In this article, we provide some information about judgments on similarity of designs in Japan.

  1. Criteria for judging similarity

The similarity of designs at the examination and enforcement stages is judged from the perspective of the consumer, not the creator of the design.  Under Japanese Design Law, the article of manufacture to which a design is applied serves an important role in the recognition of the design.  Thus, when making a judgment on similarity, the purpose and the function of the article will be considered in addition to its shape or configuration.  When the articles and shapes of two designs are similar, the designs would be judged to be similar as a whole.  Regarding the similarity of articles, if either the purpose or the function of two articles is the same, the articles would be deemed to be similar.

When two designs are compared during examination, the parts common to both designs will be compared with the parts that differ between them to determine how much the respective parts contribute to the designs.  If the common parts correspond to ordinary designs in the field, they would not have much of an effect on the judgment of similarity.  Conversely, if the parts which differ make the article appealing to consumers (i.e., have a distinguishing feature), the difference would make a greater impact on the judgment of similarity.  Thus, if the relative contribution of the common parts is large (there are many points in common and only a few, insignificant differences), there is a tendency for the designs to be considered similar.  On the contrary, even if there are few differences between the designs, if those differences play a large role in distinguishing the designs (make a large contribution), the designs would be judged to be dissimilar.

  1. Examples of judgments on similarity

For your reference, a few examples of judgments regarding the similarity of designs are illustrated below.  How do they differ from the practice in your country?

  1. Designs which were judged to be similar
    1. The importation of fans similar to Dyson fans was suspended at Japanese Customs.

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  1. The Tokyo District Court deemed that the designs of self-propelled cranes were similar.

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Since the substantial parts (circled in blue) are common to both designs, it was judged that the two designs were similar.

  1. Designs which were judged to be dissimilar
    1. The Intellectual Property (IP) High Court of Japan deemed that the designs of colored contact lenses were dissimilar.

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In this decision, the IP High Court stated that the judgment on similarity of colored contact lenses should be made from the perspective of people who see the eyes of the person wearing the contact lenses.  It was said that the registered design left a natural and gentle impression, whereas the cited design imparted an artificial and mechanical impression.

  1. The design of a cut jewel was judged to be dissimilar to a cited design in a trial decision at the Japanese Patent Office.

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It was stated in the decisions that although the design of the crown part (the upper part having a trapezoidal shape when seen from the side) are similar, these kinds of designs can generally be found in the field of cut jewels.  However, the difference between the designs in the pavilion part (the lower part having a conic shape) affected the judgment on the similarity of the whole design, and thus these designs were judged as being dissimilar as a whole.