In a case where Gap filed a petition for a registration invalidation trial against Eul corporation of the design right-holder of the registered design “,” which used the design as “the framework for creative frame,” on the ground that the registered design could easily be created by the substitution of comparative design “,” and that it violated Article 5(2) of the Design Protection Act, but the Korean Intellectual Property Tribunal dismissed the petition, the case holding that the registered design cannot be seen as easily created by a person with ordinary knowledge in the field to which the design belongs by combining comparative designs.

Articles 5(2) and 68(1)1 of the Design Protection Act

Plaintiff (Patent Attorney Reservation-young et al., Counsel for the plaintiff-appellant)

Songwon Co., Ltd. (Patent & Patent Attorney Shin Dong-dong et al., Counsel for the defendant-appellant)

Patent Court Decision 2012Heo238 decided May 2, 2012

The judgment below is reversed, and the case is remanded to the Patent Court.

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

1. Article 5(2) of the Design Protection Act provides that design registration shall not be granted where a person with ordinary knowledge in the art to which the design pertains can easily create a design through a combination of designs falling under paragraph (1) 1 or 2. It is reasonable to deem that not only a combination of designs falling under any of the above subparagraphs, but also a design that can be easily created by the above designs, respectively. The purport of the provision is that a design can not be registered because it is merely a commercial or functional alteration with the shape, pattern, or color of a design falling under any of the above subparagraphs, or a design that is low creative level, such as a design that is modified, combined or used by a person with ordinary knowledge in the art to which the design pertains, even if it is partially modified, it is merely a commercial or functional alteration without any other aesthetic value in view of the whole, or a design that is modified, combined, or used by a method of expression in the art to which the design pertains, because it can be easily created by a person with ordinary knowledge in the art to which the design pertains (see Supreme Court Decision 200Hu38, May 208, 20108, 20108).

A person shall be appointed.

2. We examine the above legal principles and records.

In comparison with the registered design of this case (registration number omitted) using the subject product as the framework for creative frame and the comparative design 1 as indicated in the judgment below, the registered design of this case is common in that the upper scood in the form of straight and the lower scood part of the upper scood part adjacent to the same direction, and that the upper scood part of the upper scood part of the upper scood part is formed. However, while the registered design of this case is formed in one scood part of the upper scood part at the center of the upper scood part, there is no need home in the comparative design 1, and as in the case of the registered design of this case, the lower scood part is formed in the upper scood part of the upper scood part, compared to the comparative design 1, the registered design of this case is formed in the middle scood part of the upper scood part.

As above, there are differences between the registered design of this case and the comparative design 1 in the location of the main home and rainwater blocking board, and the upper and lower parts of the design. This is to the extent that the overall view of the design brings about a different aesthetic value among these designs. Thus, it cannot be deemed that the comparative design 1 is merely a commercial and functional alteration that does not recognize any other aesthetic value by changing the comparative design 1 like the registered design of this case.

On the other hand, the comparative design 2 and 5 in the holding of the court below, which include the subject product as the “original frame,” and the comparative design 6 and 7 as indicated in the holding of the court below, consisting of rainwater blocking boards respectively. However, since the main home or rainwater blocking board of these designs differs from the registered design of this case in terms of the specific shape, pattern, etc. that combines the formation location or the entire design, it is not possible to create the registered design of this case merely with the comparative design 1, and there is no other material to see that the formation of the main home or rainwater blocking board of the design of this case in the shape and form as the same as the registered design of this case is a shot method or expression method that is detrimental to the design of this case.

Therefore, it is difficult to view that the registered design of this case can be easily created by a person with ordinary knowledge in the field to which the design pertains through the combination of comparable designs as seen earlier.

Nevertheless, the court below recognized the utility of the registered design of this case solely on the ground that the home and rainwater blocking board simply performing the V fixings and blocking functions of rainwaters from the registered design of this case constitute comparative design 2, 5, 6, and 7 as seen earlier or are generally used in the design field. In such a case, the court below erred by misapprehending the legal principles on the determination of utility of design creation, which affected the conclusion of the judgment. The ground of appeal pointing this out is with merit.

3. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee In-bok (Presiding Justice)