2018Da215893 Prohibition of Infringement of Design Right

A Stock Company

Attorney Lee Jae-min and Lee Jae-in, Counsel for the defendant-appellant

K, Inc., a lawsuit taking over corporation B

Law Firm LLC, Attorney Lee Dong-won

Attorney Jeon Sung-sung, Attorney Lee Jong-sung, Lee Dong-ho, Lee Jong-ho

Patent Court Decision 2017Na1933 decided February 2, 2018

June 28, 2018

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

The grounds of appeal are examined.

1. Article 2 subparag. 1 (i) of the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter “Unfair Competition Prevention Act”) provides that an act of transferring or lending goods that imitates the form of goods produced by another person as a type of unfair competition is excluded from the act of unfair competition. Article 4 of the Unfair Competition Prevention Act provides that a person whose business profit is or is likely to be infringed due to unfair competition may file a claim with the court for prohibition or prevention against a person who engages in or intends to engage in unfair competition (see, e.g., Supreme Court Decisions 2002Da9011, Mar. 25, 2004; 2009Da22037, Jun. 25, 2009).

2. The record reveals the following facts.

A. The Plaintiff filed a claim against the Defendant for prohibition under Article 4 of the Unfair Competition Prevention Act, asserting that the Defendant’s product imitates the Plaintiff’s MM case (hereinafter “Plaintiff’s product”) and constitutes an unfair competition act such as Article 2 subparag. 1(i) of the Unfair Competition Prevention Act.

B. At the lower court, the Defendant alleged that ① the Plaintiff’s products are substantially the same as the Plaintiff’s L Cases, and thus, the subject of protection under Article 2 subparag. 1(i) of the Unfair Competition Prevention Act is the Plaintiff’s L Cases. Since Jan. 2014, the time of manufacture of the product, the protection period of three years has already been exceeded, and ② the Defendant’s conjunctively asserted that the protection period had already been exceeded three years since Sept. 10, 2014, when the product was manufactured. The criteria for determining unfair competition should be the Plaintiff’s L cases. The Defendant asserted that “the standards for determining unfair competition should be the Plaintiff’s legal statement as of Jan. 10, 2018, and the product should be excluded since three years have already passed since it was already released.” However, this is nothing more than the purport of emphasizing the Plaintiff’s primary assertion, and there is no evidence to support the Defendant’s withdrawal of the said conjunctive claim.

D. Meanwhile, the Plaintiff recognized the manufacture of the Plaintiff’s product on September 4, 2014.

3. Examining the foregoing facts in light of the legal principles as seen earlier, it is apparent that three years have elapsed from September 4, 2014, which was the date of manufacture of prototypes recognized by the Plaintiff as of January 10, 2018, which was the date of closing the argument in the lower judgment, and thus, the Plaintiff cannot exercise the right of prohibition under Article 4 of the Unfair Competition Prevention Act against the act of transferring or lending the goods which imitate the shape of Plaintiff’s products.

4. Nevertheless, the lower court acknowledged the subject of protection under Article 2 subparag. 1 (i) of the Unfair Competition Prevention Act as the Plaintiff’s product, but without examining whether the protection period of the Plaintiff’s product is expired. In so doing, the lower court erred by misapprehending the legal doctrine on the restriction of the protection period of the product form under the Unfair Competition Prevention Act, which led to failure to exhaust all necessary deliberations, and thereby adversely affecting the conclusion

5. Therefore, without further proceeding to decide on the remaining grounds of appeal, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Park Sang-ok

Justices Kim Jae-han

Justices Lee Dong-won

A person shall be appointed.