[1] Where, even before a trial decision to invalidate the registration of a registered design becomes final and conclusive, a registered design could be easily created through an open design, etc., and it is evident that the design registration would be invalidated by an invalidation trial, whether a claim for prohibition of infringement or damages based on the design right constitutes an abuse of right (affirmative in principle), and whether the court in charge of the lawsuit for infringement of the design right may deliberate and determine whether the registered design can be easily created on the premise of examining the legitimacy of the defense

[2] Standard for determining whether a person with ordinary skill can easily create a design under Article 5(2) of the former Design Protection Act

[3] In the case where Gap corporation, the owner of a design right, which is the owner of a design right, which is the design right of the registered design " "," the subject goods, sought a injunction against infringement of the design, the case holding that the judgment below which found the ground for invalidation of the registered design obviously exists and it is erroneous in the misapprehension of legal principles, in the case where the registered design could not be easily created by the combination of comparable designs "," etc., even though it is difficult for a designer

[1] Even before a final and conclusive decision to invalidate the registration of a registered design becomes final and conclusive, where design registration could be easily created by means of a design falling under Article 5(1)1 or 2 of the former Design Protection Act (wholly amended by Act No. 11848, May 28, 2013), and it is obvious that the design registration will be invalidated by a trial for invalidation, a claim for prohibition of infringement or compensation for damages based on the design right constitutes an abuse of rights, barring special circumstances, and the court in charge of the lawsuit for infringement of the design right may deliberate and determine whether the registered design was easily created on the premise of examining the legitimacy thereof, if there is a defense that such a claim by the owner of the design right constitutes an abuse of rights.

[2] In order for a design to be easily created by a person with ordinary knowledge in the field to which the design pertains pursuant to Article 5(2) of the former Design Protection Act (wholly amended by Act No. 11848, May 28, 2013), the design should be a design with low creative level, such as a design that is merely a combination of or a combination of the shapes, shapes, or colors, or the shape, pattern, color, or their combination widely known in the Republic of Korea, or a combination thereof, which is almost imitated or used, or which is merely a commercial and functional transformation, the whole of which does not recognize any other aesthetic value, or a design that is modified, combined, or used as a trace of creative or expressive methods in the field to which the design pertains.

[3] In the case where Gap corporation, the owner of a design right, which is the owner of a design right, which is the design right of the registered design " "Slphone Slphone", sought a injunction against infringement of design Eul, the case holding that in comparison with the registered design and the comparative design ", there is a difference between display panel's protruding, the upper and lower body's shape and lower body's straight line's straight line's straight line's straight line's upper and lower body, and in particular, since the straight line's upper part of the registered design does not take part in the whole design, and it is easy to observe, the registered design is deemed as having an aesthetic value different from the comparative design, and it is difficult to view the comparative design as being a mere commercial and functional alteration that does not recognize any other aesthetic value as being identical with the registered design, and it is difficult to view the aforementioned comparative design as a combination of creative design and combination design's shape or expression in the field of creation, which merely makes it difficult to see the comparative design as an expression of the registered design as well as an expression of the registered design.

[1] Articles 5(2) (see current Article 33(2)), 62 (see current Article 113(2)), 64 (see current Article 115), and 68 (see current Article 121) of the former Design Protection Act (wholly amended by Act No. 11848, May 28, 2013); Article 2 of the Civil Act / [2] Article 5(2) (see current Article 33(2)) of the former Design Protection Act (wholly amended by Act No. 11848, May 28, 2013); Article 5(2) (see current Article 33(2)) of the former Design Protection Act (wholly amended by Act No. 11848, May 28, 2013) / [3] Articles 5(2) (see current Article 33(2)), 62 (see current Article 113); Article 168(2) of the Civil Act (see current Article 216(2) of the Civil Act)

[1] Supreme Court en banc Decision 2010Da95390 Decided January 19, 2012 (Gong2012Sang, 299) / [2] Supreme Court Decision 2008Hu2800 Decided May 13, 2010 (Gong2010Sang, 1163) Supreme Court Decision 2013Hu2613 Decided March 10, 2016

Desus Korea Co., Ltd. (Bae & Yang LLC, Attorneys Jeong Young-hoon et al., Counsel for the defendant-appellant)

Defendant (Attorney Song-chul et al., Counsel for the defendant-appellant)

Seoul High Court Decision 2015Na206007 decided April 7, 2016

The judgment below is reversed, and the case is transferred to the Patent Court.

The grounds of appeal are examined.

1. Regarding ground of appeal No. 1

A. Article 5(2) of the former Design Protection Act (wholly amended by Act No. 11848, May 28, 2013; hereinafter the same applies) provides that design registration may not be granted where a person with ordinary knowledge in the field to which the design pertains (hereinafter “ordinary designer”) is created by a combination of designs falling under paragraph (1) 1 or 2 (hereinafter “public design”), or by a combination of shapes, shapes, colors, or colors widely known in the Republic of Korea (hereinafter “public design”). Meanwhile, even if a trial decision to invalidate the registration of a registered design becomes final and conclusive, where a registered design could be created easily through a publicly known design, and it is evident that the design registration would be invalidated by the invalidation trial, barring special circumstances, a claim for prohibition of infringement, damages, etc. based on the design right constitutes abuse of rights, and thus, the court in charge of design right infringement lawsuit can easily deliberate and decide on whether a design right-holder’s claim constitutes abuse of rights (see, e.g., Supreme Court en banc Decision 2019Da19090.

B. In the same purport, the lower court was justifiable to have deliberated and determined on whether the registered design (design registration number omitted) of this case, which used the subject goods as “ Smartphone Slon Slon Slon Slon Slon Slon Slon Slon Slon Slon Slon Slon Slon Slon Slon Slon Sl

2. As to the grounds of appeal Nos. 2 and 3

A. Under Article 5(2) of the former Design Protection Act, an ordinary designer can easily create a design, such as a design that is merely a commercial or functional transformation that does not recognize any other aesthetic value as a whole, or a design that is merely a design that is modified, combined, or used to be used by a creative number method or expression method that is shaking in the design field, even if the shape, pattern, or color of a publicly known design or a combination thereof, or the shape, pattern, or color or combination thereof widely known in the Republic of Korea, or a partial transformation thereof, shall be a design with low creative level (see, e.g., Supreme Court Decisions 2008Hu2800, May 13, 2010; 2013Hu2613, Mar. 10, 2016).

B. We examine the above legal principles and records.

1) In comparison with the registered design in the instant case and the comparative design 2 and 3 (the comparative design 2 is limited to the pictures of the comparative design 3) the two and three (the comparative design 2 is limited to the pictures of the comparative design 3), it is common to the following: ① is composed of high-governmental organizations connecting display to attach on the back side of a smartphone, to sticking with fingers, to stick with displayes, and ② is smaller than the width of a smartphone in the form of a rectangular model treated with a bruth, and the sprinkler is located in its central part.

A person shall be appointed.

2) However, compared to the shape in which the central part of plart is protruding, the design of this case 2 and 3 of the comparative design 2 and 3 of the comparative design are in parallel with the shape in which plart’s central part is parallel, and the design of this case (C) design of this case is in parallel with the upper part of the body of plring and lower part of the body of the body of the plring, and as a whole, the comparison design 2 and 3 of the comparative design in its upper part and lower part compared to the square. The design of this case caused by the occurrence of the design of this case is distinguishable from the fact that there is no straight line between the upper part of the body of the plring and the lower part of the plling.

3) As seen above, the registered design of this case and the comparative design 2 and 3 differs from the design of this case in terms of whether flast sticks, the upper and lower shapes of the body body, and the straight line of theing lower part. In particular, since the straight line part of the registered design of this case, which exists under the lower part of the instant registered design, does not fall under the portion of the entire design, and is easy to be observed, the registered design of this case can be deemed as having an aesthetic value different from the comparative design 2 and 3. Accordingly, it is difficult to view that the comparative design 2 and 3 as the comparative design of this case are merely commercial and functional transformation that does not recognize any other aesthetic value.

4) Meanwhile, the comparative design 5, which consists of “the mobile phone with a safe height on the ground” the subject product, appears in the form of a source near the straight line at the lower part of the safe high interest. However, since the use, function, or specific shape and shape of the subject product are different from the registered design of this case, the comparative design 5 cannot create the registered design of this case merely with the comparative design 2 and 3, a creative number method or expression method simply combining the subject design 5 with the comparative design 2 and 3. Furthermore, the formation of the straight line portion at the lower part of theing design of this case cannot be found in the design field before the application of the registered design of this case. Moreover, there are no materials to deem that the formation of a straight line part at the lower part of theing design of this case with the shape as the same as the design of this case is a stiking method or expression method in the design field.

5) Therefore, it is difficult to view that the registered design of the instant case could easily be created by the combination of comparable designs as seen earlier by an ordinary designer.

C. Nevertheless, the lower court determined that the registered design of this case was invalid since the registered design of this case could be easily created by combining the comparative design 2 and 3 with the comparative design 5 or by combining the widely known type. In so determining, the lower court erred by misapprehending the legal doctrine on determining the utility of a design, thereby adversely affecting the conclusion of the judgment. The allegation contained in the grounds of appeal on this point is with merit.

3. Conclusion

Therefore, the judgment of the court below is reversed, and the civil appeal case concerning intellectual property rights such as patent rights shall be transferred to the competent court according to the exclusive jurisdiction of the Patent Court of Korea. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Noh Jeong-hee (Presiding Justice)