person who desires to make that demand under the preceding subsection shall, at the time of filing the design application, submit to the Director-General of the Patent Office a document stating the following:
(i) the name and the domicile or residence of the applicant for a design registration;
(ii) the period for which secrecy is demanded.
(3) An applicant for a design registration or the owner of a design right may extend or reduce the period for which secrecy is demanded under subsection (1).
(4) In any of the following cases, the Director-General of the Patent Office shall allow persons other than the owner of the design right to have access to a design for which secrecy has been demanded under subsection (1):
(i) when the consent of the owner of the design right has been obtained;
(ii) when so requested by a party or an intervenor in the examination, trial, retrial or litigation relating to the design or any identical or similar design;
(iii) when so requested by a court;
(iv) when so requested by an interested person submitting to the Director-General of the Patent Office a document stating the name of the owner of the design right and the registration number and other documents prescribed by an ordinance of the Ministry of International Trade and Industry.
(Application mutatis mutandis of Patent Law)
15.-
Chapter III
The Examination
(Examination by examiner)
16. The Director-General of the Patent Office shall have applications for design registration examined by an examiner.
(Examiner's decision of refusan( �/p>
17. The examiner shall make a decision that a design application is to be refused where it falls under any of the following paragraphs:
(ii) the design in the design application is not registrable in accordance with the provisions of a treaty;
(iii) the design application does not comply with the requirements of Section 7;
(iv) the applicant for a design registration who is not the creator of the design has not succeeded to the right to obtain registration for the design concerned.
(Declining of amendments)
17bis.-
(1) Where an amendment of the statement in the request or of the drawings, the photographs, models or samples attached to the request would change the gist thereof, the examiner shall decline the amendment by a ruling.
(2) This ruling to decline an amendment under the preceding subsection shall be in writing and state the reasons therefor.
(3) Where a ruling to decline an amendment under subsection (1) has been rendered, the examiner's decision with respect to the design application shall not be rendered before the expiration of 30 days from the transmittal of that ruling.
(4) Where an applicant has demanded a trial under Section 47(1) against a ruling to decline an amendment under subsection (1), the examiner shall suspend the examination of the design application until the trial decision has become final and conclusive.
(New application for design as amended)
17ter.-
(1) Where an applicant for a design registration has filed a new design application for the design as amended within 30 days from the transmittal of a ruling to decline an amendment under Section 17bis (1), the design application shall be deemed to have been filed at the time of submission of that amendment.
(2) Where a new design application referred to in the preceding subsection has been filed, the original design application shall be deemed withdrawn.
(3) The two preceding subsections shall be applicable only where the applicant has submitted, at the same time as the new design application, a statement to the Director-General of the Patent Office indicating his desire for the application of subsection (1) to the new design application referred to in that subsection.
17quater.-
(1) The Director-General of the Patent Office may, for the benefit of a person residing in a place that is remote or difficult of access, extend upon request or ex officio the period prescribed in Section 17ter(1).
(2) The trial examiner-in-chief may, for the benefit of a person residing in a place that is remote or difficult of access, extend upon request or ex officio the period prescribed in Section 17ter(1) as applied under Section 50(1) (including its application under Section 57(1)).
(Decision to register design)
18. Where the examiner finds no reason for refusing a design application, he shall make a decision that the design is to be registered.
(Application mutatis mutandis of Patent Law)
Chapter IV
The Design Right
Part 1
The Design Right
(Registration of establishment of design right)
20.-
(1) A design right shall come into force upon registration of its establishment.
(2) The establishment of a design right shall be registered when the annual fee for the first year under Section 42(1)(i) has been paid.
(3) When registration under the preceding subsection has been effected, the following shall be published in the Design Gazette (Ishô Kôhô):
(i) the name and the domicile or residence of the owner of the design right;
(ii) the number and the date of the design application;
(iii) the registration number and the date of registration of the establishment;
(iv) the contents of the request and the drawing, photograph, model or sample attached to the request.
(4) In the case of a design for which secrecy has been demanded under Section 14(1), the matters referred to in paragraph (iv) of the preceding subsection shall, notwithstanding Section 14(1), be published immediately after the period designated under Section 14(1) has expired.
(Term of design right)
21. The term of a design right shall be 15 years from the date of registration of its establishment.
(Design right relating to similar design)
22. The design right relating to a similar design shall be incorporated in the design right relating to the design (hereinafter referred to as the "principal design") to which such similar design is similar and for which a design registration (other than a registration for a similar design) was obtained first.
(Effects of design right)
23. The owner of a design right shall have an exclusive right to commercially work the registered design and designs similar thereto. However, where the design right is the subject of an exclusive license, this provision shall not apply to the extent that the exclusive licensee has an exclusive right to work the registered design and designs similar thereto.
(Scope of registered design)
24. The scope of a registered design shall be decided on the basis of the statement in the request and the design represented in the drawing attached to the request or shown in the photograph, model or sample attached to the request.
25.-
(1) A request for interpretation may be made to the Patent Office with respect to the scope of a registered design and designs similar thereto.
(2) Where such a request is made, the Director-General of the Patent Office shall designate three trial examiners to give the requested interpretation.
(3) Proceedings concerning an interpretation other than those provided for in the preceding subsection shall be prescribed by Cabinet Order.
(Relationship with another's registered design, etc.)
26.-
(1) When a registered design would utilize another person's registered design or design similar thereto, patented invention or registered utility model under an application filed prior to the filing date of the design application concerned, or when the part of a design right relating to the registered design conflicts with another person's patent, utility model or trademark right under an application filed prior to the filing date of the design application concerned, or conflicts with another person's copyright taking effect prior to that date, the owner of the design right, exclusive licensee or non-exclusive licensee shall not commercially work the registered design.
(2) When a design similar to a registered design would utilize another person's registered design or design similar thereto, patented invention or registered utility model under an application filed prior to the filing date of the design application concerned, or when the part of a design right relating to designs similar to the registered design conflicts with another person's design, patent, utility model or trademark right under an application filed prior to the filing date of the design application concerned, or conflicts with another person's copyright taking effect prior to that date, the owner of the design right, exclusive licensee or non-exclusive licensee shall not commercially work the design similar to the registered design.
(Exclusive licenses)
27.-
(1) The owner of a design right may grant an exclusive license on such right.
(2) An exclusive licensee shall have an exclusive right to commercially work the registered design and designs similar thereto to the extent laid down in the license contract.
(Non-exclusive licenses)
28.-
(1) The owner of a design right may grant a non-exclusive license on such right.
(2) A non-exclusive licensee shall have the right to commercially work the registered design and designs similar thereto to the extent prescribed in this Law or laid down by the license contract.
(Non-exclusive license by virtue of prior use)
29. Where, at the time of filing of a design application (or at the time of filing of the original design application or of submission of an amendment when the design application is deemed to have been filed at the time of submission of the amendment in accordance with Section 9bis of this Law or in accordance with Section 17ter(1) (including its application under Section 50(1) (including its application under Section 57(1)), a person who has created a design or design similar thereto by himself without knowledge of the design in a design application or has learned of the design from a person just referred to, has been commercially working the design or design similar thereto in Japan or has been making preparations therefor, such person shall have a non-exclusive license on the design right under the design application. Such license shall be limited to the design which is being worked or for which preparations for working are being made and to the purpose of such working or the preparations therefor.
(Non-exclusive license due to working prior to registration of demand for invalidation trian( �/p>
30.-
(1) When a person coming within any of the paragraphs set out below has been commercially working a design or design similar thereto in Japan or has been making preparations therefor, prior to the registration of a demand for a trial under Section 48(1), without knowing that the design registration falls under any of the paragraphs of the subsection referred to, such person shall have a non-exclusive license on the design right or on the exclusive license existing at the time when the design registration was invalidated, such non-exclusive license being limited to the design which is being worked or for which preparations for working are being made and to the purpose of such working or the preparations therefor:
(i) the original owner of the design right where one of two or more design registrations granted for the same or a similar design has been invalidated;
(ii) the original owner of the design right, where his design registration has been invalidated and a design registration for the same or a similar design has been granted to the person entitled;
(iii) in the cases referred to in the two preceding paragraphs, a person who, at the time of registration of the demand for a trial under Section 48(1), has an exclusive license on the design right that has been invalidated or a non-exclusive license which is effective, under Section 99(1) of the Patent Law as applied under Section 28(3) of this Law, against the design right or the exclusive license.
(2) The owner of the design right or the exclusive licensee shall have a right to a reasonable remuneration as consideration for the non-exclusive license under the preceding subsection.
(Non-exclusive license after expiration of design right, etc.)
31.-
(1) Where one design application was filed prior to or on the filing date of another design application and part of the design right (relating to designs similar to the registered design concerned) under the first-mentioned application conflicts with the design right under the other application and the term of the first-mentioned design right has expired, the owner of the original design right shall, to the extent of such right, have a non-exclusive license on the other design right or the exclusive license existing at the time when his design right expired.
(2) Where a patent right or a utility model right under an application filed prior to or on the filing date of a design application conflicts with the design right under that application, the preceding subsection shall apply mutatis mutandis where the term of the patent right or utility model right has expired.
32.-
(1) Where one design application was filed prior to or on the filing date of another design application and part of the design right (relating to designs similar to the registered design concerned) under the first-mentioned application conflicts with the design right under the other application and the term of the first-mentioned design right has expired, a person who, at the time of expiration, has an exclusive license on the expired design right or a non-exclusive license which is effective under Section 99(1) of the Patent Law, as applied under Section 28(3) of this Law, against the expired design right or the exclusive license, shall, to the extent of the expired right, have a non-exclusive license on the other design right or on the exclusive license existing when the first-mentioned design right expired.
(2) Where a patent right or a utility model right under an application filed prior to or on the filing date of a design application conflicts with the design right under that application, the preceding subsection shall apply mutatis mutandis where the term of the patent right or utility model right has expired.
(3) The owner of the design right or the exclusive licensee shall have a right to a reasonable remuneration as consideration for the non-exclusive license under the two preceding subsections.
(Arbitration decision on grant of non-exclusive license)
33.-
(1) Where a registered design or design similar thereto falls under any of the cases provided for in Section 26, the owner of the design right or the exclusive licensee may request the other person referred to in that Section to hold consultations on the grant of a non-exclusive license to work the registered design or the design similar thereto or of a non-exclusive license on the patent right or the utility model right.
(2) The other person referred to in Section 26 who has been requested to hold the consultations under the preceding subsection may request the owner of the design right or the exclusive licensee having requested the consultations to hold consultations on the grant of a non-exclusive license within the scope of the registered design which the owner of the design right or the exclusive licensee desires to work by obtaining the non-exclusive license on the design right, the patent right or the utility model right through the consultations requested by the owner of the design right or the exclusive licensee.
(3) If no agreement is reached or no consultation is possible under subsection (1), the owner of the design right or the exclusive licensee may request the Director-General of the Patent Office for an arbitration decision.
(4) If no agreement is reached or no consultation is possible under subsection (2) and arbitration under the preceding subsection is requested, the other person referred to in Section 26 may request the Director-General of the Patent Office for an arbitration decision only within the time limit which the Director-General of the Patent Office designates as the time limit for the other person to submit a written reply in accordance with Section 84 of the Patent Law as applied under subsection (7).
(5) If, in the case of subsection (3) or the preceding subsection, the grant of a non-exclusive license would unduly injure the interests of the other person referred to in Section 26 or the owner of the design right or the exclusive licensee, the Director-General of the Patent Office shall not render an arbitration decision ordering a non-exclusive license to be granted.
(6) In the case of subsection (4) in addition to the case provided for in the preceding subsection, the Director-General of the Patent Office shall not render an arbitration decision ordering a non-exclusive license to be granted if an arbitration decision ordering a non-exclusive license to be granted is not rendered with respect to the request for the arbitration decision under subsection (3).
(Transfer, etc. of non-exclusive license)
34.-
(1) A non-exclusive license, with the exception of one which results from arbitration under Section 33(3) or (4) of this Law, Section 92(3) of the Patent Law or Section 22(3) of the Utility Model Law, may be transferred, but only together with the business in which it is worked or only with the consent of the owner of the design right (or the owner and the exclusive licensee in the case of a non-exclusive license on an exclusive license) or in the case of inheritance or other general succession.
(2) A non-exclusive licensee may, except in the case of a non-exclusive license resulting from arbitration under Section 33(3) or (4) of this Law, Section 92(3) of the Patent Law or Section 22(3) of the Utility Model Law, establish a pledge on the non-exclusive license but only with the consent of the owner of the design right (or the owner and the exclusive licensee in the case of a non-exclusive license on an exclusive license).
(3) A non-exclusive license resulting from arbitration under Section 33(3) of this Law, Section 92(3) of the Patent Law or Section 22(3) of the Utility Model Law shall be transferred together with the design, patent or utility model right to which the non-exclusive licensee is entitled and which is transferred together with the business in which it is worked and shall be extinguished at the time when such design, patent or utility model right has been transferred separately from the business in which it is worked or has been extinguished.
(4) A non-exclusive license resulting from an arbitration under Section 33(4) of this Law shall be transferred together with the design, patent or utility model right to which the non-exclusive licensee is entitled, and shall be extinguished at the time when such design, patent or utility model right has been extinguished.
(Pledges)
35.-
(1) Where a design right or an exclusive or non-exclusive license is the subject of a pledge, the pledgee may not work the registered design or designs similar thereto except as otherwise provided by contract.
(Application mutatis mutandis of Patent Law)
Part 2
Infringement
(Injunctions)
37.-
(1) The owner of a design right or exclusive licensee may require a person who is infringing or is likely to infringe the design right or exclusive license to discontinue or refrain from such infringement.
(2) The owner of a design right or exclusive licensee who is acting under the preceding subsection may demand the destruction of the articles by which the act of infringement was committed, the removal of the facilities used for the act of infringement, or other measures necessary to prevent the infringement.
(3) In the case of a design for which secrecy has been demanded under Section 14(1), the owner of the design right or exclusive licensee may not take the action provided for in subsection (1) until he has given a warning in the form of a document which states the matters referred to in each paragraph of Section 20(3) and which has been certified by the Director-General of the Patent Office.
(Acts deemed to be infringement)
38. Acts of manufacturing, assigning, leasing, importing or offering for assignment or lease of, in the course of trade, the things to be used exclusively for the manufacture of the article to which the registered design or a design similar thereto has been applied shall be deemed to be an infringement of the design right or exclusive license.
(Presumption, etc., of amount of damage)
39.-
(1) Where the owner of a design right or exclusive licensee claims, from a person who has intentionally or negligently infringed the design right or exclusive license, compensation for damage caused to him by the infringement, the profits gained by the infringer through the infringement shall be presumed to be the amount of damage suffered by the owner or exclusive licensee.
(2) The owner of a design right or exclusive licensee may claim, from a person who has intentionally or negligently infringed the design right or exclusive license, an amount of money which he would normally be entitled to receive for the working of the registered design or designs similar thereto, as the amount of damage suffered by him.
(3) The preceding subsection shall not preclude a claim to damages exceeding the amount referred to therein. In such a case, where there has been neither willfulness nor gross negligence on the part of the person who has infringed the design right or the exclusive license, the court may take this into consideration when awarding damages.
(Presumption of negligence)
40. A person who has infringed a design right or exclusive license of another person shall be presumed to have been negligent as far as the act of infringement is concerned. However, this provision shall not apply with respect to the infringement of a design right or exclusive license relating to a design for which secrecy has been demanded under Section 14(1).
(Application mutatis mutandis of Patent Law)
Part 3
Annual Fees
(Annual fees)
42.-
(1) A person who obtains registration of a design right or the owner of a design right shall pay as annual fees the amount specified below, for each case and for each year until the expiration of the design right under Section 21:
(i) first to third year: 8,500 yen per annum;
(ii) fourth to tenth year: 16,900 yen per annum;
(iii) eleventh to fifteenth year: 33,800 yen per annum.
(2) A person who obtains registration of a similar design shall pay, as a registration fee, 8,500 yen for each case.
(3) The two preceding subsections shall not apply to design rights belonging to the State.
(4) The payment of the fee under subsection (1) or (2) shall be made by patent revenue stamps as prescribed by an ordinance of the Ministry of International Trade and Industry.
(Time limit for payment of annual fees)
43.-
(1) The annual fee for the first year under Section 42(1)(i) or the registration fee under Section 42(2) shall be paid within 30 days from the transmittal of the examiner's decision or trial decision that the design registration is to be effected.
(2) The annual fee for the second and subsequent years under Section 42(1) shall be paid during the preceding year or prior thereto.
(3) Upon the request of a person liable to pay an annual or registration fee, the Director-General of the Patent Office may extend the period prescribed in subsection (1) by a period not exceeding 30 days.
(Late payment of annual fees)
44.-
(1) Where the owner of a design right is unable to pay an annual fee within the time limit prescribed in Section 43(2), he may pay the annual fee belatedly within six months from the expiration of that time limit.
(2) In the case of late payment of an annual fee in accordance with the preceding subsection, the owner of the design right shall, in addition to the annual fee provided for in Section 42(1), pay a surcharge of the same amount as the annual fee.
(3) The payment of the fee under the preceding subsection shall be made by patent revenue stamps as prescribed by an ordinance of the Ministry of International Trade and Industry.
(4) Where the owner of a design right fails to pay an annual fee and the surcharge under the preceding subsection within the time limit for late payment under subsection (2), the design right shall be deemed to have been extinguished retroactively from the moment that the time limit prescribed in Section 43(2) expired.
(Restoration of design right by late payment of annual fees)
44bis.-
(1) Where the original owner of the design right which is deemed to have been extinguished under Section 44(4) is unable to pay an annual fee and surcharge prescribed in Section 44(4) within the time limit within which he may pay the annual fee and surcharge belatedly under Section 44(1) due to reasons outside his control, he may pay the annual fee and surcharge belatedly but only within 14 days (where he is a resident abroad, within two months) and within six months after the expiration of the time limit.
(2) Where the annual fee and surcharge prescribed in subsection (1) are paid, such design right shall be deemed to have been maintained retroactively from the time of the expiration of the time limit prescribed in Section 43(2).
(Restriction on effects of design right restored)
44ter.-
(1) Where a design right has been restored under Section 44bis(2), the effects of the design right shall not extend to any articles to which the registered design or design similar thereto has been applied and which was imported into, manufactured or acquired in Japan after the expiration of the time limit within which he may pay an annual fee belatedly under Section 44(1) but before the registration of the restoration of the design right.
(2) The effects of a design right which has been restored under Section 44bis(2) shall not extend to the following acts after the expiration of the time limit within which he may pay an annual fee belatedly under Section 44(1) but before the registration of the design:
(i) the working of the design or design similar thereto;
(ii) manufacturing, assigning, leasing, importing or offering for assignment or lease of the things to be used exclusively for the manufacture of the article to which the registered design or design similar thereto has been applied.
(Application mutatis mutandis of Patent Law)
Chapter V
Trial
(Trial against examiner's decision of refusan( �/p>
46.-
(1) A person who has received the examiner's decision that his application is to be refused and is dissatisfied may demand a trial thereon within 30 days from the transmittal of the examiner's decision.
(2) Where, due to reasons outside his control, a person is unable to demand a trial under the preceding subsection within the time limit prescribed therein, he may, notwithstanding that subsection, make the demand within 14 days (where he is resident abroad, within two months) from the date when the reasons ceased to be applicable but not later than six months following the expiration of the said time limit.
(Trial against ruling to decline amendment)
47.-
(1) A person who has received a ruling to decline an amendment under Section 17bis(1) of this Law and is dissatisfied may demand a trial thereon within 30 days from the transmittal of the ruling. However, this provision shall not apply when a new application for design registration has been filed under Section 17ter(1).
(2) Section 46(2) shall apply mutatis mutandis to the demand for a trial under the preceding subsection.
(Trial for invalidation of design registration)
48.-
(1) In the following cases, a trial may be demanded for the invalidation of a design registration:
(ii) where the registration has been effected contrary to the provisions of a treaty;
(iii) where the registration has been effected in respect of a design application filed by a person who is not the creator of the design and has not succeeded to the right to obtain a design registration for the design concerned;
(iv) where, after the registration, the owner of the design right has become a person who can no longer enjoy such right under Section 25 of the Patent Law as applied under Section 68(3) of this Law or the registration no longer complies with a treaty.
(2) Even after the extinguishment of a design right, a trial under the preceding subsection may be demanded.
(3) Where a trial under subsection (1) has been demanded, the trial examiner-in-chief shall notify the exclusive licensee with respect to the design right and other persons who have any registered right relating to the design registration.
49.-
(1) Where a trial decision that a design registration is to be invalidated has become final and conclusive (other than a design registration of a similar design-the same hereinafter in this subsection), the design right shall be deemed never to have existed. However, where a design registration fell under Section 48(1)(iv) and a trial decision that the registration is to be invalidated has become final and conclusive, the design right shall be deemed not to have existed from the time when the registration first fell under that paragraph.
(2) When a trial decision that the design registration of the principal design is to be invalidated has become final and conclusive, the design registration of a similar design shall become invalid.
(3) Where a trial decision that a design registration of a similar design is to be invalidated has become final and conclusive or a design registration of a similar design becomes invalid by virtue of the preceding subsection, the design right relating to the similar design shall be deemed never to have existed. However, where the design registration of the similar design falls under paragraph (iv) of Section 48(1) and the trial decision that the design registration of the similar design is to be invalidated has become final and conclusive, or where the design registration of the principal design falls under said paragraph and the trial decision that the design registration of the principal design is to be invalidated has become final and conclusive so that the design registration of the similar design has become invalid by virtue of the preceding subsection, the design right relating to the similar design shall be deemed not to have existed from the time when the design registration of the similar design or the design registration of the principal design first fell under Section 48(1)(iv).
(Application mutatis mutandis of provisions concerning examination)
50.-
(Special provisions for trials against ruling to decline amendment)
51. The adjudication in the case of a trial decision after a trial under Section 47(1) to the effect that the ruling shall be cancelled shall be binding on the examiner with respect to the case concerned.
(Application mutatis mutandis of Patent Law)
52. Sections 131(1) and (2), 132, 133, 134(1), (3) and (4), 135 to 154, 155(1) and (2), 156 to 158, 160(1) and (2), 161 as well as Sections 167 to 170 (demands for trial, trial examiners, trial proceedings, relationship with litigation, and costs of trial) of the Patent Law shall apply mutatis mutandis to trials under this Law. In such a case, "Section 121(1)" in Section 161 and "Section 121(1) or 126(1)" in Section 169(3) of the Patent Law shall read "Section 46(1) or 47(1) of the Design Law."
Chapter VI
Retrial and Litigation
(Demand for retrian( �/p>
53.-
(1) Any party may demand a retrial against a final and conclusive trial decision.
(2) Sections 420(1) and (2) and 421 (grounds for retrial) of the Code of Civil Procedure (Law No. 29 of 1890) shall apply mutatis mutandis to demands for a retrial under the preceding subsection.
54.-
(1) Where the demandant and the defendant in a trial have in collusion caused a trial decision to be rendered, with the purpose of injuring the rights or interests of a third person, such person may demand a retrial against the final and conclusive trial decision.
(2) In such a retrial, the demandant and the defendant shall be made joint defendants.
(Restriction on effects of design rights restored by retrian( �/p>
55.-
(1) Where a design right relating to an invalidated design registration has been restored through a retrial, the effects of the design right shall not extend to any article to which the registered design or a design similar thereto has been applied and which was imported into, manufactured or acquired in Japan, in good faith after the time when the trial decision became final and conclusive but before the demand for a retrial was registered.
(2) Where a design right relating to an invalidated design registration has been restored through a retrial, the effects of the design right shall not extend, after the trial decision becomes final and conclusive but before the registration of the demand for a retrial, to the following acts:
(i) the working of the design or designs similar thereto in good faith;
(ii) manufacturing, assigning, leasing, importing or offering for assignment or lease of, in good faith, the things to be used exclusively for the manufacture of the article to which the registered design or a design similar thereto has been applied.
56. Where a design right relating to an invalidated design registration has been restored through a retrial or where the establishment of a design right under a design application which was refused by a trial decision has been registered through a retrial, and where a person has, in good faith, been commercially working the design or a design similar thereto in Japan or has, in good faith, been making preparations therefor, after the trial decision became final and conclusive but before the registration of the demand for a retrial, such person shall have a non-exclusive license on the design right, the license being limited to the design which is being worked or for which preparations for working are being made and to the purpose of such working or the preparations therefor.
(Application mutatis mutandis of provisions on trian( �/p>
57.-
(1) Section 51(1) and (3) shall apply mutatis mutandis to a retrial against the final and conclusive trial decision on a trial under Section 46(1).
(2) Section 51 shall apply mutatis mutandis to a retrial against the final and conclusive trial decision on a trial under Section 47(1).
(Application mutatis mutandis of Patent Law)
58.-
(2) Sections 131, 132(3) and (4), 133, 134(4), 135 to 147, 150 to 152, 155(1), 156 to 158, 160, 168, 169(3) to (6) and 170 shall apply mutatis mutandis to a retrial against a final and conclusive trial decision in a trial under Section 46(1). In such a case, "Section 121(1) or 126(1)" in Section 169(3) of the Patent Law shall read "Section 46(1) of the Design Law."
(3) Sections 131, 132(3) and (4), 133, 134(4), 135 to 147, 150 to 152, 155(1), 156, 157, 168, 169(3) to (6) and 170 shall apply mutatis mutandis to a retrial against a final and conclusive trial decision in a trial under Section 47(1). In such a case, "Section 121(1) or 126(1)" in Section 169(3) of the Patent Law shall read "Section 47(1) of the Design Law."
(Actions against trial decisions, etc.)
59.-
(1) An action against a trial decision or a ruling to decline an amendment under Section 17bis(1) as applied under Section 50(1) (including its application under Section 57(1)) or an action against a ruling of dismissal of a demand for a trial or retrial shall come under the exclusive jurisdiction of the Tokyo High Court.
(Actions on amount of remuneration)
60.-
(1) Where a person who is concerned in an arbitration decision under Section 33(3) or (4) is dissatisfied with the amount of remuneration fixed in the decision, he may institute an action for the increase or decrease of the remuneration.
(Relationship between administrative appeal and litigation)
60bis.-
Chapter VII
Miscellaneous Provisions
(Amendment)
60ter.-
With respect to a procedure relating to a design application, a demand or other procedure relating to design registration, the person carrying on such procedure may make an amendment only during the pendency of the case in the examination, trial or retrial.
(Registration in Design Register)
61.-
(1) The following matters shall be registered in the Design Register kept in the Patent Office:
(i) the establishment, transfer, extinguishment, restoration or restriction on disposal of a design right;
(ii) the establishment, maintenance, transfer, modification, extinguishment or restriction on disposal of an exclusive or non-exclusive license;
(iii) the establishment, transfer, modification, extinguishment or restriction on disposal of rights in a pledge upon a design right or an exclusive or non-exclusive license.
(2) The Design Register, either in whole or in part, may be prepared by means of magnetic tapes (including other materials on which matters can be accurately recorded by an equivalent method-hereinafter referred to as "magnetic tapes").
(3) Other matters relating to registration that are not provided for in this Law shall be prescribed by Cabinet Order.
(Issuance of design registration certificate)
62.-
(1) When the establishment of a design right has been registered, the Director-General of the Patent Office shall issue a design registration certificate to the owner of the registered design.
(2) Reissuance of the certificate shall be prescribed by an ordinance of the Ministry of International Trade and Industry.
(Request for certification, etc.)
63. Anyone may request the Director-General of the Patent Office to issue a certificate, a copy or an extract of documents, to allow the inspection or copying of documents, models or samples or to issue documents whose contents are recorded in the part of the Design Register prepared by magnetic tapes, where such documents, models or samples relate to design registrations. However, this provision shall not apply in the case of the following documents, models or samples if the Director-General of the Patent Office considers it necessary to keep them secret:
(i) a request or a drawing, photograph, model or sample attached thereto, where the design registration concerned has not been effected;
(ii) a document, model or sample, where the secrecy of the design concerned has been demanded under Section 14(1);
(iii) documents concerning a trial under Section 46(1) or 47(1), where a design registration has not been effected with respect to the design application pending in the trial case;
(iv) documents liable to contravene public order or morality.
(Indication of existence of design registration)
64. The owner of a design right or an exclusive or non-exclusive licensee shall take steps, as prescribed in an ordinance of the Ministry of International Trade and Industry, to mark the articles to which a registered design or a design similar thereto has been applied, or the packaging of such articles, with a statement to the effect that the articles are covered by a registered design or a design similar thereto (hereinafter referred to as "indication of a design registration").
(Prohibition of false marking)
65. The following acts shall be unlawful:
(i) the marking of an article to which a registered design or a design similar thereto has not been applied or the packaging of such article, with an indication of a design registration or confusingly similar indication;
(ii) the assignment, lease or display for the purpose of assignment or lease of an article to which a registered design or design similar thereto has not been applied, where such article or its packaging is marked with an indication of a design registration or confusingly similar indication;
(iii) the inclusion in an advertisement of an indication that an article is covered by a registered design or a design similar thereto or of a confusingly similar indication, for the purpose of causing others to produce or use the article or of assigning or leasing it, where a registered design or a design similar thereto has not been applied to the article.
(Design Gazette)
66.-
(1) The Patent Office shall publish the Design Gazette.
(2) In addition to those provided for in this Law, the Design Gazette shall contain the following matters:
(i) the extinguishment (with the exception of extinguishment due to expiration of term and extinguishment under Section 44(4)) or the restoration (limited to that under Section 44bis(2)) of design right;
(ii) demands for a trial or retrial or withdrawals thereof and final decisions of a trial or retrial;
(iii) requests for an arbitration decision or withdrawals thereof and arbitration decisions;
(Fees)
67.-
(1) The person specified hereunder shall pay the fee the amount of which shall be prescribed by Cabinet Order with the actual costs taken into consideration:
(i) person requesting access to design in accordance with Section 14(4);
(iv) person requesting reissuance of design registration certificate;
(v) person requesting issuance of certificate in accordance with Section 63;
(vi) person requesting issuance of copy or extract of documents in accordance with Section 63;
(vii) person requesting inspection or copying of documents, models or samples in accordance with Section 63;
(viii) person requesting issuance of documents containing matters recorded in that part of the Design Register as prepared on magnetic tape, in accordance with Section 63.
(2) The persons specified in the left-hand column of the attached table shall pay the fee the amount of which shall be prescribed by Cabinet Order within the limit of the amounts specified in the right-hand column of the table.
(3) The two preceding subsections shall not apply where the person to pay the fee in accordance with these subsections is the State.
(4) The payment of the fee under subsection (1) or (2) shall be made by patent revenue stamps as prescribed by an ordinance of the Ministry of International Trade and Industry.
(5) A fee paid by mistake or in excess shall be refunded upon the request of the person making the payment.
(6) No request for a refund of a fee under the preceding subsection may be made after one year from the date of payment.
(Application mutatis mutandis of Patent Law)
68.-
Chapter VIII
Penal Provisions
(Offense of infringement)
69.-
(1) Any person who has infringed a design right or an exclusive license shall be liable to imprisonment with labor not exceeding three years or to a fine not exceeding 3,000,000 yen.
(2) The prosecution for the offense under the preceding subsection shall be initiated upon a complaint.
(Offense of fraud)
70. Any person who has obtained a design registration or a trial decision by means of a fraudulent act shall be liable to imprisonment with labor not exceeding one year or to a fine not exceeding 1,000,000 yen.
(Offense of false marking)
71. Any person infringing Section 65 shall be liable to imprisonment with labor not exceeding one year or to a fine not exceeding 1,000,000 yen.
(Offense of perjury, etc.)
72.-
(1) A witness, expert witness or interpreter who, having taken an oath under this Law, has made a false statement or has given a false expert opinion or has interpreted falsely before the Patent Office or a court commissioned thereby shall be liable to imprisonment with labor for a term of not less than three months nor more than 10 years.
(2) Where a person committing the offense in the preceding subsection has made a voluntary confession before the examiner's decision or trial decision concerning the case has become final and conclusive, his sentence may be reduced or suppressed.
(Offense of divulging secrets)
73. Where any present or former official of the Patent Office has divulged or made surreptitious use of the secrets relating to a design in a design application to which he had access in the course of his duties, he shall be liable to imprisonment with labor not exceeding one year or to a fine not exceeding 500,000 yen.
(Dual liability)
74. Where an officer representing a legal entity or a representative, employee or any other servant of a legal entity or of a natural person has committed an act in violation of Section 69(1), 70 or 71, with regard to the business of the legal entity or natural person, the legal entity or the natural person shall, in addition to the offender, be liable to the fine prescribed in those Sections.
(Administrative penalties)
76. Where a person who has been summoned by the Patent Office or a court commissioned thereby in accordance with this Law has failed to appear or has refused to take an oath, to make a statement, to testify, to give an expert opinion or to interpret, without a legitimate reason, he shall be liable to an administrative penalty not exceeding 100,000 yen.
77. Where a person who has been ordered by the Patent Office or a court commissioned thereby to produce or show documents or other evidence in accordance with the provisions of this Law relating to the examination or preservation of evidence has failed to comply with the order, without a legitimate reason, he shall be liable to an administrative penalty not exceeding 100,000 yen.
Supplementary Provisions
(Law No. 116 of 1994)
[Extract]
(Entry into force)
1. This Law shall enter into force on July 1, 1995. However, the provisions indicated in the following paragraphs shall enter into force on the date specified respectively in the said paragraphs:
(ii) The provisions prescribed in Section 2; the amended provisions of Sections 3bis(1) (limited to the part amending "publication of application" to "publication of the Patent Gazette containing the matters referred to in each paragraph thereof"), 10(5) and (6), 14(4) and 39(3), the amended provisions of Section 45 (excluding the part adding a subsection to this Section), the amended provisions of Section 50bis (limited to the part amending "Section 174(2)" to "Section 173(3)" and "Section 193(2)(v)" to "Section 193(2)(iv)"), the amended provisions of Section 53(2) and the amended provisions of Section 62 of the Utility Model Law; the amended provisions of Sections 13(3), 19, 58, 68(1) and 75 of the Design Law; the provisions prescribed in Section 6; the amended provisions of the Patent Attorney Law prescribed in Section 7; and the provisions of Sections 8, 9, 10(2), 17 and 19: January 1, 1996.
Table Referred to in Section 67
|
Person liable to pay |
Amounts |
|
1. Person filing design application |
¥16,000 per case (¥8,100 in the case of a similar design) |
|
2. Person demanding secrecy of design in accordance with Section 14(1) |
¥5,100 per case (¥2,600 in the case of a similar design) |
|
3. Person requesting interpretation in accordance with Section 25(1) |
¥40,000 per case |
|
4. Person requesting arbitration decision |
¥55,000 per case |
|
5. Person requesting cancellation of arbitration decision |
¥27,500 per case |
|
6. Person demanding trial or re-trial |
¥55,000 per case |
|
7. Person demanding intervention in trial or retrial |
¥55,000 per case |