Secret Design System
The Design Act on one hand protects newly created designs as the property of their creators by way of registration, and on the other hand publishes the registered designs in the Design Gazette to promote their use. While the Design Act protects the aesthetic appearance of an article, it is true that imitation of a design is relatively easy because an appearance can, due to its nature, be identified by anyone at a glance.
On the other hand, even if the creator does not intend to commence implementing its created design at the moment, it is essential to first file a design application to secure an earlier filing date. However, after an application for the design is filed and it proceeds to registration, the design will be published in the Design Gazette. This means that others will be aware of the nature of the design to be implemented by the design owner in the future, which would cause a risk that another party may, by imitating the said design, produce a design which looks like a diversion of the said design.
Therefore, in order to deal with a situation mentioned above, there are provisions of “Secret Design” in the Design Act, under which particulars of a registered design shall be kept in secret. However, if the period during which a design registration is kept in secret is too long, it would amount to grant excessive protection to the design registrant. In view of this, a secrecy period shall be up to three years from the date of the registration establishing the design right.
During the secrecy period, particulars of a secret design are not publicly known to the general public. During this period, even if others have incidentally manufactured products having a design identical with or similar to a secret design, the registrant of the secret design could enforce its rights such as demanding an injunction, although such enforcement measures are subject to certain limitations.
A request for keeping a design secret may be made simultaneously with filing
a design application, and otherwise, simultaneously with paying registration
fee for the 1st year. Therefore, in the event that, for example, the design
applicant decides to postpone the time of commercializing the design after
filing the design application, the applicant can still use the system of
secret design until the payment of registration fee. For more information,
please feel free to contact our office.