[1] Standard for determining the similarity of designs, and in a case where a selective alternative form that can secure the function of a product exists among the composition of a design, whether the importance of the part can be evaluated as low when determining the similarity of designs (negative)

[2] In a case where the registered design “” using the subject goods as the “cargo machine box” was similar to the prior design “”, the case holding that the registered design and the prior design constitute a design similar to one another, on the grounds that there are some differences, such as the location and shape of the pattern formed in a two angle or a sliding body part and the sliding body part of the two designs, although these differences are difficult to be seen as a degree to cause different aesthetic sense by offsetting the similarity of the dominant characteristics of both designs, since they cannot be seen as a degree to cause different aesthetic senses

[1] The similarity of a design should be determined not by separately comparing each element of the design, but by whether a person who observess the appearance of the design as a whole causes different aesthetic sense, and if the dominant characteristics are similar, it should be deemed similar even if there is little difference in detail. In this case, the depth of the appearance at the time of use of a product expressing the design as well as the time of transaction should also be considered. Meanwhile, in a case where the common part of both designs is essential for securing the function of a product, its importance is low and its similarity is not immediately similar solely on the ground that these parts are similar. However, if a selective alternative exists to secure the function of a product, it is not essential to secure the function of a product, and in this case, its importance is not lower in determining the similarity of a design solely on the ground that they are related to the function of the product.

[2] In a case where the registered design “” with the object goods “cargos” is similar to the prior design “,” the case holding that the registered design and the prior design are similar designs, since it is difficult to regard the common part of the two designs as an essential form to secure the function of the cargo vehicle box, and consumers can trade goods in consideration of the depth due to the overall appearance of the goods, including the common part as above, and there are some differences in the shape, such as the location and shape of the pattern formed both angles or in a slid door on the body part and the slid door, although these differences cannot be seen as a degree to offset the similarity of both designs, and thus it is difficult to view as a degree to cause different depths by offsetting the similarity of the dominant characteristics of both designs, and thus, the registered design and the prior design are similar designs.

[1] Article 2 subparagraph 1 of the Design Protection Act and Article 33 (1) of the Design Protection Act / [2] Article 2 subparagraph 1 of the Design Protection Act and Article 33 (1) of the Design Protection Act

[1] Supreme Court Decision 2010Hu265 Decided May 13, 2010, Supreme Court Decision 2012Hu597 Decided June 14, 2012 (Gong2012Ha, 1237)

Han-glar Co., Ltd. (Patent Attorney Noh Tae-ho et al., Counsel for the defendant-appellant)

Defendant (Patent Attorney Park Im-soo, Counsel for defendant-appellant)

Patent Court Decision 2016Heo2010 decided July 15, 2016

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

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. Whether a design is similar ought to be determined depending on whether a person in charge of observation of the appearance of a product as a whole causes different aesthetic sense, rather than separately comparing each element comprising the design. If the dominant characteristics are similar, it should be deemed similar even if there is little difference in detail (see, e.g., Supreme Court Decision 2012Hu597, Jun. 14, 2012). In such cases, not only when the design is used but also when the appearance at the time of transaction is used (see, e.g., Supreme Court Decision 2010Hu265, May 13, 2010). Meanwhile, where the common part of both designs is essential to secure the function of a product, the design is not similar solely on the ground that such parts are similar. However, where alternative shape exists, it is not essential to secure the function of a product as a product, and thus, the design is not similar solely on the ground that the shape related to the function of the product is not essential.

2. In light of the above legal principles and the record, we examine whether the registered design (registration number omitted) of this case, which uses goods as “cargo car tools”, is similar to the prior design as indicated in the judgment below.

A. Both designs are: ① the upper side of the body body forms a unit of a rectangular body shape at the upper side of the body body; ② the upper side of the rectangular body formed on the front side is cut off by 45∑ 45∑ 4; ③ the upper side of the body in the upper part of the body located at the upper part of the body; ④ the body in the upper side of the body in the upper part is formed by a slope in the upper part of the body located at the upper part of the body; ④ the body in the upper part of the body in the upper part is formed by a slope in the upper part of the body; ⑤ the body in the upper part in the upper part of the body is formed by a slope in the upper part of the body toward the middle part; ⑤ The body in the upper part in the upper part of the body is formed by a vertical air unit at the center of the body.

Design of this case:

Prior designs in the judgment of the court below:

B. It is difficult to view the common part of both designs as an essential form to secure the function of the tools used for cargo vehicles. In addition, in the transaction of the tools used for cargo vehicles, consumers appear to trade goods in consideration of the depth by the overall appearance of the goods, including the aforementioned common characteristics. Therefore, the mere fact that the common shape of the two designs is a part related to the function or that is not visible after being installed, its importance cannot be assessed at a low level, and the similarity of designs should be determined by the aesthetic sense, including the parts, which are observed and observed as a whole.

C. However, the common part of both designs is a part that represents a good shape that is frequently difficult to find in the previous design of the tools for trucking vehicles, and that represents the structural characteristics of the design, and thus, it constitutes a part that is easy for consumers to attract consumer attention. On the other hand, the two designs have some differences, such as the location and shape of the pattern formed in a rectangular or sliding body part and the sliding body part. However, it is difficult to view such differences to the extent that they cause different aesthetic sense by offsetting the similarity of the dominant characteristics of both designs.

D. Therefore, the registered design of this case and the prior design as indicated in the judgment of the court below fall under a design similar to the aesthetic sense, and thus, the registered design of this case should be invalidated.

3. The judgment below to the same purport is just, and contrary to what is alleged in the grounds of appeal, the court below did not err by misapprehending the legal principles on determining similarity of designs or by failing to exhaust all necessary deliberations

4. 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 Kim Jae-hyung (Presiding Justice)