Nump Co., Ltd. (Patent Attorney Kim Byung-jin et al., Counsel for the defendant-appellant)

Defendant (Patent Attorney Won-soo et al., Counsel for the defendant-appellant)

March 28, 2014

1. The decision made by the Intellectual Property Tribunal on November 27, 2013 on the case No. 2012Da3298 shall be revoked.

2. The costs of the lawsuit are assessed against the defendant.

The same shall apply to the order.

1. Basic facts

A. The registered design of this case 1)

1. Goods that are the object of design: Posting synthetic resin for a system;

2) Date of application/registration date//registration number of design: November 3, 2001 / (design registration number omitted) October 28, 2002

3) Explanation of the design: ① The material is styphal styren resin, vinyl, paper paper, and cryp sheet. ② The stopical stopin is continuous in the upper left left, as seen, and may be cut and used in accordance with the necessary use.

4) The main point of the design creation: The combination of the shape and shape of “synching synthetic resin for system” with the main point of the design creation.

5) Drawings: [Attachment 1] The registered design of this case is as follows.

6) Person entitled to registration: Defendant

B. Details of the instant trial decision

1) On December 31, 2012, the Plaintiff filed a petition against the Defendant for a trial to invalidate the registered design of this case (No. 2012Da3298) against the Defendant, asserting that “The registered design of this case is merely an expression of the pattern of granite, a natural object, on almost all the goods, and thus, constitutes a design that can be easily created by a person with ordinary knowledge in the field to which the design pertains (hereinafter “ordinary designer”) widely known in the Republic of Korea by means of a shape, pattern, color, or a combination thereof (hereinafter “main design”).

2) On November 27, 2013, the Korean Intellectual Property Tribunal dismissed the Plaintiff’s request for a trial on the ground that “Although the instant registered design of this case is in the form of a granite pattern in a natural condition, the instant registered design is continuously appearing in the form, such as the water network, and thus, the entire form, such as the physical network, continuously appears in the upper margin (attached Form 2).” Thus, the Plaintiff’s request for a trial was dismissed on the ground that the instant registered design is of an aesthetic value, i.e., creative value, which cannot be seen in a natural condition, because it is recognized.”

[Reasons for Recognition] Evidence No. 1-2, Evidence No. 2, Evidence No. 2, the purport of the whole pleadings

2. Summary of the Plaintiff’s assertion and the issues of the instant case

A. Summary of the plaintiff's assertion

1) Since ordinary consumers or traders could not recognize the unit shape of the registered design of this case, the scope of rights to the registered design of this case cannot be expanded as the determination drawings of the trial decision, there were errors in the misapprehension of the registered design of this case.

2) Even if the form of the registered design of the instant case is deemed as identical to the determination of the relevant trial decision, the registered design of the instant case constitutes a design that could be easily created from the pattern of granite as a natural product, an ordinary designer, as a well-known design.

B. Key issue of the instant case

The key issue of the instant case, arranged by the Plaintiff’s assertion, is ① whether the instant trial decision was erroneous in the form of the registered design in relation to the scope of the right to the registered design in the instant case, and ② whether the registered design in the instant case can be easily created based on the pattern of granite as a well-known natural product.

3. Whether the trial decision of this case erred by mistake in the form of the registered design of this case

A. Criteria for judgment

Article 43 of the former Design Act (amended by Act No. 7289 of Dec. 31, 2004; hereinafter “former Design Act”) provides that “The scope of protection of a registered design shall be determined by the descriptions of the application for design registration and the description of the design indicated in the drawings, photographs or samples accompanying the application, and the drawings and specifications.”

B. Determination

In full view of the purport of the argument in Gap evidence No. 1-2, the defendant stated in the part of the "specification of design, as seen above," as the "statement of the design" in the application for design registration of this case, and stated in the registration of the registered design of this case, "the pattern of non-satis in parallel, as seen above," and found the facts attached to the application for design registration. However, even if ordinary consumers consider the above description of the design, it is difficult to grasp whether the drawings (e.g., g., g., satis and satis) attached to the application for design registration of this case are continuing to satis in parallel with a certain unit pattern of the report.

Therefore, the Defendant’s submission that did not provide for the standard for determining the scope of the registered design right under Article 43 of the former Design Act, such as the description of the design indicated in the drawings or drawings attached to the application for design registration of the instant registered design, to the extent that the unit pattern was determined based on the “the shape of the instant registered design” (see Articles 11 and 12 of the No. 2) and displayed approximately three times the unit pattern and about four consecutive times the upper and lower level (see attached Table 2) on the basis of the “the unit pattern of the instant registered design” (see Articles 43 of the former Design Act, 43 of the former Design Act, concerning the scope of the registered design protection.

4. Whether the registered design of the case is easily created by the well-known design;

A. Criteria for judgment

The purport of Article 5(2) of the former Design Act, which provides that a person with ordinary knowledge in the field to which the design belongs, who can easily create a shape, pattern, or color widely known in this country or a combination thereof, shall not be eligible for design registration, is that if the shape or pattern of well-known or the exclusive use of the design was expressed in an article, or if a person with ordinary knowledge in the field to which the design pertains uses or diverts it to the article, the design registration is not allowed unless it is merely a change to the extent that anyone can easily use the article (see Supreme Court Decision 98Hu591, Apr. 10, 201, etc.).

B. Determination

1) The registered design of this case is a design regarding “synch synthetic resin projected”. The design of this case is a part which, at the time of trade or use, mainly leads customers and consumers to the attention of customers. The design of this case is a design regarding “synched synthetic resin projected”. The design of this case is identical to “synched”.

The shape of the registered design of this case, which appears at the scam of the design of this case, is extremely similar to the pattern of granite in a natural state (see evidence No. 4, 5, 7, and 8 of the Act). Moreover, the shape of the rectangular body is merely a shape widely known domestically. Accordingly, the registered design of this case constitutes a design that can be easily created by the pattern of graniteum, etc., as a natural product that is widely known by a designer.

2) As seen earlier, it is unlawful to specify the “determination drawing of the trial decision” in the form of the registered design of this case. However, even if the scope of the right to the registered design of this case is expanded as “the determination drawing of the trial decision,” this also constitutes a design that can be easily created by the pattern, etc. of granite pattern in a natural state (Article 7 and 8 of the Act and the overall purport of oral argument). The overall purport of this case is to allow the pattern of granite pattern in a natural state to be continued in parallel with the pattern of granite pattern in a natural state. The well-known design to be used or used exclusively for the goods called “the synthetic resin plate for system system,” or to be used or diverted by a person with ordinary skill in its use or diversion, it is nothing more than a change that can easily be seen if it would have been different from the pattern of granite pattern in a natural state. Thus, it is difficult to see that the determination of the trial decision is a design that can be easily created by the pattern of gran, etc.

5. Conclusion

Therefore, the trial decision of this case contains an error of error in the form of the registered design of this case in relation to the scope of the right to the registered design of this case, and the registered design of this case is likely to be created easily by an ordinary designer by widely known design, and its registration shall be invalidated pursuant to Article 5 (2) of the former Design Act. The trial decision of this case is unlawful differently from this conclusion, and the plaintiff's claim for revocation shall be accepted as a reasonable ground, and it is so decided as per Disposition.

[Attachment]

Judges Jeong Young-young (Presiding Judge)

1) The former Design Act was amended by Act No. 7289 on December 31, 2004 to the Design Protection Act, and used the expression “design” instead of the former Speaker. Thus, this decision also changes the term “design” into “Design” except the name of the law.