Recent Updates of Japanese Design and Trademark System

We are pleased to inform you of recent updates of the Japanese IP system, particularly in the fields of design and trademark. 

1. DESIGN: Protection of GUI Design Used Within the Metaverse

In March 2024, the Japan Patent Office (JPO) published a guideline regarding a design application for a GUI (graphical user interface) used in virtual reality.  The outline of the guideline is as follows:

A GUI displayed in virtual reality is included in the image which is protectable under the Design Law (hereinafter, “the protectable image”), provided the GUI meets the traditional requirements: i.e., the GUI is ether one of “an image used for operating a device” or “an image displayed as a result of performing a function of a device.”   

In considering whether the displayed image in virtual reality is considered as the protectable image, the following points should be noted: 

(1) A GUI used for operating a virtual device (e.g., a computer keyboard) displayed in virtual reality, and a GUI displayed as a result of performing a function of a virtual device displayed in virtual reality, are not considered as the protectable image.  In order for a GUI to be considered as the protectable image, the GUI must be used for operating a physical device, or must be displayed as a result of performing a function of a physical device.

(2) A GUI merely displayed in virtual reality is not considered as the protectable image.  For example: an image of a jacket for an avatar, which is purchasable in a store within the realm of virtual reality.   

(3) An image of digital contents (e.g., a screenshot of an in-play video game, or a desktop wallpaper) is not considered as the protectable image.  On the other hand, a GUI displayed in virtual reality, which includes an image of digital contents as a part thereof, may be considered as the protectable image, as long as it meets the aforesaid traditional requirements.  In this case, the image of digital contents is considered that it does not form a part of the GUI and disregarded in the examination of the GUI in terms of its newness and creativeness. 

More detailed information on the above will be available in the following pages within the JPO website (Japanese only):

https://www.jpo.go.jp/system/laws/rule/guideline/design/document/kaso-gazo-guidebook/guidebook.pdf

2. TRADEMARK: English Version of Revised Examination Guidelines for Trademarks

 We are pleased to inform you that the Japan Patent Office (JPO) has published an English version of revised Examination Guidelines for Trademarks on May 1, 2024.

We find this revised Examination Guidelines helpful for our overseas clients, especially who handle Japanese trademark prosecution.

The following Examination Guidelines are effective on April 1, 2024.

The main revisions are as follows:

・Introduction of a consent system (Article 4 (4), and Article 8)

・Relaxation of registration requirements for trademarks that include the name of another person (Article 4 (1), viii)

If you are interested, please feel free to visit the following JPO website:

https://www.jpo.go.jp/e/system/laws/rule/guideline/trademark/kijun/index.html