[1] The requirements to obtain registration as a "one design" under Article 11(1) of the Design Protection Act in a case where one application for registration of a design for at least two parts physically separated among one product is filed

[2] In a case where an examiner of the Korean Intellectual Property Office rendered a decision of rejection of registration on the ground that “A”’s applied design expressed two or more shapes, shapes, colors, or the combination thereof in one application and thus contravenes Article 11(1) of the Design Protection Act, the case holding that the applied design cannot be registered as “1 design” under Article 11(1) of the Design Protection Act on the ground that the physically separated parts are not generated as a whole and cannot be deemed as a single design on the ground that it does not cause any general aesthetic sense

[1] According to Article 2 subparag. 1 of the Design Protection Act, a design refers to the shape, pattern, or color of a product or a combination thereof, which causes aesthetic sense through the time, and includes part of the product. Therefore, even a design concerning a part of an article that can not be traded independently (hereinafter “Partial design”) is also included in the design under the Design Protection Act. Meanwhile, Article 11(1) of the same Act provides that “an application for design registration shall be one application for design registration for each design.” Since Article 11(1) of the same Act provides that “an application for partial design registration shall be one design, and two or more designs shall not be two or more designs, an application for partial design registration shall be only one design for a part of a product. As such, an application for design registration is made by means of a shape, pattern, or color of a product or a combination thereof, and thus, the design may be registered through the time. Thus, even if one application for design registration for at least two parts physically separated among one product is physically separated, if the design is physically separated, it may be registered as a single design in first instance.”

[2] In a case where the examiner of the Korean Intellectual Property Office decided to refuse registration on the ground that “A”’s applied design violates Article 11(1) of the Design Protection Act because “A” expressed two or more shapes, shapes, colors, or the combinations thereof in one application, the case holding that the applied design is a design for which only the upper part of the goods (on handphone cases and the lower part (on handphone cases) applied for protection, and which is physically separated from one of the two or more parts in one product, and that the upper part of the applied design “” in the application design can easily be seen as the upper part in the shape of Saturdays, but it is difficult to find the relation with the upper part as well as the upper part in the shape, and it is hard to see that the upper part “” cannot be seen as having a functional function different from the upper part in the case of receiving telephone or signal through an open mar, and thus, it cannot be seen as having a function different from the upper part in the shape of the design, and thus, it cannot be seen as having a function different from the upper part.

[1] Article 2 subparag. 1 and Article 11(1) of the Design Protection Act / [2] Article 2 subparag. 1 and Article 11(1) of the Design Protection Act

Plaintiff (Patent & Co., Ltd., Attorney Lee Young-chul, Counsel for plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

August 17, 2012

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

The decision made by the Intellectual Property Tribunal on May 4, 2012 on the case No. 2011 Won5378 shall be revoked.

1. Basic facts

A. Application design of this case

(1) Date/application number: December 30, 2010 / (application number omitted)

2) Goods subject to design: mobile phone cases;

3) Explanation of the design: 1. The design is 1. of synthetic resin and fiber material. 2. The design is supported by the slope of a mobile phone as planned in 1.1 of the drawing. 3. The inside the ear-shaped of the earth and sand formed on the upper part of the design may be luminous off so that light can be emitted at the time of receiving the telephone or message, and the ear-shaped of the earphone can be cut off. 4. The part that the design is intended to be registered as a part of the design other than the part of the line of the body expressed in color among the drawings of the product.

4) The main point of the design creation: The combination of the shape and shape of the mobile phone case with the cell phone application of the design creation is the main point of the design creation contents.

5) Drawings: as shown in [Attachment].

6) Applicant: Plaintiff

B. Details of the instant trial decision

1) On July 8, 2011, the examiner of the Korean Intellectual Property Office rendered a decision to refuse registration on the ground that the design of the instant case was inconsistent with Article 11(1) of the Design Protection Act because the patent applicant expressed two or more shapes, shapes, colors, or any combination thereof in one application.

2) On August 1, 2011, the Plaintiff filed a petition for a trial against the foregoing decision of refusal. The Korean Intellectual Property Trial and Appeal Board dismissed the Plaintiff’s petition for a trial on the ground that the design in the instant case is a partial design, and the design in the instant case filed two physically separated forms without the form of unity or functional uniformity, and thus, contravenes Article 11(1) of the Design Protection Act, which provides that one application for a design registration may be filed for each design.

2. Whether the pending design violates Article 11 (1) of the Design Protection Act.

A. Relevant laws and legal principles

According to Article 2 subparag. 1 of the Design Protection Act, the term “design” means the shape, pattern, or color of an article, or a combination thereof, which may cause an aesthetic impression through the view of time, and includes part of the article as well. Therefore, even a design concerning a part of an article, which cannot be traded independently (hereinafter “sub-design”), constitutes a design under the Design Protection Act.

Meanwhile, Article 11(1) of the same Act provides that "an application for design registration shall be filed for each design," and a design subject to one application for design registration shall be one design, and no more than two designs shall be filed. Thus, a single application for design registration concerning partial designs shall be filed for only one design concerning part of a product.

However, a design is a shape, pattern, color, or a combination thereof, which may cause an aesthetic sense in time. Thus, even if one application for registration of a design for at least two parts physically separated among one product was filed, if the physically separated parts physically cause a common aesthetic sense as a whole, then the design can be registered as “one design” under Article 11(1) of the Design Protection Act.

B. Determination

In light of the above legal principles, as seen above, the patent application design of this case is a design that is applied for protection only for the part other than the part of the main body in color, i.e., the upper part of the goods (portablephone cases) and the part with protruding the lower part, which is a part of the goods (portablephone cases), and that is applied for registration as a design for not less than two parts physically separated among one goods. As such, the design of this case is registered as a design only in cases where the physically separated part brings about the form unity or functional unity by mutual relation, and causes a comprehensive heart as a whole.

However, it can be easily seen that the upper part of the pending design in this case’s design “” is in the shape of kis (the above part is also indicated in the design application of this case’s design). However, the part “” of evidence Nos. 2 Nos. 11-3 (see, e.g., description of design) and the lower part’s “contestably embly embly emblys the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body of the body.

Therefore, even though the pending design of this case is a design for two or more parts physically separated from one product, the parts physically separated as above are not in the form, integrity, or functional integrity, and thus, the entire design does not cause an in-depth examination as a whole.

On the other hand, the Plaintiff asserts that the part “” of the pending design of this case is in the shape of kis, and that the above part “” is in the shape of kis, which is in the shape of kis, and is created so as to be in the shape of mags as a whole together with the cell phone inserted in the body part of the kis (the part treated with a yellow point) corresponding to the body part of the mos, and that the whole image of a completed mos is expressed, and thus, it has the unity as a design.

However, whether the physical separation in the partial design brings about the form, unity, or functional integration of the goods must be objectively observed and determined, and it cannot be determined on the basis of the subjective creative hair of the creator of the design. In light of the size, form, relationship with other parts as seen earlier, it is difficult to recognize that the part “” in the application design of this case was in the shape of kis unless there is a separate explanation about the creative hub (i.e., “the left side” of the design of this case, even if the design of this case is the design of this case, it is too large compared to the upper part, and the part of the main body of the case connecting each of the above parts is not related to the body body shape of kis, and thus, it is not easy for the plaintiff to recognize the part of the above part of the application design of this case as protruding with the part of the part of the part of the body of kis.

C. Sub-decision

As a result, the pending design in this case cannot be considered as a single design because the physically separated parts of the design in this case cause an aesthetic sense as a whole. Thus, it violates Article 11(1) of the Design Protection Act, which provides that a design subject to one application for design registration shall be a single design.

3. Conclusion

Thus, the design of this case is not registered because it violates Article 11(1) of the Design Protection Act. The trial decision of this case is legitimate in accordance with this conclusion. The plaintiff's claim seeking revocation is dismissed as it is without merit. It is so decided as per Disposition.

[Attachment] Drawings of the pending design: omitted

Judges Dolo film (Presiding Judge) Kim Il-young