In a case where a person who succeeded to the right to obtain design registration even though the person was not the creator of the design files an application for design registration by himself/herself, whether the application constitutes grounds for invalidation of registration under Articles 68(1)2 and 3(1) of the former Design Protection Act (negative)

The main text of Article 3(1) of the former Design Protection Act (wholly amended by Act No. 11848, May 28, 2013) provides that a creator of a design or his/her successor shall have the right to obtain design registration under the conditions as prescribed by the Design Protection Act. Article 68(1)2 provides that a person who does not have the right to obtain design registration under the main sentence of Article 3(1) files an application for design registration and obtains design registration, shall be deemed one of the grounds for invalidation of registration. Therefore, if a person who succeeds to the right to obtain design registration, other than the creator, files an application for design registration and obtains design registration, such registration shall not be deemed grounds for invalidation of registration.

Articles 3(1) and 68(1)2 of the former Design Protection Act (wholly amended by Act No. 11848, May 28, 2013) (see current Article 121(1)1)

A. A. (Patent Attorney Lee Byung-chul, Counsel for defendant-appellant)

Defendant (Patent Firm Auyang, Patent Attorney Park Jin-jin et al., Counsel for the defendant-appellant)

Patent Court Decision 2015Heo2457 Decided September 11, 2015

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

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

1. Regarding ground of appeal No. 1

The main text of Article 3(1) of the former Design Protection Act (wholly amended by Act No. 11848, May 28, 2013; hereinafter the same shall apply) provides that a creator of a design or his/her successor shall have the right to obtain design registration under the conditions as prescribed by the Design Protection Act. Article 68(1)2 provides that a person who does not have the right to obtain design registration under the main sentence of Article 3(1) files an application and obtains design registration, shall be deemed one of the grounds for invalidation of registration. Therefore, if a person who succeeds to the right to obtain design registration, other than the creator, files an application for design registration and obtains design registration, such registration cannot be deemed grounds for invalidation of registration.

The lower court determined that, inasmuch as the registered design (design registration number omitted) of this case (design registration number omitted) of which the subject product is “written for himself/herself,” was filed by the successor to the right to obtain design registration, the mere fact that the creator entered the application differently from the fact cannot be deemed to constitute grounds for invalidation of registration under Article 68(1)2 and the main sentence of Article 3(1) of the former Design Protection Act. Furthermore, the lower court rejected the Plaintiff’s assertion that there exists a ground for invalidation of registration in the application of the registered design of

Examining the above legal principles and evidence duly admitted, the above determination by the court below is just, and contrary to the allegations in the grounds of appeal, there were no errors of misapprehending the legal principles on the main sentence of Article 3(1) of the former Design Protection Act.

2. Regarding ground of appeal No. 2

After comparing the registered design of this case and the comparative design as indicated in the holding of the court below, the court below determined that the two designs cannot be deemed as similar inasmuch as there are significant differences in the shape of protruding part formed at the front section and the upper section, and there are significant differences in the shape of protruding part formed at the front section and the lower part, regardless of the common points as indicated in the judgment of the court below.

In addition, the lower court determined that the registered design of this case could not be easily created from the comparative design, on the ground that the shape of the registered design of this case related to such differences falls under commercial and functional transformation that is not recognized as not having any other aesthetic value, or that it cannot be said that it is merely a creative method or expression method that is shaking in the field of design that is intended to use.

Examining the relevant legal principles and the evidence duly admitted by the court below, the above determination by the court below is just, and contrary to the allegations in the grounds of appeal, there were no errors in the misapprehension of the legal principles as to Article 5(1)3 and (2) of the former Design Protection Act.

3. Conclusion

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Kwon Soon-il (Presiding Justice)