Episode 12

In Episode 11, we explained about designs based on functional beauty. In this case, if an item that is the subject of a design registration focuses on its function, it becomes the subject of a utility model registration.
In the United States, both designs and utility models are incorporated into the patent system and are protected as design patents and utility patents. The relationship between the two is explained by the United States Patent and Trademark Office as follows:
" In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.
While utility and design patents afford legally separate protection, the utility and ornamentality of an article may not be easily separable. Articles of manufacture may possess both functional and ornamental characteristics." (https://www.uspto.gov/web/offices/pac/mpep/s1502.html#d0e150263)
The above explanation also applies in Japan. If you create a design based on functional beauty, you should also apply for a utility model registration for that function. If you create an invention that is distinctive in its shape or configuration, you should also apply for a design registration for that shape or configuration.
If you obtain rights in both a design and a utility model, when you exercise your rights against an infringement, even if one is not recognized, there is a chance that the other will be recognized.