República de Corea

PATENT COURT OF KOREA

THIRD DIVISION

DECISION

Case No. 2017Heo8565  Scope of Rights Confirmation (Design)

Plaintiff: A

CEO B

Defendant: C

Date of Final Trial: Jun. 15, 2018

Decision Date: Aug. 10, 2018

ORDER

1. The IPTAB Decision 2017Dang1440 dated Dec. 27, 2017 shall be revoked.

2. The cost arising from this litigation shall be borne by the Defendant.

PLAINTIFF’S DEMAND

As ordered.

OPINION

1. Background

A. Defendant’s Registered Design at Issue (Plaintiff’s Exhibits 2 and 3)(hereinafter the “Registered Design”)

1) Filing Date of Application/ Date of Registration/ Registration Number: Jun. 11, 2015/ Dec. 23, 2015/ No. 832285

2) Article to which design is applied: Massage unit for skin care

3)

Description of Design

1. The massage unit is made of synthetic resins.

2. The Registered Design relates to a massage unit for skin care, including a head and a handle, that is composed of unique and three-dimensional shape that reminds of a spoon and expresses aesthetic senses different from the existing massage units. A head of the Registered Design is equipped with a LED lamp.

3. Figs. [1.1] through [1.7] show a perspective view for overall shape, front view, rear view, left side view, right side view, top and bottom view. The Reference Fig. [1.1] is a drawing that illustrates the use state in which colors are added to the Registered Design. The Reference Fig. [1.2] is a drawing that illustrates the use state in which the LED is omitted from the head of the Registered Design and colors are added. As illustrated in the Reference Fig. [1.2], the LED may be omitted from the head of the Registered Design.

4. The Registered Design relates to the massage unit for skin care that, if a user holds the handle and puts its head onto the skin surface, generates vibration and ions and activates LED rays for the use on the face and the whole body. The Registered Design will be effective in the skin care, such as skin elasticity, anti-aging, etc. by improving the skin absorption rate of skin care ingredients with ion generation, vibration, LED ray, etc.

Essence of the Design Creation

The combination of shape and form of the “massage unit for skin care” is the essence of the design creation.

[Fig. 1.1]	[Fig. 1.2]	[Fig. 1.3]	[Fig. 1.4]	[Fig. 1.5]	[Fig. 1.6]	[Fig. 1.7]
[Ref Fig. 1.1]	[Ref Fig. 1.2]

Main content and drawing

B. Design Subject to Confirmation (Appendix 2 of Plaintiff’s Exhibit No. 1)(hereinafter the “Design for Review”)

The main drawings of the design for the “massage unit for skin care” that the Defendant specifies as a product that the Plaintiff practiced are as follows:

[Perspective View]	[Front View]	[Rear View]	[Left Side View]	[Right Side View]	[Top View]	[Bottom View]

C. IPTAB Decision

1) On May. 11, 2017, the Defendant who is the holder of the design right in the Registered Design argued that “since the articles of the Design for Review and the Registered Design are the same and the shape and form of the Design for Review that the Plaintiff practices is identical or similar to those of the Registered Design, the Design for Review falls within the protection scope of the Registered Design” and petitioned for affirmative confirmation trial for the scope of rights as to the Design for Review.

2) Thus, IPTAB heard the said petition for trial by the Defendant as Case No. 2017Dang1440. On Dec. 27, 2017, IPTAB stated that “the subject article of the Design for Review is identical to that of the Registered Design and the overall aesthetic sense of the Design for Review is similar to that of the Registered Design. Thus, the Design for Review falls within the protection scope of the Registered Design.” and rendered the decision at issue granting the Defendant’s petition (Plaintiff’s Exhibit 1).

2. Summary of Parties’ Arguments

A. Plaintiff's Argument

Due to the following reasons, the overall aesthetic sense of the Design for Review is not similar to that of the Registered Design. Thus, it may not be deemed that the Design for Review falls within the protection scope of the Registered Design. However, the IPTAB determined otherwise and thus erred in its decision.

1) A head that has an inclined elliptical contact member common in the Design for Review and the Registered Design and a cylindrical handle that is separated from the head and easy to grasp are already known as a massage unit for skin care or just fundamental and functional shape provided for the product’s function. Thus, the head and the handle have little importance when determining the similarity of the Design for Review and the Registered Design.

2) However, the aesthetic sense of the Design for Review is different from that of the Registered Design due to the following characteristic constitution.

a) The Design for Review has a groove member in a crescent shape at the upper part of contact member which is on the front side of the head, as well as two circular LED lamps connected to each other like a shape of a peanut.

b) The design of the Design for Review gives a sense of unity with an upper line bordering the head matching a band formed down the handle.

c) Unlike the handle of the Registered Design, which will be recognized as the same shape from all directions, the handle of the Design for Review is designed so that its rear would protrude more than its front and its lower part would protrude more than its upper part.

B. Defendant's Argument

Due to the following reasons, the Design for Review falls within the protection scope for the Registered Design. Thus, the IPTAB decision ruling the same should be upheld.

1) The Registered Design and the Design for Review both have an inclined contact surface in a shape of ellipse, a LED display member formed on the inclined surface, a cylindrical handle with a lower part thicker than the upper part and a round bottom part, and a connection member that has a shape of a truncated circular cone that narrows as it goes down, connecting the contact member and the handle. The overall aesthetic senses of the Registered Design and the Design for Review are similar in that the position, importance, and composition of the contact member, connection member, and handle are in common.

2) The Registered Design and the Design for Review are different only in their commercial or functional modifications which will not affect their overall aesthetic sense.

3. Similarity of Registered Design and Design for Review ¹¹⁰

A. Relevant Law

Whether the designs are identical or similar should be determined not by comparing separate elements that composes the designs but by comparing the overall designs with each other to decide the aesthetic senses that viewers would feel from the designs as a whole. Even if the designs have publicly known shapes among their elements, the identity or the similarity of designs, unless the publicly known shapes do not deliver any special aesthetic sense, the shapes should be included in the analysis to determine the overall aesthetic sense of the design. However, a design right is awarded to the combination of novel shape, form and color of an article. Even if a design is registered by an application that includes publicly known shape and form, an exclusive right cannot be admitted for the publicly known parts. Thus, the publicly known parts shall be of little importance when determining the protection scope of the design right. Thus, even if a registered design and a design to which the registered design is compared are identical or similar in their publicly known parts, the latter does not fall within the protection scope of the registered design unless the unique parts in the registered design excluding the publicly known parts are similar to the relevant parts in the compared design (See Supreme Court Decision 2003Hu762 dated Apr. 30, 2004).

On the other hand, where the parts common in both designs are what must naturally exist in the article or are the fundamental or functional shape of the designs, they have little importance. Thus, even if they are identical or similar, it may not be deemed that both designs are identical or similar (See Supreme Court Decision 2003Hu1666 dated Oct. 14, 2005).

B. Comparison of Designs

Registered Design

Design for Review

C. Analysis of Commonalities and Differences

1) Commonalities

a) The body is composed of a contact member with an inclined surface as a whole, a cylindrical handle and a connection member that connects the contact member and the handle.

b) The front of the contact member is an inclined surface with a shape of ellipse and their angles are almost identical. The LED display member is located at the center of the inclined surface. Also, the rear side of the contact member is convex outward.

c) The handle member forms a cylindrical shape as a whole and the diameter of the lower part is wider than that of the upper part.

2) Differences

a) The Registered Design has a contract member, which has an inclined surface in a shape of single ellipse. One circular LED is formed in the middle of the inclined surface. On the other hand, the Design for Review has an additional crescent surface at the upper part of an inclined surface in the contact member, and two circular LEDs are interconnected at the center of the contact member.

b) In the Design for Review, a gap between the inclined surface in the contact member and the connection member is rather wide. The upper part border line of the connection member is inclined upward when viewed from the rear and forms a diagonal line when viewed from the side. On the other hand, in the Registered Design, a gap between the inclined surface and the connection member is narrower than that in the Design for Review. The upper part border line of the connection member is declined downward when viewed from the rear and forms a gradual curve with the center being convex upwards when viewed from the side.

c) In the Registered Design, the diameter of the handle remains consistent until a particular point where it starts to increase. The inclination viewed from the front, rear, left and right are the same. On the other hand, in the Design for Review, the diameter of the handle becomes wider at a constant rate as it goes downwards and the inclination at the rear is steeper than that at the front.

d) The Registered Design does not have a band in the handle. On the other hand, the Design for Review has a band along the handle. The band is arranged in a shape that does downwards when viewed from the rear.

3) Analysis

The general consumers or traders would have different aesthetic senses from the Design for Review and the Registered Design due to the following reasons and thus they are not similar.

a) First, the massage unit for skin care, which is the subject article of both designs, is an article that generates beauty treatment effects by the user holding the handle, rubbing the contact member on the skin surface, such as face, etc. and facilitating the permeation of cream, etc. Thus, the composition of the contact member with a constant inclined surface and the handle should be seen as the fundamental or functional shape that should naturally exist in an article that performs the said functions.

b) Also, the composition of the followings are, as illustrated in each drawing shown below, what has already been disclosed in the massage unit for skin care or beauty treatment device closely related thereto prior to the application of the Registered Design: (i) the connection member that connects the contact member and the handle (Plaintiff’s Exhibit 13); (ii) an elliptical inclined surface (Plaintiff’s Exhibits 5, 6, 9 and 10); (iii) LED display member at the center of the inclined surface (Plaintiff’s Exhibits 7 and 8); (iv) the rear of the contact member in a form of curve that is convex outwards; and (5) the cylindrical handle with a diameter at the lower part wider than that at the upper part.

c) As such, the parts common in the Registered Design and the Design for Review are designs that are already publicly known prior to the application of the Registered Design or fundamental and functional shapes. Thus they shall be of little importance when determining the similarity of both designs. Meanwhile, the differences in both designs as discussed above are the unique parts that form aesthetic senses and attract the attention of the viewers.

d) Then there exists substantial differences that can offset some commonalities in both designs in the aspects of their shapes and forms. And the general consumers and traders that encounter both designs would feel different aesthetic senses as a whole from the said differences in both designs. Thus, the two designs are not similar.

4. Conclusion

Therefore, the Design for Review does not fall within the protection scope of the Registered Design because the aesthetic sense of the Design for Review is different from that of the Registered Design. The IPTAB decision concluding otherwise is erroneous and the Plaintiff’s petition to revoke the IPTAB decision is well grounded.

Presiding   Judge   Kyuhong LEE

Judge   Sungyop   WOO

Judge   Jinhee   LEE

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110): The subject articles of the Design for Review and the Registered Design are the massage unit for skin care. In this regard, both parties do not raise an argument. Thus, we will examine only the similarity of the Design for Review and the Registered Design.