Partial Design Protection System
Under the former Design Law, an application for a design registration of a part of an article used to be rejected because the law required an article to be capable of being the subject of a sales transaction by itself. However, under the current law, a part of an article itself can be the subject of a partial design registration and is thus separately protectable.
In the application form, the partial design, that is, the subject matter of the application, must be explicitly described. The title of the article for a partial design must recite the title of the whole article of which the partial design is included.
In the drawings, the part of the design for which protection is sought shall be shown in solid lines and the environment or surrounding area shall be shown in broken or dashed lines.
A partial design application will be examined in the same manner as a regular design application, i.e., as long as the articles are identical or similar, the application will be examined as to its novelty and similarity of designs with prior applications as explained below.
- Judgment of novelty (Article Nos. 3(1) to (3), see Table 1) In the case where a whole design is publicly known (i.e., used in public and/or published), a partial design application, the subject matter of which is identical with or similar to a part of the whole design, will be rejected.(Article Nos. 3(1) to(3) )
In contrast, in a case where a partial design is publicly known and a whole design application including a part that is identical with or similar to the known partial design is filed, the whole design may be determined to be dissimilar from the partial design and the application may be allowed. However, if the whole design, excluding the known part, is recognized as being publicly known as well or if the whole design is obvious in view of the known design, the application will be rejected. (Law Article No.3(2))
- Judging similarity of designs with prior applications (Article No.9, No.3-2; See Table 2.)
In a case where a whole design is disclosed in an earlier application, if a partial design application is directed to a design that is identical with or similar to a part of the whole design, the partial design application will be rejected.However, this does not apply where the partial design application was filed prior to the publication date of the Design Gazette stating the prior application and the applicant for the partial design application and the applicant for the prior application is the same person. (Article No.3-2)
In contrast, in the case where a partial design is disclosed in an earlier application, a whole design application, including a part that is identical or similar to the partial design, may be judged dissimilar, and therefore, registered. However, if the partial design application discloses most of the whole design, the whole design application could be rejected whether the applicants are the same or not. Thus, it is possible that the partial design registration and the whole design registration belong to different persons. In that case, use of the later-filed whole design may infringe the partial design registration because use of the whole design is always accompanied by use of the earlier-filed partial design. (Article No.26).
If a partial design application and a whole design application are filed on the same date, both of the applications will be registered regardless of whether the applicant is the same. Therefore, Article No. 9(2) will not be applied and the parties do not have to make an agreement among themselves in light of the provision of Article 26.