New Graphical User Interface (GUI) Protection in Japan
With the rapid spread of portable devices such as smartphones and tablet terminals in recent years, new protections are needed in Japan for user interface designs and functionality.
In 2016, the Japan Patent Office (JPO) revised the Design Examination Guidelines to clarify that the Design Act protects displayed images necessary for performing functions of articles (corresponding to “manufactured articles” set forth in the U.S. Design Act), and where the images are also stored in the articles. Accordingly, icons in smartphone GUIs became protectable by the Design Act.
However, prior to 2019, the Design Act only protected images that are displayed and saved in articles. Moreover, acts amounting to infringement were limited to manufacturing, using, etc. of the articles related to a registered design. Given the increasing number of services implemented using GUIs, tying design protection to images stored in physical articles eliminated coverage in many situations.
Under these circumstances, Japan promulgated a partial revision of the Design Act on May 17, 2019. This revision extended the scope of protection offered by the Design Act. Specifically, the revised Design Act defines a “design” to cover an “image” or a “portion of the image” which create an aesthetic impression to an observing eye, where “the portion of the image is used for operating a device or is displayed as a result of completing a function of the device.” Design Act, Article 2(1). Thus, images stored in a cloud and provided via a network can now be protected by the revised Design Act.
Moreover, the revised Design Act defines a “use” of the design to include “creating, using, providing via an electric telecommunication line, offering or displaying for the providing of the image related to the design” and “assigning, leasing, exporting, importing, or offering for assignment or lease of a recording medium that stores the image related to the design or a device that incorporates the image.” Design Act, Article 2(2)iii. The revisions further extend protection to include computer programs and other means with functionality for displaying images relating to a protected design. Thus, infringement may now encompass uploading protected images to cloud servers and/or software that distributes a protected image via networks.
The above revision is scheduled to come into force on a date determined by a government ordinance within one year from the date of promulgation.
Unfortunately, the revised Design Act still does not protect a series of images associated with screen transitions even if individual images are recognizable to a user. Many commentators hope that images associated with screen transitions will become available for design protection in future.