In a case where the owner of a design right, who manufactures and sells the registered design “,” etc. “,” the product name of which is “flicking”, imported and sold “B”, etc. against “B” corporation, etc. identical or similar to the registered design, and imported and sold the said product which imitated the shape of “A”, and sought an unfair competition act under Article 2 subparag. 1(i) of the Unfair Competition Prevention and Trade Secret Protection Act, and sought damages against “B” corporation, the case holding that “A”’s design right is not deemed to have existed from the beginning in accordance with the main sentence of Article 121(3) of the Design Protection Act, on the ground that the trial decision invalidating the registered design registration became final and conclusive, and the shape characteristics of “B”’s product fall under the category of identical or similar product, and thus, they cannot be deemed to fall under the category of goods protected by Article 2 subparag. 1(i) of the Unfair Competition Prevention and Trade Secret Protection Act.

The owner of a design right, where the name of a product is “slicking” as “slicking,” and the design right of Party B, etc. was imported and sold by Company B, etc. against Company B, etc. identical or similar to the registered design, thereby infringing upon Party A’s design right. The act of unfair competition under Article 2 subparag. 1(i) of the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter “Unfair Competition Prevention Act”) was committed by importing and selling the said product which imitated the shape of Party A’s product, and sought compensation for the prohibition, destruction, etc. of the said product.

Since a trial decision invalidating the registration of the above registered design became final and conclusive, Gap's design right to the above registered design shall be deemed not to have existed from the beginning pursuant to the main sentence of Article 121 (3) of the Design Protection Act, and Article 2 subparagraph 1 (i) of the Unfair Competition Prevention Act provides that "transfer or lease of goods which imitate the form of goods produced by others is an act of unfair competition, and transfer or lease of goods which imitate the form of goods of the same kind that others manufactured under the proviso (2) is excluded from the act of unfair competition, and in light of the comparative designs on electric standards, heat lamps, cans prior to the application of the above registered design, the products of Gap cannot be deemed to fall under the category of goods protected under Article 2 subparagraph 1 (i) of the Unfair Competition Prevention Act, since the form of the registered design is not widely known if the form of goods of the same kind is widely known from the same product.

Article 121(3) of the Design Protection Act, Article 2 subparag. 1(i) of the Unfair Competition Prevention and Trade Secret Protection Act

Plaintiff (Attorney Han-ok et al., Counsel for plaintiff-appellant)

Seoul High Court Decision 2001Na14488 delivered on August 1, 201

Seoul Central District Court Decision 2019Gahap520962 Decided November 28, 2019

October 16, 2020

1. The plaintiff's appeal and the claims extended by this court are all dismissed.

2. The costs of appeal and the costs of lawsuit arising from the extension of claims by this court shall be borne by the plaintiff.

The judgment of the first instance is revoked. The Defendants shall not produce, use, transfer, lend, export, import, or make an offer or display for transfer or lease the products listed in the separate sheet 1, and shall discard the products listed in the separate sheet 1 in the office, place of business, factory, or warehouse, respectively. Defendant ABS Co., Ltd. shall pay to the Plaintiff 142,706,016 won and the amount calculated at the rate of 12% per annum from the day following the date of delivery of the copy of the application for modification of the claim and the cause of the claim in this case to the day of full payment (the Plaintiff extended this court to Defendant ABS to expand the claim for damages against Defendant ABS Co., Ltd., and withdrawn the claim for damages against the Defendant Co., Ltd., Ltd., the Defendant Co., Ltd., Defendant Co., Ltd., Ltd., and accordingly modified the purport of the claim).

1. Basic facts

A. The plaintiff's registered design of this case

1) Registration number / filing date/registration date: (Registration Number omitted) / May 9, 2016/ February 22, 2017

(b) Name of goods: cans and flicks;

3) Drawings: Attached Table 2 of the registered design of this case.

B. Plaintiff’s product

On April 29, 2016, the Plaintiff created cans (name of products: ○○○○, and hereinafter “Plaintiff’s products”) such as the Plaintiff’s products, and manufactures and sells the Plaintiff’s products from around that time.

C. Defendant Products

The Defendants sell cans such as attached Table 1 products (hereinafter “Defendant products”).

(d) A comparable design;

The comparative designs are designs with respect to the shapes and shapes of cans (non-subject designs 1, 2, 3, 8, 12), electric stand (non-subject designs 4, 5, 6, 7), heat lamps (10, 11), which are published prior to the filing of the application for the registered design of this case and the release of the Plaintiff’s products. Each source and design are as shown in the attached Table 4.

E. Progress of the relevant case

On May 3, 2019, Defendant Avis filed a petition for trial to invalidate the registration of the instant registered design with the Intellectual Property Tribunal No. 2019Da1364 against the Plaintiff, the owner of the design right of the instant registered design, claiming that the creation cost of the instant registered design would be denied. On November 29, 2019, the Korean Intellectual Property Tribunal rendered a trial ruling to accept the above trial by Defendant Avis, Inc. on the ground that “The registered design of this case constitutes a design that can be easily created by a person with ordinary knowledge in the field to which the design pertains from the comparative design 1 or 8 publicly notified prior to the filing of the application, because the registered design of this case constitutes a design that could have been easily created by the person with ordinary knowledge in the field to which the design pertains, the registration thereof

Accordingly, on December 30, 2019, the Plaintiff filed a lawsuit against the said Defendant seeking the revocation of the said trial decision with the Patent Court Decision No. 2019Heo9142, but the Patent Court rendered a ruling dismissing the Plaintiff’s claim on October 16, 2020 on the ground that “The registered design of this case is a design that can be easily created by combining the shape of the original horns, known to 1 of the comparative design, or by combining the shape of the original horns, known to 11 of the comparative design and widely known to 1 of the comparative design, and the registration thereof shall be invalidated.” The said judgment became final and conclusive on November 3, 2020.

[Basis] Facts without dispute, Gap's statements and images, Gap's 2 through 12, 14, 20 evidence, Eul's 2 through 8, 10 through 15, 22 through 27 evidence (including the branch numbers if there are various numbers; hereinafter the same shall apply), and the purport of the whole pleadings

2. Determination as to the cause of action

A. Summary of the plaintiff's assertion

1) The Defendants infringed the Plaintiff’s design right by importing and selling the Defendant products identical or similar to the Plaintiff’s registered design of this case.

2) The Defendants imported and sold the Defendant’s product that imitates the Plaintiff’s product form, which constitutes an unfair competition act under Article 2 subparag. 1(i) of the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter “Unfair Competition Prevention Act”).

3) Since the Defendants’ above infringement of the Plaintiff’s business interests and unfair competition acts infringe upon the Plaintiff’s business interests, for the prohibition and prevention of infringement, the Defendants sought prohibition and destruction as to the Defendant’s claim against the Defendant, and sought compensation of KRW 142,706,016 for damages suffered by the Plaintiff due to the Plaintiff’s infringement against the Defendant’s use of the Defendant’s product, Defendant Co., Ltd., Co., Ltd., Ltd., Young-gu, Young-gu, Inc., and Defendant ABS, Inc.

B. Determination as to the claim on the ground of infringement of design right

The main sentence of Article 121(3) of the Design Protection Act provides that if a trial decision invalidating design registration becomes final and conclusive, the design right shall be deemed never to have existed.

As seen earlier, the Plaintiff’s design right to the registered design of this case is deemed to have never existed from the beginning in accordance with the main sentence of the said provision upon the confirmation of the trial decision invalidating the registration of the registered design of this case, and thus, the Plaintiff’s claim for this part, premised on the existence of a valid design right, is without merit, without examining the remainder

C. Determination as to the claim for unfair competition

1) Relevant legal principles

Article 2 Subparag. 1 (i) of the Unfair Competition Prevention Act provides that an act of transferring, lending, displaying, importing, or exporting goods that imitates the form of goods produced by another person as a type of unfair competition acts. The term "abstinence" refers to the act of producing goods of the same kind substantially identical to that of another person in accordance with the form of goods of another person. In the event of a change in the form, whether the form is a product of the same type shall be determined by comprehensively taking into account the content and degree of the relevant change, degree of difficulty in the form, form of the change, etc. (see Supreme Court Decision 2010Da20044, Mar. 29, 2012).

Meanwhile, Article 2 Subparag. 1(i) proviso (ii) of the Unfair Competition Prevention Act excludes acts of copying goods of the same kind that are ordinarily owned by others from unfair competition acts. Here, the form of ordinary possession of the same kind of goods means the form of ordinarily adopted in the same product sector, such as: (a) the form of absence of a common identity that the employment is inevitable in order to achieve functions and effectiveness of the goods or to compete in the product sector (see Supreme Court Decision 2015Da216758, Jan. 25, 2017).

2) Characteristics of the Plaintiff’s product

The images and drawings of the Plaintiff’s product are as follows:

Plaintiff Products:

The fixed face value of the Plaintiff’s products:

As seen above, as seen in the video and the City/Do above, the Plaintiff’s products consisting of ① a unit of heating, connecting parts, bees (hereinafter “specialization”) and ② the connecting parts are the columns extended by combining a house heat and bees (hereinafter “specialization”) with a unit of bees, ③ beeses are rectangular shapes (hereinafter “specialization”) (hereinafter “specialization”), ④ the upper part is a string shape (hereinafter “specialization”) with a narrow and lower part of the upper part, ⑤ the connecting part is composed of a string shape, and the connecting part is connected to the center of the upper part, and the connecting part is closely connected to the upper part, and the location and height of the connecting part is almost the same as that of the upper part (hereinafter “specialization”).

3) Whether the like product falls under the ordinary type of goods

According to the above basic facts, the Plaintiff’s products and the Defendant’s products are very similar in form. Accordingly, the Defendant asserts that the Plaintiff’s products are merely copied products of the same kind.

Examining the following circumstances in light of the legal principles as seen earlier, in light of the aforementioned evidence and the evidence Nos. 9, 18, 20, and 21 as seen earlier, the shape features of the Plaintiff’s product fall under the category of goods protected under Article 2 subparag. 1(i) of the Unfair Competition Prevention Act, since the shape features of the Plaintiff’s product fall under the category of goods protected under Article 2 subparag. 1(i) of the Unfair Competition Prevention Act, if they were employed from the past in the same kind of goods or in the same kind of goods.

A) First, characteristics (i) through (iii), namely, overall integration, connection, and bees; connections are composed of two parts, and connections are in the shape bended by upper part, and the shape in which bees are in a rectangular shape is initiated in 1,2, and 3 of comparable designs.

Plaintiff Products:

Preliminary Design 1:

Preliminary Design 2:

Preliminary Design 3:

B) In addition, the body of the body, the upper part of which is narrow and wider than the lower part, is the body of the body (specific 4), the shape of which is the shape of the congrative body (specific 5 to 8, and 10 of the comparative design.

Preliminary Design 5:

Preliminary Design 6:

Preliminary Design 7:

Preliminary Design 8:

Compared Design 10:

In addition, comprehensively taking account of the respective descriptions of evidence Nos. 9, 18, 20, and 21 and the overall purport of the pleadings in the video, it can be recognized that the whole shape similar to the heating unit of the Plaintiff’s product, i.e., the electric side or the heating section of the original horns shape has already been widely used from the products, such as electric standards or warm lamps prior to the release of the Plaintiff’s product.

the certificate of title 18:

20 No. 20:

the certificate of title 21:

the certificate of title 9:

C) Furthermore, the comparative design 8, 10, or 12 shows a shape in which the upper part of the connecting part is combined in an an atamatic shape. Among them, the characteristics of the Plaintiff’s product 11, namely, the connecting part, e.g., the alphab “J” was combined in an an atamatic shape, and the main part of the connecting part was attached in a vertical line at the center of the upper part of the upper part of the joint base, and the upper part of the connecting part was located in the same height as the location in which the combined part begins.

Preliminary Design 8:

Compared Design 10:

Compared Design 11:

Compared Design 12:

D) Furthermore, the shape characteristics of the Plaintiff’s product (hereinafter “Plaintiff’s product”), 1 through 3, were initiated as is in comparison with the comparative design 1 through 3, and the Plaintiff’s product is considerably different from the type of the comparative design 1 through 3 (hereinafter “the Plaintiff’s product,” the comparative design 1 through 3, the comparative design 1 through 3, and the combined location of the linked parts and the linked parts (hereinafter “the Plaintiff’s product,” the comparative design 1 through 3, the comparative design 1 through 3, etc.). However, it is difficult to view that the form’s difference is obvious in light of the degree of its transformation, the gap between the shape and the heart difference that gives rise to such form.

Rather, the above difference takes only the shape of the lower body of the combined design 1 through 3 (the shape consisting of the original shape of the upper body and the shape of the lower body) of the combined design (the shape consisting of the original shape of the upper body and the shape of the lower body) prior to the delivery of the Plaintiff’s product, and ② the linked part of the “a” shape of the comparable design 1 through 3 is replaced by a hembabro, and the shape back by Ampha J.,” and ③ the combined location of the connector and the integrated unit is merely a modification to the upper body of the collective unit in terms of the upper part of the collective unit. It is reasonable to deem that the above change to the extent is merely a mere extent that it can be easily changed by selecting the combined design, the combined part, and the combined part.

4) Judgment on the Plaintiff’s assertion

A) The Plaintiff asserts that, since electric standards and heat lamps do not constitute goods of the same kind as cans, the comparative design about electric standards and heat lamps cannot be referred to the purport that it is difficult to determine whether the Plaintiff copied the ordinary form of goods of the same kind, but the Plaintiff’s above assertion is without merit for the following reasons.

(1) The cans, which are the goods of the Plaintiff’s products, are a kind of strings that spreads to the Plaintiff by heating and melting them using halog lights, etc., which are the objects of the products, with the purpose and function of gathering heat generated from the heat source to the right edge of the bank, and the connection department supports that the upper side of the upper part is permanently fixed to be lower than the lower part.

(2) Electric stand, which is the object of the comparative design 4 to 7, is a mobile light that sets up in a vertical direction on the upper or upper floor and sets up in a vertical direction to clarify a certain area of the lower bank, and the light generated from the luminous source is for the purpose and function of raising the light from the luminous source to the lower bank at the same time, and the connecting department supports that the upper bank is permanently fixed to the beer and the upper bank is facing the lower bank.

(3) The Onnuri light, which is the object of comparative design 10, 11, is also a kind of string, which produces heat as a kind of string, has the purpose and function of collecting heat generated from the heat source into the objects (food, plant, etc.) located at the lower bank, as can be seen in cans, and the connecting department supports that the upper unit is permanently fixed in the string and the upper unit is lower than the lower unit.

(4) Thus, since the cans, which are the goods of the Plaintiff’s product, are identical with the electric standards, greenhouse lamps, and their basic structure are identical with the heat lamps, and the heat or light generated from the heat sources or light sources are common for their use and function, it is reasonable to view that the comparative design can be a reference to determine whether the Plaintiff’s product has copied the form of the same kind of product.

B) The Plaintiff asserts that the Plaintiff’s product manufactured bees as a substitute stone and has the pattern, quality, and luminous ray unique to the substitute stone, and the connection section made of gold light as metal material and has metal unique colors, luminous stacks, and the color of the house fever and bees is maximized by integrating the color of the gold link.

However, in the manufacture of cans and similar products, representative seats are only one of the most general and ordinary materials used, ② coloring parts of the parts having the function of linking each part (the parts having the same function as the connecting part of the Plaintiff’s product) with each other, and material manufactured with gold metal materials also of ordinary use, and color, etc. (3) a connection of the comparative design 1 is initiated with a metal material with a blick, comparative design 2 and 4, a combination of metal material with a blick, and comparative design 2 and 4. In light of the characteristics of the Plaintiff’s products, it is difficult to accept the Plaintiff’s assertion that the combination of products and blick and blick with a blick color can not be accepted.

【Plaintiff’s Products (Evidence No. 20):

(v) arranging the results of the review;

As seen earlier, it is difficult to view the Plaintiff’s product as a whole as a form of goods protected under Article 2 subparag. 1 (i) of the Unfair Competition Prevention Act because it is merely a form of goods of the same kind. Therefore, the Plaintiff’s assertion that the Defendants engaged in an unfair competition act under Article 2 subparag. 1 (i) of the Unfair Competition Prevention Act is unacceptable.

D. Sub-committee

Therefore, insofar as it is difficult to recognize both the Defendants’ infringement of design rights and unfair competitive acts, the Plaintiff’s claims are without merit, without having to further examine the remainder of the Plaintiff’s claims.

3. Conclusion

Therefore, all of the plaintiff's claims against the defendants shall be dismissed as it is without merit. Since the judgment of the court of first instance is just in its conclusion, the plaintiff's appeal is dismissed, and the expanded plaintiff's claims are also dismissed. It is so decided as per Disposition.

[Attachment 1] Defendant Products: Omitted

[Attachment 2] Registered Design of this case: omitted

[Attachment 3] Plaintiff’s Products: Omitted

[Attachment 4] Compared Designs: Omitted

Judges Lee Hong-hoon (Presiding Judge)