[1] The purport of Article 5 (2) of the former Design Act

[2] In a case where Gap corporation filed a petition for a registration invalidation trial against Eul, the holder of the right to register the registered design "the synthetic resin projected materials" for which the target goods were "the synthetic resin projected materials" and the Korean Intellectual Property Tribunal rejected Gap corporation's appeal, the case holding that the registered design constitutes a design that can be easily created by the pattern of gratum, etc., as a natural material which is a form of common knowledge, and thus, its registration should be invalidated

[1] Article 5(2) of the former Design Act (amended by the Design Protection Act, Act No. 7289 of Dec. 31, 2004) provides that a design that can be easily created by a person with ordinary knowledge in the field to which the design pertains (hereinafter “ordinary designer”) through a shape, pattern, color, or combination thereof, widely known in the Republic of Korea, shall not be eligible for design registration prior to the filing of an application for design registration. The purport of the provision is that a design at a low creative level can not be registered because it is merely a commercial or functional alteration that does not recognize any other aesthetic value as a whole, or a design that is merely a modification, combination, or exclusive use of any creative water or expression method that is used in the field of the design, such as a design that has been widely known in the Republic of Korea, or a design that is merely a modification, combination, or exclusive use of such a design by an ordinary designer.

[2] In a case where Company A filed a petition for a registration invalidation trial against Company B, the holder of the right to register the registered design, which is the synthetic resin projecting material for drawing, and the Korean Intellectual Property Tribunal rejected Company B’s request, the case affirmed the judgment below that the registered design constitutes a design that can be easily created by a person with ordinary knowledge in the field to which the design pertains, such as the shape, pattern, or color, or the natural material that is the combination thereof, and the shape of the rectangular body is extremely similar to that of a natural condition, and thus, is extremely similar to the pattern in a natural condition, since the shape, which appears at the designated level of the registered design, was distributed in a non-permanent manner on a white basis, and the shape of the rectangular body was widely known domestically.

[1] Article 5 (2) of the former Design Act (amended by Act No. 7289 of Dec. 31, 2004) (see current Article 33 (2) of the Design Protection Act) / [2] Article 5 (2) of the former Design Act (amended by Act No. 7289 of Dec. 31, 2004) (see current Article 33 (2) of the Design Protection Act)

[1] Supreme Court Decision 98Hu591 Decided April 10, 2001 (Gong2001Sang, 1160) Supreme Court Decision 2013Hu2613 Decided March 10, 2016

Nump Co., Ltd. (Patent Attorney Kim Byung-jin et al., Counsel for the defendant-appellant)

Defendant (Patent Attorney Park Jong-sung et al., Counsel for the defendant-appellant)

Patent Court Decision 2014Heo447 decided April 11, 2014

The appeal is dismissed. The costs of appeal are assessed against the defendant.

The grounds of appeal are examined.

1. Regarding ground of appeal No. 1

Examining the facts in light of the relevant provisions, such as Article 43 of the former Design Act (amended by Act No. 7289, Dec. 31, 2004; hereinafter the same), and the record, the lower court’s determination that the instant trial decision erred in specifying the form of the registered design based on a processed drawing different from the drawings attached to the application for design registration, while identifying the scope of protection of the instant registered design (design registration number omitted) using the goods subject to the instant trial decision as “the synthetic resin emitted for system use,” is justifiable, and contrary to what is alleged in the grounds of appeal, there were no errors by misapprehending the legal doctrine

2. Regarding ground of appeal No. 2

Article 5(2) of the former Design Act provides that a design that can be easily created by a person with ordinary knowledge in the field to which the design pertains (hereinafter “ordinary designer”) by means of a shape, pattern, color, or combination thereof widely known in the Republic of Korea shall not be eligible for design registration prior to the filing of an application for design registration. The purport of this provision is that even if a design is partially modified, it is merely a commercial and functional alteration with the shape, pattern, color, or combination thereof (hereinafter “main form”) widely known in the Republic of Korea, or is merely a commercial and functional alteration without any other aesthetic value, or a design whose level of creation is low like a design that is modified, combined, or used by a person with ordinary skill in the field to which the design pertains, such as a design that is modified, combined, or used by a person with ordinary skill in the field to which the design pertains (see, e.g., Supreme Court Decisions 98Hu591, Apr. 10, 201; 201Hu36136, Mar. 16, 2016).

The lower court determined that the registered design of this case constitutes a design that can be easily created by an ordinary designer, a natural material that is the well-known form, etc., on the ground that the shape, which appears in the top of the registered design of this case, is extremely similar to the pattern of granite in natural condition, and that the shape of the rectangular body is merely a shape widely known in the Republic of Korea.

In light of the above legal principles and records, the above judgment of the court below is just, and contrary to the allegations in the grounds of appeal, there is no error of law by misapprehending the legal principles as to the determination of creative utility

3. Conclusion

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Park Sang-ok (Presiding Justice)