KIPO

• 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; or
  • 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; and
• Things that are not the intrinsic shapes of articles (e.g. a handkerchief folded into the shape of a flower).
• 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. However, the name of the design target articles shall be specified as socks, packing bottles, or coffee cups.

Configuration (shape, pattern, color)

Configuration means the shape, pattern, or color, or a 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; and
• 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 does not apply to things sensed by a feeling, 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 an 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 Partial-Substantive Examination System (PSES) 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 partial 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

If there is no industrial applicability

• Things for which the design is used as is and so cannot be produced in large quantities.
• Works related to pure art.

Novelty

Concept

• Novelty signifies that the design, before application, should not be included in publications or catalogues, publicized through sales or exhibition, or exposed in any condition such that someone can identify it.

Exception to a loss of novelty

• If a design, owned by a person entitled to the design registration, is publicly known, worked, or described in the Republic of Korea or a foreign country and the person files the application for the design within twelve 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 submit a document stating his/her intention to the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Trial and Appeal Board, along with documents evidencing his/her eligibility, at any of the following times: <Amended by Act No. 14686, Mar. 21, 2017>
  • Documents evidencing relevant facts shall be submitted within 30 days from the filing date of the application for design registration
  • Before a notice is dispatched for the determinations to reject applications for design registration or determinations of design registration ; in which cases, documents evidencing relevant facts shall be submitted both within 30 days from the date the documents stating his/her intention are filed and before any determination regarding design registration is made.
  • When a person submits a written reply to a opposition to registration of a partially-examined design.
  • When a person submits a written reply to a petition for an administrative patent trial on the invalidation of registration of a design.

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, or 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, or 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 one or more parts of the design components are converted into other designs; or
• When the design is configured into one design by a combination of multiple designs; or
• 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; and
• 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 indispensable 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 (inevitable) shapes designated duly to secure the technical function(s) of articles; or ii) designs which are composed of (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 the 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

A design right arises on the date in which the granting of the right is registered under Article 90 (1) and continues to exist until the 20th anniversary of the filing date of the relevant application of design registration application; provided that a design right to a related design registered under Article 35 expires at the end of the duration of the design right to its basic design.

Commencement of a design right

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

A person who is seeking to register a design right shall pay a fee for a period of three years from the date the registration is sought (hereinafter referred to as the "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 for 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 expiration 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 such reasons cease to exist to pay the late registration fees. However, this provision does not apply where six months have already 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 the workings of the registered design and any similar designs whether it be 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 so the original purpose cannot be realized if the design rights are limited to the exact 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 thus evoking 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 113 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 116 of the Act)

Where infringement of a third person's design right or exclusive license is found to be willful, the court may determine the amount of compensation within a maximum of three times the amount of actual damages. (Article 115 of the Act)

(3) A claim for recovery of reputation (Article 117 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 an allowable scope of the profit made.

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.

• Last updated 17 August 2021
• Design Examination Policy Division