For Expansion of the protectable Design (Architecture and Interior design)
(1) Protection of Building Exterior
Under the current law, buildings are not included in “articles (= movables)”; therefore, they are not protected by design rights (Article 2 (1)).
However, in recent years, there is an increasing number of companies which have been trying to improve the ability to attract customers and build their own brands with an unique appearance. Thus, the demand has occurred for the exterior of buildings to be protected by design as well.
In the US and Europe, the exterior of buildings is also protected by design rights.
Hence, the definition of “design” was added to “shape of building …” in this amendment, and the exterior design of the building was also protected by design rights.
(2) Protection of Interior Design (Article 8-2 of the New Design Act)
The current law adopts the idea that a design is established on one article. In addition, the principle of one application for a single design is stipulated that a design registration application must be individually made for each design (an application must not be filed with multiple designs in one drawing) (Article 7). An exception to this is the “design for a set of articles” system (Article 8), it is said that it can be filed and registered as a single design, in case multiple articles are considered to be “unified as a whole”.
In recent years, there has been an increasing number of cases in which companies provide services and sell products by creating unique brand values in their interior decoration of stores.
In order to protect the interior design of such stores with design rights, in this amendment, designs related to article which composes the equipment and the decoration (interior) inside the store can be applied and also registered as single design. However, the design can be approved only “when a unified aesthetic is created” as the entire interior.
Regarding the trademark application, the JPO announced that the operation called “Fast Track Examination” will be changed for applications.
Below are the details of changes.
FYI, if an application is not subject to fast-track examination, it takes 12 months on average!
The JPO starts the examination 2 months earlier than the normal application. (10 months on average)
The JPO starts the examination in about 6 months from an application date.
This change is effective from an application on February 1, 2020.
“The letters” Taj Mahal “represent a famous tomb in India.
The consumer recognizes that it is goods manufactured or sold in Taj Mahal and the surrounding area”.
It merely indicates the place of production or sale of the goods in a commonly used manner.
Judgment of the trial (judgment of 3 judges):
By ex officio investigation, the fact that “Taj Mahal” is generally used in business cannot be found as the place of production or sale of haursia which is a kind of succulent plant.
It was not possible to find the circumstances that the consumer should recognize it as the expression of the product area, sales place, etc.
It cannot be judged that it indicates the place of production of the goods, the place of sale, etc., nor can it be judged that there is a possibility of misidentification of the quality of the goods.
Appeal No. 2018-8340
A trademark representing a famous tourist destination such as “Taj Mahal” is registered OK! under some conditions.
Suntory Holdings has registered the trademark “Yume” in kanji (it means dream) for the goods “beer, beer flavored low-malt beer” in class 32.
Then, Asahi group Holdings has raised an opposition for the cancellation of the above trademark registration based on their registered trademarks “DREAM” (and two others).
Finally, JPO has judged “the appearance and the appellations are quite different although both concepts (meanings) have in common, that is, both are dissimilar trademarks.”
In other words, we need to obstruct that the third party registers a trademark “DREAM” if we register the trademark “Yume”.
The reverse is also true.
Hmm, what a mess!
The trademark (No. 5878610) attached here is clearly similar to another person’s registered trademark “FINE” (No. 5879869) (it’s ordinary typeface). Although the trademark was filed later, it was registered earlier than the above mentioned others.
Then, this registration of the trademark was canceled by “opposition” which is a system to complain about someone’s trademark registration.
This case means it is important to pay attention to what kind of trademark was registered.