SINCE 1997
DAEILPAT
Daeil Int'l Patent & Trademark Law Firm

Designs 

 

Overview

 

History of the Korean industrial design protection system

• 1908: The Patent Decree laid the foundation in Korea for institutionalizing intellectual property.

• 1949: The Patent Institute was established and patent laws were enacted.

• 1961: The Industrial Design Act was enacted

• 1977: The Korean Intellectual Property Office (KIPO) was established as an independent office under the Ministry of Commerce, Industry and Energy.

• 1979: Korea joined the World Intellectual Property Organization (WIPO).

 

 

What is a design?

Design in English can be defined as a broad concept including visual communication designs related to products, advertisements, graphics, and multimedia designs as well as environmental designs related to a living space or environment.

 

Design, as specified in Article 2 (1) of the Industrial Design Act (the Act, hereinafter), refers to the shape, pattern, color or combination of these in an article that produces an aesthetic impression on the sense of sight; the same applies to a part of an article and style of calligraphy.

 

Therefore, a design in the Act can be defined in relation to the appearance of goods (or movable property) which can be independently transacted.

 

 

Design application system

The design application system consists of the Substantive Examination System (SES) and the Non-Substantive Examination System (NSES).

 

The NSES applies to articles which are sensitive to trends and have a short lifecycle such as food products (A1), clothing (B1), accessories of dresses (B2), other accessories (B3), bags and wallets (B4), footwear (B5), parts of clothes or accessories (B9), bed linen, carpets (C1), household sanitary items (C4), items for congratulations and condolence (C7), household furnishings (small) (D1), teaching and painting materials (F1), stationery and writing supplies (F2), paper and printed materials (F3), packing containers (F4), computers (H5), fabrics (M1), and screen display designs. The SES applies to other articles such as toilet seats (B7), household items (C0), house-furnishing goods (C2), and others

 

As mentioned above, articles applicable to the NSES are principally classified in 18 categories. However, they are continuously reviewed with reference to the adjustment of related articles and designation methods based on other criteria.

 

 

International design protection

How to protect designs rights abroad

You may want to register your designs in new markets to obtain protection abroad. The Hague System for the International Registration of Industrial Designs provides a centralized registration system where you can e-file up to 100 designs and target over 62 territories in one single application that you could use to claim priority on in further filings.

 

The Republic of Korea joined the 1999 (Geneva) Act of the Hague Agreement in March 2014. Any individual or business in the Republic of Korea can now file an international design application under the Hague System either through KIPO or directly with WIPO.

 

For more details on filing an international application, geographical coverage, fees and to get started, please consult: www.kipo.go.kr orwww.wipo.int/hague/en.

 

 

Design system information

A design is easily copied and sensitive to trends. Therefore, it is subject to several special systems different from other industrial property right laws.

 

Similar design system

Overview

The similar design system features the creation of a basic design transformed into variations and continuously created.

 

As the scope of similarity is abstractive and indefinite, protection by registration is required for similar designs within the scope of similarity to prevent infringement and imitation.

 

Thereby, a design transformed from the basic design which an applicant has registered or filed can be registered as a similar design.

 

Contents of a similar design

Similar design rights shall be assigned and extinguished in indivisible combination with the design rights of the basic design.

However, it is possible to create similar design rights only by an invalidation trial or a trial to confirm the scope of the rights or to cancel the rights.

 

 

Set item design system

The Act specifies "the doctrine of one application for one design" through which an application for substantive examination design registration shall relate to only one design so as to clarify application items, accelerate examination, and also define the scope of the rights.

 

However, if two or more articles are exceptionally used as a set of articles constituting a coordinated whole, the set item design system is applied so that they can be examined and registered through one application.

Items for a design of a set of articles (Addendum 5 of the Enforcement Regulation of the Industrial Design Protection)

 

 

Secret design system

A design is easily copied and sensitive to trends. Therefore, if it is disclosed that the owner of the design rights to a design has not completed the proper preparations for a business, the owner may lose all business profits due to imitation by others

 

An applicant may request that the design be kept secret for a period of three years from the date upon which it is registered or protected.

 

The request for the undisclosed design is made from the filing date of the application to the payment date of the initial registration fee so that the applicant can efficiently manage the situation. The applicant may reduce or extend the period by a maximum of three years.

 

In any of the following cases, the Commissioner of the Korean Industrial Property Office shall allow persons to have access to a design when:

- The request is made by a person who has obtained the consent of the owner of the design rights;

- The request is made by a party or an intervener in examination, trial, or litigation proceedings;

- The request is made by a person who has clearly stated that he/she was warned about infringement of the registered design; - The request is made by a court.

 

 

Requirements for a design definition

Merchantability

A design has an indivisible relationship with articles and cannot exist without articles. That is, the Act does not protect a created design, but protects articles to which the design is applied.

 

The articles herein mean "movable properties which are independent and definitive." Thereby, the following cannot be included in articles protected in accordance with the Act.

 

  - Immovable property

  - Shapeless things such as heat, air, fluid, electric, etc

  - Powder or granules such as sugar

  -As of July 1, 2001, the partial design of articles such as the heels of socks, necks of bottle, and handles of coffee cups can be registered as well. However, the name of design target articles shall be specified as socks, packing bottles, or coffee cups.

  -Things that are not the intrinsic shapes of articles (e.g. a handkerchief folded into the shape of a flower)

 

 

Configuration (shape, pattern, color)

Configuration means the shape, pattern, color or combination of these in an article

 

  - Shape: appearance of an article which occupies space, 3D outline which composes articles

  - Pattern: chromaticity, color turbidity, and color distinction which show the appearance of articles

  - Color: color painted on articles to be discriminated visually

 

 

Visibility

A design is limited to things which can be identified by the human eye. In other words, the Act is not applied to things sensed by feeling or things unable to be discerned and to things which can only be identified using instruments such as a microscope.

 

 

Aesthetics

A design is applied only to things which stimulate an aesthetic sense. However, since aesthetic sense may be subject to individual judgment, it is difficult to establish exact judgment criteria. Therefore, in actual examination, if an article has perceptible formative beauty rather than a high-level of aesthetic sense, it is regarded as possessing aesthetic sense.

 

 

Prerequisites for acquiring design rights

To register a design, the design should meet the substantial requirements including i) novelty, ii) creativity, iii) industrial applicability, and iv) non-violation of the enlarged concept of novelty. However, if there are two or more applications which meet the above requirements, only the first application can be registered.

 

However, a design filed based on the Non-Substantive Examination System (NSES) is not examined for i) novelty, ii) creativity, iii) the enlarged concept of novelty, or iv) the first-to-file system, but is instead examined only for a formality check including i) formal requirements, ii) industrial applicability, and iii) other unregistrable grounds.

 

To ensure the safety of non-substantive examination design rights, the Act was revised on July 2007 to refuse a design easily created by widely known domestic designs.

 

 

Industrial applicability

Concept

  - "Industrial Applicability" refers to articles with the same design that can be produced in large quantities by industrial production methods.

  - "Industrial Production Methods" include both mechanical and manual production methods.

  - "Mass production of the articles with the same design is possible" means the articles are not completely identical, but has similarities to the extent that the appearance is seemingly identical.

  - Therefore, to meet the "Industrial Applicability" requirement, the article related to the design in an application should be reproducible and the subject of intended mass production from the beginning.

 

If there is no industrial applicability

  - Things for which the design is used as it is and so cannot be produced in large quantities

  - Works related to pure art

 

 

Novelty

Concept

  - Novelty signifies that the design is not carried by publications or catalogues before application, publicized through sales or exhibition, or exposed to a condition in which someone can identify it.

 

Exception of a loss of novelty

  -If a design owned by a person entitled to design registration is publicly known, worked, or described in the Republic of Korea or foreign country and the person files the application for the design within six months of the date on which the design was publicly known, worked or published, etc., it is deemed not to lose novelty.

  - To obtain such benefit, the applicant shall specify the purport of such intention on an application for design registration and submit it to the Commissioner of the Korean Intellectual Property Office with documentary evidence within 30 days of the filing date of the application for design registration.

 

 

Creativity

Concept

The creativeness of a design signifies that a person with ordinary skill in the art cannot easily create a given design by internationally or domestically known designs, by domestically well-known shapes, patterns, colors, or a combination thereof.

 

Design to be easily creatable

(A) Non-creative designs based on widely known shapes or patterns:

  - When the design uses common shapes like triangles, rectangles, circles, and regular polyhedrons as they are;

  - When the design simply rearranges common patterns (e.g. checkerboard pattern, polka dots, etc.)

(B) Non-creative designs based on natural objects, famous works, famous buildings, famous landscapes

(C) Non-creative designs based on known designs

  - When the design illegally uses a design known widely through publications or broadcasts (e.g.TV) in the related industry

  - When the shape and pattern of famous automobiles are illegally applied to toys

  - When the shape and pattern of ET dolls are illegally applied to a coin bank

  - When a known radio shape is combined with a known watch shape

(D) Non-creative design based on the combination of publicized designs

  - When part of the design components are converted into other designs

  - When the design is configured into one design by a combination of multiple designs

  - When the design simply rearranges common design components

 

Unregistrable designs

Even if the aforementioned requirements are satisfied, designs falling under any of the following cannot be registered:

(1) Designs which are identical or similar to national flags, national emblems, military flags, decorations, orders of merit, badges and medals of public organizations, national flags and national emblems of foreign countries or characters or indications of international organizations

(2) Designs which are liable to contravene public order or morality

  - Designs which are derogatory to specific countries or their people

  - Designs which are liable to vulgarity, aversion, or contravene public morals

  - Designs which are contrary to morality

  - Designs which are liable to contravene other relations of international confidence or fair competitive order

(3) Designs which are liable to create confusion over articles connected with another person's business

  - Designs which use another person's well-known trademarks, service marks, collective marks, or business emblems (including 3-D trademarks)

  - Designs which use marks of non-profit corporations

(4) Designs which include only indispensible shapes to secure the function(s) of articles

  - The function of articles refers to technical function(s) and registration cannot be permitted for i) designs which are composed of shapes (inevitable shapes) designated duly to secure the technical function(s) of articles; or ii) designs which are composed of shapes (semi-inevitable shapes) designated by standardized size to secure the compatibility of articles.

 

First-to-File Rule

  - Under the first-to-file rule, when two or more applications relating to the same or similar designs are filed on different dates of application, only the applicant with the earlier filing date may obtain registration for the design.

  - Exclusive rights are granted to the applicant of design rights. Therefore, when two or more applications relating to the same or similar designs are coincidentally created and filed on different dates, the design registration is granted to the first applicant so only that person has exclusive rights.

  - However, when a design application is revoked or cancelled, it is regarded as being excluded from the first-to-file rule from the beginning.

  - Also, if abandonment of a design application occurs, a refusal decision is made, or a trial decision for refusal is finalized, it is regarded as being excluded from the first-to-file system from the beginning.

 

 

Design Rights

Term of a design right

Design rights are valid or in force for 15 years from the date of registration for establishment. However, similar design rights have the same duration as basic design rights. When a basic design expires, the similar design rights expire as well.

 

Commencement of a design right

When an examiner decides to grant the design registration and an applicant pays the stipulated registration fees, the design right is effective.

 

A person who is seeking to register a design right shall pay a fee for a period of three years from the date registration was sought (hereinafter "registration date"), and the owner of a design right shall pay an annual fee on the registration date starting from the second year of the three year period. The owner of a design right may pay the design registration fee for multiple years or the entire period.

 

The owner of a design right or a person seeking to register a design right has a period of six months after the expiry of the prescribed payment period to pay late registration fees. The amount of the late registration fees to be paid shall not be more than twice the initial registration fees.

 

If the owner of a design right or a person seeking to register a design right is unable to pay the late registration fees within the prescribed period for unavoidable reasons, the person has a period of fourteen days from the date on which the reasons cease to exist in which to pay the late registration fees. However, this provision does not apply where six months have elapsed from the expiry date of the period of late payment.

 

 

Effect of a design right

(1) Contents of design rights

The owner of a design right has the exclusive right to work the registered design and its similar designs commercially and industrially as business.

  (A) "As business"

"As business" refers to all designs which are repeatedly utilized including designs which are utilized for profit or not for profit. In other words, designs which are utilized individually, temporarily, and on one occasion are excluded.

  (B) "Working"

"Working" refers to all actions which produce, use, assign, lease, import or export articles related to designs; or offers to assign or lease such articles (including exhibition to transfer or lease).

  (C) "Monopoly"

"Monopoly" refers to the rights of a registered design and its similar designs which are excluded from being worked by others.

 

(2) Scope of protection of design rights

"The effect of design rights extends to not only the same design as a registered design, but also to designs similar to it since the scope of protection is narrow and the original purpose cannot be realized if the design rights are limited to the same design.

 

Therefore, the concept of "similarity" is defined as the extent to which the design has common homogeneity in its formative essence compared to the design represented in an article and so evokes a seemingly similar aesthetic sense.

 

 

Restriction of a design right

(1) The effect of a design right cannot extend to any of the following:

  (a) the use of a registered design for research or an experiment

  (b) vessels, aircraft or vehicles merely passing through the Republic of Korea or the machinery, instruments, equipment or other accessories used in such vessels, aircraft or vehicles

  (c) identical products existing in the Republic of Korea at the time the application for registration of a design was filed

 

(2) Restriction by license

Where the design right is subject to an exclusive license, the design rights of the owner of a registered design are constrained within the extent that the exclusive licensee has the exclusive right to work the registered design or similar design.

 

(3) Restriction by other prior rights

Where working a registered design or similar design would utilize or conflict with another person's registered design or similar design, patented invention, registered utility model, or registered trademark under an application filed before the application date of the design registration concerned, the owner of the design right may not work the registered design commercially or industrially without the consent of the owner of the earlier patent right, utility model right or trademark right.

 

 

Design right infringement remedies

Civil remedy

(1) Injunction against an infringement (Article 62 of the Act)

The owner or exclusive licensee of a design right may request a person who is infringing or likely to infringe the design right to discontinue or refrain from the infringement.

 

(2) A Claim of compensation for damages

An owner of design rights or an exclusive licensee may request a person who has intentionally or negligently infringed upon those rights to compensate civil damages. (Article 750 of the Civil Law)

A person who has infringed upon design rights or an exclusive license of another person is presumed to have been negligent regarding such act of infringement. (Article 65 of the Act)

 

(3) A claim for recovery of reputation (Article 66 of the Act)

Upon the request of an owner of design rights or an exclusive licensee, the court may, in lieu of damages or in addition thereto, order the person who has injured the business reputation of the owner of the design right or exclusive licensee by intentionally or negligently infringing the design rights or exclusive license, to take necessary measures to restore the business reputation of said owner or exclusive licensee.

 

(4) Compensation for unfair profits gained by the infringer (Article 741 of the Civil Law)

As specified in Civil Law, a person who gains profit by the design right of another person without any legal grounds or whose actions result in damage to the other person shall compensate the owner of the design right or exclusive licensee for damages within the allowable scope of the profit.

 

 

Criminal remedy

A person who infringes upon design rights or an exclusive license shall be liable to imprisonment with labor not exceeding 7 years or to a fine not exceeding KRW 100 million.

 

 

Revision of Industrial Design laws

1. Introduction of 3D modeling drawings (in effect as of January, 2010)

An applicant can submit 3D model drawings through electronic files (dwg, dwf, 3ds, iges) instead of 2D drawings.

 

2. Introduction of animated icon designs (in effect as of April, 2011)n

An applicant can submit an animated icon design through video files (swf, mpeg, wmv, Animated gif) without transforming to several stabilized images

 

3. Easier conditions for describing a design (in effect as of April, 2011)

The obligation of an applicant to prepare drawings by orthographic methods is abolished; the applicant may choose their preferred drawing method. If the general shape of a design and its creative content are sufficiently expressed, the applicant may submit their desired number of drawings, instead of a perspective view and set of 6 drawings.

 

4. Enlargement of non-substantive examination articles (in effect as of April, 2011)

The non-substantive examination article has been expanded from the previous 10 large categories to 18 large categories. As enumerated concretely, sets of articles like accessories, bags and electronic calculators are added to non-substantive examination articles.

 

5. Enlargement of items for a set of articles (in effect as of January, 2010)

Items for sets of articles to be filed have been expanded from the previous 31 items to a total 86 items by the addition of specialized sportswear sets (etc.), which have been incorporated in the recent article transaction.