Location
CONTENTS
CONTACT

HARAKENZO
WORLD PATENT & TRADEMARK


OSAKA
HEAD OFFICE

DAIWA MINAMIMORIMACHI BLDG.,
2-6, 2-CHOME-KITA, TENJINBASHI,
KITA-KU,OSAKA 530-0041 JAPAN
TEL:+81-6-6351-4384
(Main Number)
FAX:+81-6-6351-5664
(Main Number)
E-Mail:

TOKYO
HEAD OFFICE

WORLD TRADE CENTER BLDG. 21 F,
2-4-1, HAMAMATSU- CHO, MINATO-KU,
TOKYO 105-6121,JAPAN
TEL:+81-3-3433-5810
(Main Number)
FAX:+81-3-3433-5281
(Main Number)
E-Mail:


HIROSHIMA
OFFICE

NOMURA REAL ESTATE HIROSHIMA BLDG. 4 F, 2-23 TATEMACHI, NAKA-KU, HIROSHIMA CITY, HIROSHIMA 730-0032, JAPAN
TEL:+81-82-545-3680
(Main Number)
FAX:+81-82-243-4130
(Main Number)
E-Mail:

To be opened
on March.1.2018

NAGOYA
OFFICE

GLOBAL GATE 9F, 4-60-12 HIRAIKE-CHO, NAKAMURA-KU, NAGOYA-SHI, AICHI 453-6109, JAPAN
TEL:+81-52-589-2581
(Main Number)
FAX:+81-52-589-2582
(Main Number)
E-Mail:


In the background of the HARAKENZO trademark is a global map wherein countries/regions are sized according to the number of patents registered there in 1991.

Privacy policy




  • Geneva Act Now Applies to Danish Faroe Islands (February 18, 2016)
    • On February 18, 2016, WIPO announced that Denmark had withdrawn its declaration exempting the Faroe Islands from the 1999 Geneva Act of the Hague Agreement. The declaration had originally been included as part of Denmark's ratification of the Act.

      According to WIPO, although Denmark had ratified the 1999 Geneva Act of the Hague Agreement in 2008, its instrument of ratification contained a declaration stating that, at the time, the Act would not be applied to the Faroe Islands or Greenland. The Act was later made to apply to Greenland through a 2010 withdrawal of the declaration with respect to the island. Denmark has now withdrawn the declaration with respect to the Faroe Islands as well.

      Through this new withdrawal, the 1999 Geneva Act will apply to the Faroe Islands in respect of designations of Denmark in international registrations of industrial designs bearing a date of April 13, 2016, or later.

      The 1999 Geneva Act of the Hague convention, which Japan also ratified in 2015, establishes a system that makes it possible to register an industrial design in multiple member nations via a single international registration application.

  • Easing of Design Applications of Products Having GUI (Graphical User Interface) - China(April 3, 2014)
    • On March 12, 2014, the State Intellectual Property Office of China (SIPO) published the “determination about revision of the Patent Examination Guidelines by the SIPO” after reviewing a revised draft of the Patent Examination Guidelines (open for the public comment to grant a design right to a design of a product having GUI) published on October 22, 2013.

      By this revision, a design of a product having GUI can be granted a design right in China from May 1, 2014.

      According to the revision, not all patterns shown in display devices are granted a design right, but patterns that have no association with carrying out the functions of products, for example, the layout design of web page and game interfaces are still ineligible for protection for design.

  • EUIPO Starts Electronic Certificate Automatic Issuing Service for Design Registration(March 28, 2014)
    • The EUIPO has decided to start an electronic certificate automatic issuing service which provides a priority certificate in PDF format for design registration (for trademark registration, the service has already started since 2011).

      The EUIPO considers that the priority certificate in PDF format has the same effect as that of a conventional priority certificate issued in paper by the EUIPO.

      With the start of the service, the JPO made the following announcement regarding the priority certificate issued by the service.

      In the case of a design registration application filed in Japan on the basis of an EUIPO design application, when the Applicant prints out a priority certificate provided in PDF format by the EUIPO and submits it to the JPO, the JPO deems that the priority certificate has been formally submitted (in a case where a design of the EUIPO design application includes a color, the priority certificate needs to be printed out in color).

  • Scope of Rights Protection for Image Design to Expand
    • The Japan Patent Office (JPO) plans to prepare a draft for the expansion of the scope of rights protection for the image design of software used in smartphones etc. The JPO follows the movement of other countries’ planning to expand the scope of design-right protection along the popularization of smartphones so that any icon image that is displayed on the display is also encompassed in the scope of design-right protection.

      Further, the Japanese government incorporates, as a necessary measure for the "implementation of scientific and technological innovations", a review of the design system with a view to accession to the Hague Agreement.

  • Revised German Design Law
    • On June 27, 2013, the revised German Design Law was approved by the German Parliament.

      The revision has the following two major features:



      1. The term used to express "registered design" will be changed from "Geschmacksmuster" to "eingetragenes Design".

      2. Before the revision, design invalidation procedures had been handled only by the District Courts. After the revision, the Design Department of the German Patent and Trade Mark Office (DPMA) will judge on invalidation.


      District Courts will make a judgment on design invalidation only in a case where a defendant filed a countersuit in an infringement case.



  • Database for Indian Design Patents (MCDESiGN) Released (September 20, 2013)
    • Molecular Connections newly released a database for Indian design patents "MCDESiGN".

      "Features of MCDESiGN"
       Contains information on design patents registered in and after 1999.
       Weekly update
       User-friendly interface and easy and convenient search function
       Wide variety of output formats
       Enables users to search and view both patents and design documents using applicants' name etc.


  • Malaysia – Industrial Designs (Amendment) Act 2013 (Enforcement Date: July 1, 2013)
    • ----Requirements of novelty-----
      Before the amendment, the novelty required for an industrial design is only domestic in Malaysia.
      If an industrial design as filed has been publicly known in Malaysia, or an industrial design different from the industrial design as filed only in unimportant parts has been publicly known in Malaysia, the novelty issue would arise for such an industrial design.

      After the amendment, the novelty required for an industrial design is international. Thus, if an industrial design is publicly known inside and outside Malaysia, such an industrial design would be refused as being not novel.


      ----Term----
      Before the amendment, the term of design right registrations is five year from their filing dates. The five-year term can be renewed two times, so that the industrial design right can exist 15 years in total.

      After the amendment, the terms of industrial design registrations, regardless of whether they are currently under examination or have been registered, can be renewed four times for five years each, so that the industrial design right can be valid for up to 25 years.

  • TV Conference System Introduced
    • On April, 2013, the Japan Patent Office (JPO) (i) ceased using the conventional TV conference system in which the JPO and patent departments in METI's regional bureaus are connected with each other via ISDN lines, and (ii) introduced a new TV conference system that uses the Internet connection. This allows a design registration applicant to participate in an interview(s) from his/her own PC so as to communicate with the Examiner. For such an interview(s), only a personal computer, a web camera, and a headset are required. It is expected that an examination will gain improvement in quality and is made more efficient by strengthening communication between the applicant and the Examiner.

  • Partial reduction in design registration fees
    • A bill enacting a partial revision of the patent law, as announced in June 2011, will come into effect on April 1, 2012. As a result, fees for designs in their eleventh year or later will be reduced from 33,800 JPY to 16,900 JPY.

      The registration cost of annuities for the 11th year or later that takes place on or after April 1, 2012 will use the revised fee structure. Registration fees paid before this date or that have a deadline to be paid before this date will not use the new fees.

      For more information, please visit the JPO website using the link below:

      http://www.jpo.go.jp/tetuzuki/touroku/jinou_oshirase.htm

  • Increase in 3D design applications in Korea
    • In 2010, Korea became the first country in the world to start accepting design applications as 3D data. As a result, it is no longer necessary for applicants to produce images showing designs from multiple angles, and it has become easier to obtain protection for designs.

      According to the Korean Patent Office, there were 1,386 design registration applications utilizing 3D data made in October 2011, an increase of 93% over the same period the previous year. 3D designs still only account for 3.1% of all design applications, but this figure is expected to continue to grow.

      In addition, when using 3D data there is no risk of discrepancy between images in an application, meaning that the registration rate of 3D applications is higher than that of 2D applications, standing at 93%. Furthermore, as examination of 3D data is easier, the speed of examinations is expected to increase.

  • Chinese design evaluation reports
    • In the period of approximately two years between October 1, 2009 and August 31, 2011, the Chinese intellectual property office received 252 requests for evaluation reports regarding design rights, and produced 231 such reports. The reports issued found that 172 cases fulfilled the requirements for design rights, whereas 59 cases failed to meet the requirements.

      Design right evaluation reports in China were introduced in 2009 under a revision to the law, and are viewed as evidence that can be used to conclude infringement lawsuits. As opposed to utility model technology evaluations in Japan, which anyone can apply for, Chinese design evaluations can only be requested by the rights holder or interested parties.

  • New Zealand revises design regulations
    • In April 2011, New Zealand revised its design regulations, allowing the postponement of registration (public notification) of a design at any point between application and registration. The applicant may choose to postpone registration for between 1 and 15 months.

  • Regarding number of design registration applications in China
    • According to China's State Intellectual Property Office (SIPO), in the first half of 2011, design applications in China amounted to 213,000, which constitutes a considerable increase of 54.3% from 138,000 cases in the same period the previous year. The number of registrations was 176,000, increasing by 7.3% from 164,000 cases in the same period the previous year.


      Furthermore, in the first half of 2011 there were 218,000 patent applications and 245,000 utility model applications, showing an increase from the previous year of 32.9% and 48.5% respectively.

  • Regarding alterations to European Community design product indications
    • Regarding registered European Community designs (RCD), as a rule the authority to change the indication of a product in a design is given ex officio to the examiner, and that unless instructed by the examiner, the applicant may not change the product indication.
      However, a recent EUIPO decision authorized a change to an indication by the applicant after registration.
      The indication in question was of a design that, although it concerned "pacifiers," had been submitted as "teats for feeding bottles" in the application and was registered as such under Registration Number 1612722.
      Following registration, the applicant, stating that the indication featured in the application was an obvious mistake, requested that it be corrected to "pacifiers for babies (part of-)."
      Since EUIPO rejected the request, the applicant demanded an adjudication. The judicial department ruled that the indication featured in the application was an obvious mistake and authorized the correction, refunding the appeal fee to the applicant.

  • Regarding the guideline on description of request and drawings, etc. in applications for design registration
    • The JPO has created and published on its website a guideline on descriptions of requests and drawings, etc. in applications for design registration. The guideline corresponds to the examination criteria of design registrations that were amended on July 22, 2011.
      The guideline can be accessed via the following URL:

      http://www.jpo.go.jp/shiryou/kijun/kijun2/h23_zumen_guideline.htm

  • Regarding revision of design examination criteria
    • On July 22, 2011, the Japan Patent Office (JPO) revised its design examination criteria. The revised examination criteria will apply from August 1, 2011, applying to applications for design registration claiming a priority under the Paris Convention if they are filed in Japan on or after August 1, 2011. The revisions are as follows:

      (1) Overhaul of the requirements for submission of drawings of partial designs
      Under the present design system, when filing a design application, it is generally necessary to clearly disclose the design by submitting drawings of all six sides.
      With the revision in question, in the case of applications for registration of partial designs, submission of certain drawings that show parts other than the one seeking registration may be omitted.

      (2) Clarification of the registration requirements for display designs
      By clearly stating the requirements for protection in the standards for design examinations concerning images used for operations to demonstrate the functions of the product, as designated in Art. 2., Par. 2 of the Design Act, , as well as displayed images as authorized under Art. 2, Par. 1. of the same act, it is intended that the content of said standards will become clearer.
      In addition, when images fulfill certain requirements both before and after undergoing an alteration, multiple images may be regarded as a single design.


      http://www.jpo.go.jp/cgi/link.cgi?url=/shiryou/kijun/kijun2/isyou-shinsa_kijun.htm

  • Taiwan reduces design annuities
    • In Taiwan, design annuities have been reduced as of July 1, 2011. The reduction is substantial, with first to third annuities decreasing by approx. seventy percent, and annuities from the fourth onward decreasing by approx. forty percent. The revised amounts are listed below:

      [First to third annuities] approx. 7,000 JPY → approx. 2,300 JPY(2,500→800NTD$)
      [Fourth to sixth annuities]approx. 9,800 JPY → approx. 5,600JPY (3,500→2,000NTD$)
      [Seventh to twelfth annuities] approx. 14,000 JPY → approx.8,400 JPY(5,000→3,000NTD$)

  • India revises manual for examination of design applications
    • On March 31, 2011, the manual for examination of design applications in India was revised.

      One of the major changes is the introduction of a system for partial designs. The manual instructs that drawings of designs which fall into the scope of request for a right should be entered using solid lines. All drawings of designs which do not fall into said scope should be entered using broken lines.

      In addition, the revision introduces electronic applications.

  • Design application trends in China
    • Since the Chinese Amended Patent Law was put into effect on October 1, 2009, and in accordance with the exclusion of patterns and indicator designs from registration eligibility (Chinese Amended Patent Law, Article 25), the permission for multiple similar designs to be included in a single application (hereafter referred to as a related design application) (Chinese Amended Patent Law, Article 31), and other revisions with regard to designs, the following trends in design applications can be observed.

      ● While the design applications for two-dimensional printed products are decreasing, the number of applications for three-dimensional containers is on the rise
      In the period from October 2009 to September 2010, the number of design applications in China concerning two-dimensional printed products such as labels and marker seals was 5,016, which constituted a sharp decrease compared to the 15,396 applications of 2008. Meanwhile, the number of applications for three-dimensional containers for the same period was 24,434, about 6,500 more than in 2008.

      ● Related design applications are mostly filed by Chinese applicants
      Between October 2009 and September 2010, while the number of related design applications by Chinese applicants was 2,498, constituting 62.43 percent of the total number of related design applications, the number of such applications by foreign applicants was 1,503, or 37.57 percent.
      As far as the use of related designs by country is concerned, China, Japan, U.S.A., Germany, and France rank in that order.
      However, while the percentage of related design applications of the total number of design applications is less than one percent in the case of Chinese applicants, it is higher in the case of foreign applicants with German applicants at 18.68 percent,U.S. applicants at 16.73 percent, and Japanese applicants at 12.86 percent.


  • The JPO to revise design examination criteria
    • Following the submission of public comments (deadline: June 20, 2011) the JPO will revise examination criteria for design registration in July, 2011. Specific revisions follow:

      (1) Overhaul of the requirements for submission of drawings
      Under the present design system, when filing a design application, it is generally necessary to clearly disclose the design by submitting drawings from all six sides.With the revision in question, in the case of application for registration of a partial design, submission of certain drawings that show parts other than the one seeking registration may be omitted.

      (2) Clarification of the registration requirements for display designs
      People expect that by clearly stating the requirements for protection in the standards for design examinations concerning images designated in the Design Act, Art. 2., Par. 2 (used for operations to exercise the functions of the product), as well as displayed images that are recognized by Art. 2, Par. 1., the content of said standards will become clearer.
      In addition, when images fulfill certain requirements before and after undergoing an alteration, multiple displays may be regarded as one design.



  • Korea introduces amended Enforcement Decree of the Design Protection Act and amended Enforcement Regulations (April 1, 2011)
    • On April 1, 2011, an amended Enforcement Decree of the Design Protection Act as well as amended regulations were introduced in Korea. The main contents are as follows:

      1. Expansion of items not subject to examinationNon-examinable items were expanded from ten to eighteen classes. Specific non-examinable items are listed below (newly added items are underlined):

      ・ manufactured foods and luxury items
      ・ clothing
      ・ accessories
      articles for personal use
      handbags, mobile phone cases, etc.
      ・footwear
      clothing and paraphernalia, multipurpose parts and attachments
      ・bedclothes, rugs and carpets, curtains, etc.
      domestic hygiene products
      ritual articles
      small items for interior arrangement
      ・materials for training, writing and drawing, etc.
      ・writing tools, office supplies, etc.
      ・office paper products, printed matter, etc.
      ・wrapping paper, packaging containers, etc.
      advertisement tools, indication instruments, tools for product display
      electronic calculators, etc.
      ・fabric, boards, strings, etc.

      2. Addition of new file formats that may be submittedIn 2010, it became possible in Korea to submit drawings as 3D files. This most recent amendment has added IGES(Initial Graphics Exchange Specification)to the file formats that may be submitted. Submission of the following file formats is now possible:

      ・3DS(3DStudio)
      ・DWG(Drawing)
      ・DWF(DesignWebFormat)
      ・IGES(Initial Graphics Exchange Specification)

  • Number of applications filed with Europe's Community Trade Mark (EUTM) and Registered Community Design (RCD) recovers
    • The number of applications filed with the Community Trade Mark (EUTM) in 2010 has increased by 11% from 2009, reaching 98,000 applications. Out of this number, applications from Germany and the U.S.A. in particular have increased greatly.

      The number of applications filed with the Registered Community Design (RCD) has also increased by 7% from 2009, reaching 82,000 cases. The number of applications from Germany, Italy, etc. has slightly decreased from 2008, but as a whole, the annual applications have reached a new high.

  • Information regarding relief measures, etc. by Europe's Office of Harmonization for the Internal Market (EUIPO)
    • The European Office of Harmonization for the Internal Market (EUIPO) has provided relief measures in response to the recent Tohoku earthquake.
      As a result, all time limits which affect persons who have their residence or a registered office(s) in Japan and are in the process of following procedures with the EUIPO, and which were to expire between March 11 and March 28, 2011 (March 11 and March 28 inclusive), have been extended until April 28.

  • EU-Registered Designs and Trademarks
    • The European General Court (GC) cancelled a trial decision by the Boards of Appeal (BoA: EUIPO’s department of appeal) at EUIPO that supported the invalidation of a registered Community design (RCD) on grounds of prior trademark existence. GC stated that that the design in question and the prior design have not been compared properly.

      Stabilo had appealed for the invalidation of the RCD of a highlighter pen possessed by Beifa on grounds registered a figure trademark concerning the designated product in Germany and based on Article 25(1)(e) * as well as Article 52 of EUIPO provision 6/2002.

      However, although the prior trademark was a two-dimensional figure trademark and not a three-dimensional one, BoA had compared it with the design in question as a three-dimensional mark. This caused GC to cancel the decision as contrary to the written requirements of the law.
      In addition, GC published the opinion that the scope of application of Article 25 (1)(e) should not be limited to cases in which a prior trademark and a design are identical, but extends to similar symbols of a prior distinguishable trademark.

      When a distinguishable symbol is used in a design and the holder of the right to a symbol also possesses the right to prohibit its use in a design in accordance with EUIPO law or in a signatory state, an RCD may be invalidated.


  • Korea: revised guidelines on design protection law
    • The Republic of Korea implemented on January 1, 2010 a revised version of the guidelines on design protection law . While the submission of an oblique perspective view and of the six standard views was so far mandatory, it is now sufficient to submit one or more views showing clearly the creative aspects of the design and its general features.Further, the requirement to submit the six standard views in orthogonal projection for three-dimensional designs has been lifted. Accordingly, the number of reasons of refusal regarding non-matching outlines or non-matching scale, which were so far frequently issued by the KIPO, is expected to diminish. This in turn should allow for a reduction in the backlog of design applications.

  • JETRO releases Japanese translation of China IP laws
    • The Japan External Trade Organization (JETRO) has released on its website Japanese translations for a number of Chinese judicial texts, including Chinese IP laws (Patent, utility model and design law, and trademark law), administrative regulations (for example administrative instructions on patent, utility model and design law, and ordinances on the enforcement of the trademark law) and law interpretations. A Japanese translation of the Chinese examination guidelines for patent, utility model and design was released as well.
      As the strategic importance of patent, design and trademark filing in China is on the increase, these translations will most likely come in handy for Japanese companies and IP practitioners.


      http://www.jetro.go.jp/world/asia/cn/ip/law/


  • Electronic filing of design applications in China
    • Electronic filing for patent, utility model and design applications is on the rise in China, following the introduction of the system in 2004.The State Intellectual Property Office (SIPO) announced on August 23, 2010 its intention to further promote its use, setting an objective of more than 50% of electronic filings in every region of the country. At this time of the year, the number of electronically filed applications already exceeds 60,000.Electronic filing makes it possible to reduce the period from filing to registration, and thus allows for a faster acquisition of right.The following points should be taken into account when filing electronically a Chinese design application:

      1. The brief explanation of the design must be in XML format. It must include the name of the product, its intended use, a description of the features of the design as well as the reference of the drawings/photograph illustrating said features.
      2. The drawings/photographs must be either in JPEG or TIFF format and must be smaller than 150 x 220 mm, with a resolution comprised between 72 dpi and 300 dpi.
      3. A drawing/photograph must be submitted for each view.
      4. The drawings/photographs cannot include titles such as “front view”.Further, it should be noted that amended drawings/photographs must have the same proportions than the drawings/photographs at the time of filing.

  • Revision of Korean design law
    • The contents of a revision of the law on the protection of designs in Korea, scheduled to enter into force on October 1, 2010, have been made public. Its main features are as follows.

      1. Extension of the duration period of the design right* Current system: 15 years from the date of registration* Revised system: 20 years from the filing date
      2. Replacement of the current “similar design” system by a new “related design system
      3. Enlargement of the multiple design application system* Current system: possibility to file one application for up to 20 items for which no examination is necessary* Revised system: possibility to file one application for up to 100 items, provided that said items belong to the same class, and regardless of whether or not examination is necessary for said items
      4. Revision of the criteria for expanded application* Current system: applies even if the later application is filed by the same applicant* Revised system: does not apply if the later application is filed by the same applicant(expanded application system: with this system, when a later design application based on a part of an earlier design application is filed, the later design application is refused)
      5. Expansion of the period to request an exception to lack of novelty* Current system: necessity to submit a request at the time of filing of the design application* Revised system: a request may be filed even when a Notification of refusal has been issued, at the time of filing an Opposition or before requesting a Cancellation trial
      6. Reinforcement of the creativity requirement* Current system: refusal of designs easy to create based on a shape known in Korea* Revised system: in addition, refusal of designs easy to create based on a shape known in countries other than Korea

  • Establishment of Website concerning European Community Trade Mark (EUTM) and European Registered Community Design (RCD) in Japanese language.
    • A Website in Japanese language has been established to introduce Community Trade Mark (EUTM) and Community Design (RCD) for which EUIPO is responsible. For details, please refer to the homepage below.

      http://www.registerbrandeurope.jp

  • European Community design application can claim priority of PCT application
    • The EUIPO gives an introduction on its website that a European Community design application can claim a priority of an earlier PCT application. As an example of such an application claiming a priority, an application of “earphones” is presented. For details, please access the URL below.Since the submission of six orthographic drawings is not essential for a European Community design application, it is considered to be beneficial for applicants to claim priority of an earlier PCT application in filing a European Community design application.

      http://oami.europa.eu/ows/rw/pages/EUIPO/EUIPOPublications/newsletter/
      1002/RCD/rcd1.en.do


  • Amendments to Chinese Implementing Regulations related to design application
    • re similar designs related to the same product may be submitted in one design application.

      (i) Multiple designs of the same product similar to one another in one design application shall be similar to the basic design of the product.

      (ii) Multiple designs shall not exceed a maximum of 10 designs.


      (3) Priority of design ((revised Implementing Regulations, Rule 31)
      Where the applicant of a design patent application claims the priority of a basic application filed in a foreign country, and the basic application does not include a brief explanation of the design, if the brief explanation submitted in accordance with the provisions of Rule 28 of this Implementing Regulations does not go beyond the scope of the disclosure as shown in the drawings or photographs of the basic application, this circumstance will not affect the applicant from enjoying the right of priority.


      (4) Design assessment report
      Where any infringement dispute relates to a patent for utility model or design, the people's court or the administrative authority for patent affairs may ask the patentee or the interested party to submit a patent assessment report, which is made by the Patent Administration Department under the State Council. The patent assessment report is used as an evidence for proceeding and handling the patent infringement dispute. (revised Patent Law, Article 61)

      (i) Eligible person for request (revised Implementing Regulations, Rule 56(i))The patentee or the interested party may request the Patent Administration Department under the State Council to make a patent assessment report.

      (ii) Number of requests (revised Implementing Regulations, Rule 57)Where there are multiple requests for the patent assessment report by requesting persons, the Patent Administration Department under the State Council shall make only one patent assessment report.

      (iii) Time to request (revised Implementing Regulations, Rule 56(i))The patentee or the interested party may request after publicati

  • Europe perceives competitive design as critically important
    • A survey conducted by the European Commission regarding the relationship between design and innovation revealed that the majority of respondents, including non-design-related companies, perceive design to be critically important for the future of EU economic competitiveness.
      The registered Community Design (RCD) system was established in 2003 to protect designs across the entire EU region. Since the system was established, almost 400,000 designs from countries all around the world have already been registered with EUIPO.
      The RCD system has been widely used since it was established, and its use had steadily increased every year right up until the beginning of the global recession. According to data until September of this year, 53,000 design applications were accepted, down 11% from the same period in 2008.



  • Guidelines for the brief explanation regarding Chinese design applications
    • The State Intellectual Property Office (SIPO) of China published on September 30, 2009 a series of documents describing provisional measures and providing guidelines on the enforcement of the law, in order to clarify the application of the revised industrial property law.
      Regarding design applications, the submission of a brief explanation regarding the design (for which the SIPO published specific guidelines) will be necessary for the application to be accepted by the SIPO.



      Guidelines for the brief explanation regarding Chinese design applications
      A. A brief explanation of the design must be submitted when filing a design application (two copies per application).


      B. The scope of the design right will be determined based on the design of the product shown on drawings or photographs. The brief explanation may be used to interpret the design of the product shown on the drawings or photographs.


      C. The brief explanation must contain the following information:

      1. Name of the product related to the design
      The name indicated in the brief explanation must match the name indicated on the application documents.

      2. Intended use of the product related to the design
      The brief explanation must state clearly the classification of the product by describing its intended use. In the case of a product having several intended uses, all intended uses must be described.

      3. Relevant part of the layout of the design
      In the product, the relevant part of the layout is the shape, the pattern, the combination of shape and pattern, the combination of color, shape and pattern, or the part which differs from conventional designs. The explanation of the relevant part of the layout must be concise, clear and focused.

      4. The drawing or photograph illustrating best the relevant part of the layout must be specified
      The specified drawing or photograph will be used in the official design publication.


      D. The following points must also be included in the brief explanation when necessary:

      1. The protection of a colored design has been requested, or the drawings are omitted.
      The fact that the protection of a colored design has been requested must be stated in the brief explanation.
      Usually, when drawings are omitted from a design application, the applicant must state the concrete reason for the omission (such as the drawings being symmetrical or identical). If stating such reason is difficult, it is sufficient to explain what drawings have been omitted. For example, in the case that the bottom view of a large-sized machine is missing, it is sufficient to state that the bottom view has been omitted.

      2. A base design must be designated in the brief explanation in the case that several similar designs for an identical product have been filed as part of a single design application.

      3. In the case of a flat product such as fabric or wallpaper, it is necessary to state in the brief explanation that the individual patterns are placed successively in one or four directions, and that no boundary can be defined.

      4. In the case of a long and narrow product, the fact that the drawings have been omitted as appropriate due to the length of the product must be stated.

      5. The use by the design of a transparent material or of a new material having particular visual properties must be stated in the brief explanation.

      6. In the case of a product included in a combination, the name of each of the products included in the combination must be provided.


      The brief explanation shall not contain words related to sales and advertisement, and shall not describe the product’s functions or its internal structure.



  • Outline of recent trends in Chinese design applications
    • Design applications are so numerous in China that they almost exceed patent applications. The present article will focus on the recent trends of Chinese design applications.
      About 3,000,000 design applications were filed in China in 2008 (the highest number in the world) – a figure far above the 33,569 applications filed in Japan. More than 90% of these 3,000,000 design applications were filed by Chinese applicants.
      When looking back at general trends over the past ten years, it appears that, while the number of design applications filed by foreign applicants was multiplied by four over the period, the applications filed by Chinese applicants increased tenfold, thus resulting in a considerable boost in the percentage of Chinese-filed applications.
      In 2008, the five foreign countries from which the highest number of design application were filed in China were Japan (4,782 applications), the USA (2,527), Germany (1,334), South Korea (1,187) and France (653).




  • Korea revises its examination criteria for design
    • The Korea Intellectual Property Office introduced a set of revised design examination criteria on May 15, 2009. The main revised points are described below:

      * In the previous system, the identity of the drawings was very strictly examined. Thanks to the revision, however, a minor lack of identity will not be a reason for refusal. Differences in the reduction scale of the drawings will not be a reason for refusal either, provided it is possible to make out the pattern or the shape of the design.

      * In the case that the application documents contain a minor and obvious clerical error, the Examiner, instead of releasing a formal invitation to amend, will now be able to contact the applicant, for example by telephone, to confirm his/her agreement, before correcting the document ex officio.



  • JPO publishes a case digest of registered image designs
    • The Japan Patent Office (JPO) has released on its website a study covering the 120 years of history of the Japanese design system, entitled The Japanese design system: a 120-year-long journey.
      The study offers an exhaustive presentation of the history of the design system from its origins to the latest revisions of the law, including an overview of the evolution of the designs themselves, and is divided in the following four parts:

      First partA 120-year-long history
      Second partHistory of the use of the design system
      Third part Chronological table covering the 120-year period
      Fourth partDocuments (list of major design rulings, bibliography of design-related documents, bibliography of design-related theses…)

      Website of the JPO design department (in Japanese):
      http://www.jpo.go.jp/seido/s_ishou/isyou_seido_ayumi.htm



  • Europe : design disclosure in China makes protection as Unregistered Community Design impossible
    • The German Federal High Court has issued a decision stating that a design first published in China and later used commercially within the territory of the European Community was not eligible for protection as an Unregistered Community Design (UCD).
      The plaintiff was claiming protection of the design as an UCD on the grounds that, following the creation of the said design for a new biscuit press and its registration by the State Intellectual Property Court (SIPO) of China, the design had been used commercially in the United Kingdom immediately after its publication.
      The Community Design Regulation (CDR) stipulates the following:
      * a design which meets the requirements for protection (i.e. novelty and individual character) shall be protected by an UCD for a period of three years as from the date on which the design was first made available to the public within the Community (Article 11)
      * a design which has not been made public within the territory of the Community shall not enjoy protection as a UCD (Article 110a)
      * the requirements for protection are not met in the case that an identical design has been made available to the public within the Community before the design for which protection is claimed (Articles 5 and 7)
      The Court ruled that the plaintiff, by selling the related biscuit press in the UK, had made the design available to the public within the Community as provided under articles 11 and 110a of the CDR; however, since the design had lost its novelty as provided under articles 5 and 7 of the CDR due to its publication by the SIPO, protection as an UCD must be refused.
      This decision of the German Federal Supreme Court confirms that a design which has been originally disclosed outside of the territory of the European Community is barred forever from protection as an UCD.

      Reference:
      http://oami.europa.eu/ows/rw/resource/documents/RCD/case-law/gebaeckpresse.pdf
      AIPPI (2009) Vol. 54 No. 2


  • It changes to the method of examining the European Community design and the priority document.
    • Change in the examination procedure regarding the RCD priority documents

      The EUIPO (Office for the Harmonization of the Internal Market) has changed its procedure regarding the pre-registration examination of priority documents by putting an end to its previous practice of examining whether the drawings of the RCD application are identical or not to the drawings of the application claimed as priority by the RCD application (hereafter referred to as “the priority application”).

      The examination of priority documents following the new procedure will from now on be restricted to the following items:
      lwhether the file number of the priority application is indicated;
      lwhether the filing date of the RCD application falls within the six-month period from the filing date of the priority application;
      lwhether the priority application was filed in contracting member state of the Paris Convention or of the World Trade Organization;
      lwhether the Declaration of priority was filed within the time limit.

      As a result of the change, the EUIPO now accepts priority documents that do not contain drawings of the design (such as German certificates of design registration).

      This change in the examination procedure puts the EUIPO in line with most EU member states and will help accelerate the examination process.


      Extract from the February 2009 issue of the Alicante News - European Trade Marks and Designs Newsletter (page 7)


      Alicante News 2009.02
      http://oami.europa.eu/en/office/newsletter/09002.htm

  • The JPO releases a series of videos on its website to introduce the Japanese Design System
    • The Japan Patent Office (JPO) has released a series of educational videos on its website in order to enable even first time users to get a better understanding of the aims and basis of the Japanese design system. These videos, shot like a television series, introduce the Japanese design system from the basics to the application process.
      Entitled “Design rights: the manufacturer’s best ally”, the series is available on the website of the JPO and includes the following three episodes:
      “Design rights – the more you know them, the more interesting they become” (2 minutes)
      “What you get from knowing your design rights” (20 minutes)
      “Objective : design rights !” (15 minutes)

  • Amendments related to design patent in third amendment to China’s Patent Law.
    • The amendment to China’s Patent Law was passed by the National People’s Congress on December 27, 2008, and will go into effect on October 1, 2009.

      Major amendments related to design patent are described below.

      (1)Definition of “Design” is clarified (Article 2(4))
      “Design” means any new design of the shape, pattern, or their combination and the combination of color and shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application.

      (2)Stricter registration requirements

      (i) As to a regional standard for public knowledge and public use, the domestic standard is changed into to the world standard (Article 23(4))
      Any design which is publicly known or publicly used not only in China but also abroad loses its novelty.

      (ii) Restriction regarding conflicting applications is added so that the conflicting applications include applications filed by the same applicant (Article 23(1))
      Patent right shall not be granted for a design if an application for a design identical with said design was filed by any individual or entity before the filing date of said design. Therefore, conflicting applications include applications filed by the same applicant.

      (iii) “Substantial difference” is added to the registration requirements (Article 23(3))
      Any design for which patent right may be granted shall be substantively different from (i) the prior design or (ii) a combination of the feature of the prior design.

      (3) Design serving as a diagram or a sign is excluded from the objectives of the registration (Article 25)
      No patent right shall be granted for designs mainly serving as a sign and made of the pattern, color or its combination of two-dimensional printed matter.

      (4) Exceptions to the restriction that an application for a patent for design shall be limited to one design incorporated in one product (Article 31(2))
      An application for a patent for design shall be limited to one design incorporated in one product. However, as exceptions, in the following two cases, two or more designs may be filed as one application.
      (i) Two or more similar designs for the same product
      (ii) Two or more designs which are incorporated in products belonging to the same class and are sold or used in sets (already in effect in the current law)

      (5) Application documents
      Application documents must include “a brief explanation of the design” (Article 27)

      (6) “Exploit the patent” includes “offer to sell” (Article 11)
      After the grant of the patent right for a design, unless otherwise provided in this Law, no entity or individual may, without the authorization of the patentee, exploit the patent, that is, make, offer to sell, sell or import the product incorporating its or his patented design, for production or business purposes.

      (7) A system of search report for designs is introduced (Article 61)
      In a patent infringement dispute related to a patent for design, the patentee or the interested party may be required to submit a patent search report made by the Patent Administrative department Under the State Council to the people’s court or the patent administrative department (mainly in local districts). Only the patentee or the interested party can ask for the patent search report.

  • P&G files lawsuit in Canada for infringement of Herbal Essences trademark and design.
    • The Procter & Gamble Company (P&G) of U.S. has filed a lawsuit in the Federal Court of Canada December 11, 2008, against Apollo Health and Beauty Care Corporation for infringement of Herbal Essences intellectual property, including trademark, trade dress, and design.
      The suit involves the company’s Herbal Essences brand trade dress, the trademark, and the unique design of the Herbal Essences bottles for shampoos and conditioners. P&G has claimed that Apollo Health and Beauty Care is distributing look-alike Herbal Essences shampoo and conditioner products, asking Apollo Health be ordered to stop distributing the infringing products, recall existing inventory, and destroy the bottle molds.
      P&G introduced the bottles with the renewal of the brand in 2006. P&G believes that Apollo Health and Beauty Care is selling products in packages that copy Herbal Essences packaging to capitalize on the brand’s success and consumer loyalty.



PageTop ▲ 

PAGE TOP