جمهورية كوريا

【Main Issue and Holding】

In a case where a person succeeding to the right to register a design from a creator of the design filed an application and registered the design, whether such case constitutes grounds for invalidation of registration as prescribed by Articles 68(1)2 and 3(1) of the former Design Protection Act (negative)

【Summary of Decision】

The former Design Protection Act (wholly amended by Act No. 11848, May 28, 2013) prescribes that (a) “any person who creates or succeeds to a design, shall be entitled to obtain a design registration therefor in accordance with this Act” in the main text of Article 3(1); and (b) where a person who is not entitled to obtain a design registration under the main sentence of Article 3(1), such a case may be deemed as one of the grounds for invalidation of registration. As such, in a case where a person who is not the creator of the design succeeded to the right to register a design, filed an application, and registered the design, such a case may not be deemed grounds for invalidation of registration.

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

Article 3 of the former Design Protection Act (Persons Entitled to Obtain Design Registration)

(1) Any person who creates or succeeds to a design shall be entitled to obtain a design registration therefor in accordance with this Act: Provided, That employees of the Korean Intellectual Property Office and the Intellectual Property Tribunal shall not obtain a design registration during their employment at the office except for inheritance or bequest. <Amended by Act No. 4595, Dec. 10, 1993; Act No. 4894, Jan. 5, 1995; Act No. 6413, Feb. 3, 2001; Act No. 7289, Dec. 31, 2004>

Article 68 of the former Design Protection Act (Trial to Invalidate Design Registration)

(1) An interested person or an examiner may request a trial to invalidate design registration in any of the following cases. In such cases, a request may be made with respect to each design for which an application for multiple design registration is filed pursuant to Article 11-2: <Amended by Act No. 4595, Dec. 10, 1993; Act No. 5354, Aug. 22, 1997; Act No. 6413, Feb. 3, 2001; Act No. 7289, Dec. 31, 2004; Act No. 8187, Jan. 3, 2007; Act No. 9764, Jun. 9, 2009>

2. Where a person is not entitled to obtain a design registration under the main sentence of Article 3(1) or unable to obtain a design registration under the proviso to Article 3(1);

Article 121 of the current Design Protection Act (Trials to Invalidate Design Registration)

(1) An interested party or examiner may file a petition for an administrative patent trial to invalidate the registration of a design in any of the following cases. If a case involves the registration of designs claimed in an application for registration of multiple designs under Article 41, such petition shall be filed separately for each design:

1. Where the registrant has no right to register the design under the main sentence of Article 3(1) or is ineligible for registration of the design under the proviso to the aforesaid paragraph;

【Plaintiff-Appellant】Gaia Inc. (Patent Attorney Lee Byung-yong, Counsel for the plaintiff-appellant)

【Defendant-Appellee】Defendant (Patent Firm AJU Kim Chang & Lee, Patent Attorney Park Dae-jin et al., Counsel for the defendant-appellee)

【Judgment of the court below】Patent Court Decision 2015Heo2457 decided September 11, 2015

【Disposition】The final appeal is dismissed. The cost of final appeal is assessed against the Plaintiff.

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

1. As to ground of appeal No. 1

The former Design Protection Act (wholly amended by Act No. 11848, May 28, 2013) prescribes that (a) “any person who creates or succeeds to a design, shall be entitled to obtain a design registration therefor in accordance with this Act” in the main text of Article 3(1); and (b) where a person who is not entitled to obtain a design registration under the main sentence of Article 3(1), such a case may be deemed as one of the grounds for invalidation of registration. As such, in a case where a person who is not the creator of the design succeeded to the right to register a design, filed an application, and registered the design, such a case may not be deemed grounds for invalidation of registration.

The lower court determined that, (a) inasmuch as the application of the registered design in the instant case (design registration number omitted), whose subject article was the “backrest of a chair,” was filed by a successor of the right to register the design, (b) the sole fact that the creator of the design was falsely entered in the application was insufficient to deem such a case as constituting the grounds for invalidation of registration as prescribed in Article 68(1)2 and the main text of Article 3(1) main text of the former Design Protection Act. Moreover, the lower court dismissed the Plaintiff’s argument that there existed grounds for invalidation of registration in the application for the instant registered design, where the creator was falsely entered in.

Examining ground of appeal No. 1 in light of the foregoing legal principle and the evidence duly admitted, the lower court was justifiable to have determined as above, and in so determining, it did not err by misapprehending the legal principle on the main text of Article 3(1) under the former Design Protection Act.

2. As to ground of appeal No. 2

Having compared the registered design in the instant case with the design subject to comparison as presented in the lower court, the lower court determined that, in spite of some common features mentioned in the lower judgment, the two designs could not be deemed similar on the ground that there existed significant differences between the two in terms of: (a) the thin and long holes formed in the upper side of the front (rear) frame; and (b) the shape of the protruding part formed in the lower side of the front frame, both of which produce a significant difference in the overall aesthetic impression.

Moreover, the lower court determined that the registered design in the instant case could not be created easily from the comparable design because the shape of the registered design in the instant case, which is related to the differences supra, could not be considered as having constituted a commercial and functional modification, whose aesthetic values could not be recognized, or as a common creation or expression in the field of design.

Examining ground of appeal No. 2 in light of the relevant legal principles and the evidence duly admitted by the lower court, the lower court’s judgment is justifiable, and it did not err by misapprehending the legal principles on Articles 5(1)3 and 5(1)2 in the former Design Protection Act, contrary to what is alleged in the grounds of appeal.

3. Conclusion

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

Justices      Kwon Soon-il (Presiding Justice)

Ko Young-han (Justice in charge)

Kim So-young

Cho Jae-youn