Multifaceted protection through design and trademark rights

Design branding

The most basic approach to protecting a product’s design is the acquisition of design rights. However, a design may be protected by regulations on imitation of forms of a product and regulations on creation of confusion in designs under the Unfair Competition Prevention Law and copyrights. To effectively protect a product’s design, it is important that these systems are considered and used from a variety of perspectives.
In addition, if a design is branded, it can generally be protected by a trademark right instead of a design right. This depends on whether the purpose is to protect the creation of the design or to protect the credibility of the brand. LEXIA supports its clients in protecting their designs effectively by taking such matters into consideration as well.

Strategic use of design and trademark rights

Proper protection of design

LEXIA believes that the acquisition of rights based on the strategic filing of a design application is essential for the proper protection of a design. It is clearly important for a company to acquire the design rights for its product. Once a company has acquired design rights, it can exercise them effectively to prevent the production of “dead copies.” However, as you may have experienced, there are also cases in which the superiority of a company’s product has been lost due to other companies flooding the market with similar products rather than dead copies. If you have had such an experience, you may have felt the limitations of design rights as you realized the uncertainty and narrowness of the scope of similarity in them. Such a situation is caused by a failure to undertake sufficient discussion of the strategic acquisition of design rights before filing the application. At LEXIA, we confirm the essential protective scope and the ideal protective scope prior to the filing of an application, and propose a design rights group in which your rights within these scopes will be protected by design rights. Based on this approach, we believe that our clients will be able to develop a design rights application strategy that will satisfy their needs.

What is the strategic use of trademark rights?

A trademark registration is critical to brand development. Without trademark rights, it is highly likely that you will be unable to appropriately eliminate identical or similar trademarks or the parody trademarks of other companies. We also recommend that you conduct trademark investigations with a view to acquiring trademark rights. Conducting trademark investigations will allow you to ascertain the business risk involved in using the trademark and the circumstances at other companies. Such trademark investigations and the acquisition of trademark rights are the first step towards achieving strategic trademark protection.
As part of your trademark protection, you may undertake an opposition procedure or request an invalidation or cancellation trial. LEXIA has a great deal of experience in such trial procedures and has also build up an outstanding track record with cases involving trademark infringement lawsuits.

Using overseas applications

The number of applications being filed around the world-not only in Europe and the United States, but also in countries located in ASEAN and other parts of Asia as well as the Middle and Near East-is increasing. At LEXIA, we file design applications overseas by leveraging the strategic filing of design applications that is conducted in Japan. We have built up extensive knowledge of matter such as how to file applications at a low cost and how to acquire rights with a view to exercising them through our experiences in foreign countries. Although such work can be carried out by receiving advice from local agents, we believe that for the filing of applications overseas in particular, strategic filing needs to be led from the Japan side in many cases.
For the protection of trademarks, too, a judgment must be made as to the presence or absence of discriminability as well as similarity or non-similarity to preexisting trademarks based on an understanding of the practices employed in the relevant country. LEXIA has filed a large number of foreign trademark applications and international trademark applications in accordance with the Madrid Protocol not only in Europe and the United States, but also in countries located in ASEAN and other parts of Asia, the Middle and Near East, and Africa.
One of our partners and patent attorneys, Hiroki Matsui, has given lectures and exercise courses on strategic design application filing and trademarks on a considerable number of occasions through the Japan Patent Attorneys Association (JPAA), the Japan Trademark Association (JTA), and other such organizations. He has also given many lectures on the filing of design applications overseas. By leveraging the overwhelming large amount of expertise that we have acquired through application filing, trial, and litigation practices both in Japan and overseas, we are able to protect the designs and brands of our clients.

LEXIA’s multifaceted protection through design and trademark rights

As the phrase “design branding” has become increasingly used, the distinction between design and brand has been eroded. As a result, the protection of design and brand requires adequate knowledge and experience in terms of both design and trademarks. The first step in protecting product and package designs requires the strategic acquisition of design rights. This allows a company to use its product exclusively and ensure its superiority in the market. Furthermore, with regard to the shape, pattern, and color used in the product and package designs, we give consideration to the protection of trademark rights in terms of, for example, a three-dimensional trademark, a figure trademark, a color trademark, and a position trademark. As set out in the Trademarks Law, a trademark is not limited to a name or logo alone; it extends to factors such as the product’s three-dimensional shape, color without contours, position, and movement. In addition to the design rights, the rights for any characteristic part of the design may be acquired in the form of trademark rights.
By protecting a design through trademark registration in this way, we aim to enable our clients to acquire permanent exclusive rights through a renewal procedure.
LEXIA offers product and package protection solutions using design rights and trademark rights.

Illustration of the design protection solution offered by LEXIA

Reference book

Practice of Community Trademark and Community Design
Hiroki Matsui Published September 15, 2010 Published by the Japan Institute of Invention and Innovation
We recommend the book entitled Practice of Community Trademarks and Community Designs, which was written by our partner and patent attorney Hiroki Matsui. It explains the practice of community trademarks and community designs based on an extensive number of prior cases.
Further details.