Desus Korea Co., Ltd. (Attorney Jeon Soo-soo, Counsel for defendant-appellant)

Defendant (Attorney Park Woo-young, Counsel for defendant-appellant)

March 10, 2016

Seoul Central District Court Decision 2015Kahap504832 Decided October 2, 2015

1. The part against the defendant in the judgment of the court of first instance shall be revoked, and the plaintiff's claim corresponding to the cancellation shall be dismissed.

2. The plaintiff's appeal is dismissed.

3. All costs of the lawsuit shall be borne by the Plaintiff.

Purport of claim

The defendant shall not make an offer (including exhibitions for transfer or lease) to manufacture, use, transfer, lease, export, import, or to assign or rent the products listed in the separate sheet No. 2. The defendant shall discard all the products listed in the separate sheet No. 2 in the defendant's headquarters, branch, business office, place of business, factory, and warehouse and all the production facilities necessary for manufacturing them. The defendant shall pay to the plaintiff 56,870,267 won and the amount calculated at the rate of 20% per annum from the date of delivery of the copy of the complaint of this case to the date of complete payment.

Purport of appeal

[2] Of the judgment of the court of first instance, the part against the plaintiff falling under the following order for payment shall be revoked. The defendant shall pay to the plaintiff 26,870,267 won with 5% interest per annum from January 28, 2005 to October 2, 2015, and 20% interest per annum from the next day to the date of full payment.

[Defendant] Paragraph (1) of this Article

1. Presumed factual basis

【Evidence Class 1 through 4, 6, 7 evidence, Eul Nos. 2, 4, 6, and 20 (including branch numbers, if any; hereinafter the same shall apply) respectively, and the purport of the whole pleadings

A. The plaintiff's design right

The Plaintiff has the following design rights (hereinafter referred to as “instant registered design”).

(a) Design registration number: (Omission);

2) Date of application / Date of registration: March 20, 2012 / November 25, 2013

(c) Goods that are the object of design: Smartphone amount book;

(iv)a description of the design;

A) Materials are synthetic resin and metal materials

(B) As set out in the reference map to the Schedule 1, this design may be used as auxiliary stand attached to and used on the back of a smartphone, and may be used in flats by attaching it at the time of use.

5) The features of the creation of the design

The combination of the shape and shape of " smartphones" shall be the main point of the creation of the design.

6) Drawings: as shown in Appendix 1 Schedule.

B. The defendant's act

The Defendant manufactured the products listed in the separate sheet 2 (hereinafter referred to as “Defendant products”) with the trade name “MM Korea,” and sold the design at the website operated by the Defendant.

C. The creation, application, and registration of the registered design of the case

1) On December 20, 2011, prior to the date of the establishment of Pakistan ( March 28, 2012), Nonparty 1 agreed to carry out joint development by analyzing and referring to the same kind of product of similar designs, and manufacturing drawings and gold papers, etc.

2) On March 20, 2012, Nonparty 1 filed an application for registration of the design of the instant registered design with himself as the creator, and on September 3, 2012, the applicant changed Nonparty 1 from Nonparty 1 to LTD, and on November 25, 2013, the registered design of the instant registered design was registered in the name of LTD.

D. Taking over the Plaintiff’s registered design right of this case, and taking over the Defendant’s business right as to the Defendant’s products

1) On March 17, 2014, the Plaintiff acquired the registered design right of this case from LTD.

2) On March 14, 2013, Nonparty 2, the Defendant’s husband Nonparty 2 comprehensively transferred from Nonparty 3 all rights and obligations with respect to smart building projects, which are the Defendant’s products.

2. Issues of the instant case

A. Main Safety Defenses (whether the agreement between the non-party 1 and the Materns has an effect on the lawsuit in this case)

B. Whether the defendant's act constitutes an infringement of registered design right of this case

C. It is evident that the registered design of this case was invalid in violation of Article 5(2) of the former Design Protection Act (wholly amended by Act No. 11848, May 28, 2013; hereinafter the same), and whether the Plaintiff’s exercise of rights based on the design right constitutes abuse of rights.

3. The judgment of this Court

A. Main Safety Defenses (whether the agreement between the non-party 1 and the Materns has an effect on the lawsuit in this case)

【Defendant’s Claim】

The Defendant: (a) on May 2, 2012, Nonparty 1 agreed with her mother and her mother on the basis of Nonparty 1’s intellectual property right that was not registered in her name; (b) on the basis of Nonparty 1’s intellectual property right, Nonparty 1 was unable to file an objection and any civil or criminal lawsuit; (c) the Plaintiff is a company substantially operated by Nonparty 1 and the Defendant comprehensively acquired all rights and obligations with respect to smart condominium business from her mother and thus, asserts that the instant lawsuit filed against the Defendant against the Plaintiff is unlawful as it violates the agreement on the said father-committee.

[Judgment]

According to the facts mentioned above-mentioned facts and evidence Nos. 3 and 20, Nonparty 1 may not raise any objection and any civil or criminal lawsuit against Mask-sk-sk-sk-on-phone music from Mask-Sk-on-phone, on the basis of intellectual property rights not registered in the name of Nonparty 1 since the application for design registration of the registered design of this case was made by Nonparty 1 as the creator during the joint development with Mak-Hand-on music, which was the date on May 2, 2012, which was after the application for design registration of the registered design of this case between Mak-sk-k-on and Mak-sk-on-sk-on

According to the above facts of recognition, it can be deemed that Nonparty 1 agreed to bring a civil lawsuit against Materns on the basis of intellectual property rights not registered in her name in relation to the registered design of this case (the above agreement between Nonparty 1 and Materns at the time of the above flus agreement to bring an action against Materns, as seen above, was an agreement that the legal effect should be recognized through notarial act, but this agreement seems to have been made at the time of the above flus agreement to clarify the contents of the agreement between Nonparty 1 and Materns, including the above flus, in order to further clarify the above flus, it is difficult to view that the agreement was made at the time of the above fluss agreement to bring an action as a condition to suspend the notarial act as to the agreement).

However, the plaintiff and the defendant are not parties to the above sub-committee agreement between the non-party 1 and the Mams, and the contents of the above sub-committee agreement are merely that the non-party 1 did not file a civil lawsuit against Masks on the basis of intellectual property rights not registered in her name with respect to the registered design of this case. In light of the above, the above sub-committee agreement between the non-party 1 and Masks is not sufficient to view that the effect of the above sub-committee agreement between the non-party 5, 6, 11, and 20 on the basis of the non-party 1 and Masks is also an infringement claim and the claim for damages based on the registered design of this case raised against the defendant (this provision applies to the case where the plaintiff is a company operated by the non-party 1 even if there is no sufficient evidence to deem that the plaintiff's substance was dead enough to constitute abuse of corporate personality). The defendant's above assertion

B. Whether the defendant's act constitutes an infringement of registered design right of this case

【Plaintiff’s Claim】

The Plaintiff asserts that the Defendant’s manufacture and sale of the Defendant’s product similar to the registered design of this case infringed the Plaintiff’s registered design right of this case, and that the Plaintiff sustained damages therefrom, and sought the prohibition of the production, etc. of the Defendant’s product and the disposal of the Defendant’s product in his custody as a claim for prohibition of infringement of the design right against the Defendant, and sought payment of KRW 56,870,267 and damages for delay based on tort caused by infringement of the design right.

[Judgment]

1) Whether a design is similar ought to be determined by comparing and observing all elements constituting the design separately from each part, rather than by comparing and observing the whole as a whole, and by determining whether the perception and impression that can be inferred to the people’s mind is similar. In light of the nature, use, mode of use, etc. of the product, the similarity of designs should be determined from the perspective of whether it causes a difference in the aesthetic sense of ordinary consumers by comparing and observing the starting line and the part that is most easy to attract attention in light of the nature of the product (see, e.g., Supreme Court Decision 2010Do12633, Mar. 24, 2011).

2) Comparison between the registered design of the instant case and the design of the Defendant products

A) Preparation for goods subject to design;

The goods subject to the registered design of this case and the Defendant’s products are identical to each other as smartphone value.

B) Preparation for designs

(1) The forms of the registered design of this case and the Defendant’s products are as follows.

A person shall be appointed.

B. The design of this case and the Defendant’s design are as follows: ① The trademark of this case and the design of this case consisting of the following: ① the display panel in the square shape, the top government in the shape of the original part protruding from the display line, and the string through the fixed part; ② the string has a size smaller than the width of the smartphone in the shape of the string, and the upper part is in the central part, ③ the upper part of the string is located in the top of the plart, the interval between the bowling and the upper part of the plart; ④ the lower part of the plling is protruding from the lower part of the plart; and ④ the upper part of the pling is the same in that there exists a straight line.

However, unlike the Plaintiff’s multilateral, the product of Jewelry Sler differs from that of the Defendant’s products that multiple release on bails are stringed on the lower part of the monitoring. However, this is merely a commercial transformation and does not seem to cause any particular difference in the depth of the registered design of this case and the Defendant’s products of Jwelry Ser.

(iii) reorganization;

Therefore, the Defendant’s act of manufacturing and selling the Defendant’s products identical or similar to the registered design of this case constitutes an act of infringing the design right regarding the registered design of this case.

C. It is evident that the Plaintiff’s registered design of this case was invalid in violation of Article 5(2) of the former Design Protection Act, and whether the Plaintiff’s exercise of rights based on the design right constitutes abuse of rights

【Defendant’s Claim】

The Defendant asserts that the Plaintiff’s exercise of the right based on the design right constitutes abuse of rights and thus is not allowed, since the Plaintiff’s registered design of this case can be easily created from the products, such as “dacting,” which had been sold in the market prior to the filing of the application, and the design already publicly announced.

[Judgment]

1) Where it is evident that a design registration will be invalidated by an invalidation trial even before a trial decision to invalidate the registered design becomes final and conclusive, a claim for injunction against infringement or damages based on the design right shall not be granted as an abuse of rights, barring any special circumstances. Furthermore, where a defense exists that a design right-holder’s claim constitutes an abuse of rights, the court in charge of a design right infringement lawsuit may examine and determine whether the design registration is invalidated on the premise of examining the legitimacy thereof (see Supreme Court en banc Decision 2010Da95390, Jan. 19, 2012).

In addition, Article 5(2) of the former Design Protection Act provides that a design that can be easily created by a person with ordinary knowledge in the field to which the design pertains (hereinafter “ordinary designer”) by combining a design falling under paragraph (1) 1 or 2 (hereinafter “public design”) or by modifying, combining a shape, pattern, color, or a combination thereof widely known in the Republic of Korea is not eligible for design registration. The purport of the above provision is that the shape, pattern, or color of an publicly known design or a combination thereof (hereinafter “public domain”) or a shape, pattern, or color, or combination thereof widely known in the Republic of Korea (hereinafter “main form”) is almost copied or diverted as it is, and even if it was partially modified, the entire design is merely a commercial and functional alteration that does not recognize any other aesthetic value in the field of design, or by changing, combining, or using a design that is merely a sealed creative method or an expression method in the field of design, and thus, the level of design registration can not be granted to a person with low creative value (see, e.g., Supreme Court Decision 2000Hu181.

In addition, even if an open design or a well-known form is combined, or a combination thereof is modified, modified, or diverted as above, the level of creation may be lower. In determining the level of creation, it is also necessary to examine whether a designer can easily do so in light of the goods subject to the open design, the well-known fields of the well-known form, the relevance of the publicly known design or the external features of the well-known form, and the general tendency in the relevant design field (see Supreme Court Decision 2013Hu2613, Mar. 10, 2016).

2) Compared designs

A) Compared design 2

The shape and shape of the appP (No. 7-2, No. 8-1, No. 9) sold in the Internet shopping mall on March 1, 2012, the transfer date of the registered design of this case, is as shown in the attached Table 3.

B) Compared design 3

The registered design of this case, published on September 5, 201 in the Patent Gazette No. 10-106257 (No. 13) published on September 5, 201, is carried out, and the main contents and drawings of the registered design of this case are as shown in the separate sheet No. 4.

C) Compared design 5

The design of this case, which was publicly announced on May 7, 2008 on May 7, 2008, is a mobile phone with a safe high interest on the ground of the registered utility model application indicated in Article 20-043984 (No. 15) of the Utility Model Gazette, and the main contents and drawings are as shown in the attached Table 5 list.

D) 1, 4: Omission of each description

3) Preparation for the registered design of this case and the comparable design

A) Whether the product is identical or similar to the product subject to design

The registered design of this case is the subject design of the mobile phone, and the subject design 2 is the mobile phone, and the subject design 3 is the mobile phone and the subject design 3 is the mobile phone string, and the subject design 5 is the safety and high interest rate installed in the exhaust of a mobile phone, which is all installed on the back of a mobile phone and used for the purpose of safe use of a mobile phone by sticking or cutting fingers on the back of a mobile phone and is similar to the transaction.

B) Whether it is easy to create the registered design of this case

As seen, “Sasi”, “Sasido”, “Sasido”, “a ground plan”, and “Reference”, which show the overall shape and shape of the registered design of this case.

In comparison with the registered design of this case and the comparative design 2 and 3 centered on the photograph “,” and the comparative design 2 and 3 of the comparative design 2, compared with the registered design of this case and the comparative design 2 and 3, both of the registered design of this case and the comparative design of this case are comprised of the high-level government connecting lass to attach on the surface of smartphones, lassing lass, lassing, displaying, anding, and lass are smaller than the width of smartphones in the form of ladr type, anding is located at the center.

However, the registered design of this case and the design 2 and 3 of the comparative design of this case are the shape that the central part of plart is protruding, while the design 2 and 3 of the comparative design are the parallel shape that the two and the two and three of the comparative design of this case are parallel; the design of this case is the parallel shape that the upper part and lower part of plart are parallel, and the body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body body of this case

First, as seen in the ground plan “the protruding part of the display of the registered design of this case,” the protruding part of the display of the registered design of this case seems to be not a part that can lead a person’s attention because it is difficult to easily recognize that the protruding part is insignificant and not deemed to have an interest. As such, the protruding part of the central part of the display is merely a mere commercial alteration that does not cause a difference in the general consumers’ overall aesthetic sense when considering the whole protruding part of the display.

In addition, as to the difference (D&C), it is merely a commercial and functional alteration that does not recognize any other aesthetic value as a whole, because the health zone, original form, and rectangular type are merely a form of well-known, and it is merely a commercial and functional alteration that does not recognize any other aesthetic value.

In addition, the lower part of the string, such as damage caused by difference, was in the form close to the straight line in the drawing “(5) of the comparable design 5.

In addition, the straight line of the original form and straight line is merely a widely known shape, and it is a creative method or expression method that combines comparative design 5 with comparative design 2 or a comparative design 3, or changes the well-known shape into a straight line with another well-known shape. As such, the straight line of the registered design of this case is merely merely a commercial and functional alteration that does not recognize any other aesthetic value, or it is merely a modification, combination or diversion by a creative number or expression method that is sealed in the part to which the registered design of this case belongs, or by a creative method or expression method that is sealed in the part to which the registered design of this case belongs.

In addition, although the registered design of this case and the comparative design 2, 3 differs in the proportion protruding down to the lower part of a bowling, the adequate adjustment of the ratio is merely a creative or expressive method in the field to which the registered design of this case belongs.

Therefore, it is reasonable to view that the registered design of this case can be easily created by combining 5 comparable designs with 2 or 3 comparable designs by a person with ordinary knowledge in the field to which the design pertains, or by combining 2 or 3 comparable designs with 5 comparable designs, or by combining 2 or comparative designs with 3.

(iv) reorganization;

In full view of the above, since it is apparent that the registered design of this case was registered in violation of Article 5(2) of the former Design Protection Act and its registration became invalid, it is not allowed for the Plaintiff to seek prohibition, etc. against the Defendant on the basis of the design right to the registered design of this case to constitute an abuse of rights. The Defendant’s assertion

4. Conclusion

Therefore, all of the plaintiff's claims are without merit. Since the part against the defendant among the judgment of the court of first instance, which partially accepted the plaintiff's claims, is unfair, the part against the defendant is revoked, and the plaintiff's claims corresponding to the revoked part are dismissed, and the plaintiff'

[Attachment Omission]

Judges exhaustr fever (Presiding Judge)