République de Corée

The translation does not have any legal effect and the Judiciary of the Republic of Korea does not guarantee the accuracy of the translated text. Please refer to the original decision in Korean for an accurate statement of law.

 

 

PATENT COURT OF KOREA

SECOND DIVISION

DECISION

 

Case No.:  2015Heo8370 Invalidation of Registration (Design)

 

Plaintiff:  A

 

Defendant:  D

 

Closure of Hearing:  March 15, 2016

 

Date of Decision:  March 31, 2016

 

 

ORDER

 

1. The Plaintiff’s claim is dismissed.

 

2. The cost of litigation shall be borne by the Plaintiff.

 

PLAINTIFF’S DEMAND

 

The decision by the Intellectual Property Trial and Appeal Board (“IPTAB”) in Case No. 2014Dang2801 issued on November 23, 2015 shall be cancelled.

 

OPINION

 

1.  Background Facts

 

A. Registered design at issue in the present case (“Subject Design”)

 

(1) Registration No.: #349764/ Application Date: November 26, 2002/ Registration Date: April 7, 2004

 

(2) Name of the Product: Assembly type stair treads

 

(3) Description and drawing of the design: As per Appendix

 

(4) Final registrant: Defendant

 

B. Procedural history

 

(1) The Plaintiff filed for decision of invalidation of registration against the Defendant on November 6, 2014 with the IPTAB claiming that the Subject Design is a typical net pattern shown on turtlebacks or giraffes and widely known domestically and overseas and thus any person with ordinary knowledge in the industry where the Plaintiff and the Defendant belong could easily create and thus its registration should be invalidated.

 

(2) The IPTAB rendered its decision dismissing the foregoing filing for invalidation on November 23, 2015 on the ground that the Subject Design is not a design that can be easily created from well-known patterns or shapes.

 

[Factual Basis] Undisputed facts, Plaintiff’s Exhibit Nos. 1 to 3 and the purport of overall arguments]

 

2. Judgment as to Whether the IPTAB Decision Is Lawful

 

A. Summary of the Plaintiff’s Assertions

 

The Subject Design is just a simple transformation of the pattern on the turtlebacks or giraffes which is a domestically widely known figure or shape, so it (i) lacks novelty and falls under each subparagraph of Article 5(1) of the old Design Protection Act (prior to the amendment dated December 31, 2004 by Law No. 7289, “Old Design Protection Act”) or (ii) can be easily created by a person with ordinary knowledge in the field where the design belongs, falling under Article 5(2) of the same Act to be invalidated, and therefore, the IPTAB Decision reaching the opposite conclusion is illegitimate.

 

B. Whether the Subject Design falls under each subparagraph of Article 5(1) of the Old Design Protection Act

 

Each subparagraph of Article 5(1) of the Old Design Protection Act on novelty of design provides ‘design widely known or publicly licensed domestically or overseas prior to application for design registration’ (subparagraph (i)), ‘design inserted in publications distributed domestically or overseas prior to application for design registration’ (subparagraph (ii)) and ‘design similar to such design as falling under subparagraph (i) or (ii)’ shall not be registered, but there is no provision on ‘domestically widely known figure or shape’ as asserted by the Plaintiff.

 

Further, even if the Plaintiff’s assertion is understood to be based on comparison with registered design no. 798366, the Registered Design Gazette (Plaintiff’s Exhibit 8) on the design asserted by the Plaintiff became known by registration on May 22, 2015 and thus cannot be evidence of design known prior to the application for registration of the Subject Design.

 

Accordingly, there is no room to apply each subparagraph of Article 5(1) of the Old Design Protection Act on novelty with respect to registration of the Subject Design, and thus the Plaintiff’s assertion based thereon is groundless.

 

C. Whether the Subject Design falls under Article 5(2) of the Old Design Protection Act

 

(1) Applicable legal principles

 

Article 5(2) of the Old Design Protection Act provides that design registration is not allowed to any design which can be easily created by a person with ordinary knowledge in the area to which such deign belongs by referring to patterns, shapes and colors or their combinations that are widely known domestically.  The intent of the provision is that if a design is an expression of widely known patterns or shapes as they are or with some modification thereof or a simple modification of such patterns or shapes that is easily made by any person with ordinary knowledge in the area to make them optimum in using or applying to the articles, such design cannot be registered (Supreme Court Judgement 98Hu591 rendered on April 1, 2001).  The objective creativity required by the Design Protection Act does not mean that a design should be unique without any similarity to all past or present designs but is fulfilled if aesthetic creation is based on the past or the existing design, combined with aesthetical creation showing a new aesthetic sense, such that as a whole there can be recognizable aesthetic value that is different from the prior design (Supreme Court Judgment 2005Hu2922 rendered on July 28, 2006 and Supreme Court Judgment 2000Hu3388).

 

(2) Analysis

 

The main drawing of the Subject Design is as described in the table below and the dominant element of shape in the Design which arouses aesthetic sense of viewers can be said the pattern (“Pattern”) by depressed or embossed engraving on the upper surface of the body of the ‘assembly type stair treads’.

 

Perspective view	Front view	Top view

 

The Pattern has in its center a pentagon or a hexagon shapes from which are radially extended lines forming or like patterns which repeat irregularly to the right and to the left to form  pattern.  The Pattern took a natural motif from giraffes, turtlebacks and nets, etc. as seen below and can be seen reasonably as a design created by combining domestically widely known shapes and forms (“Well-Known Shape and Form”) under Article 5(2) of the old Design Protection Act.

 

With respect to this, the Defendant asserts to the effect that the giraffe pattern, one of the respective themes, consists of various unspecified shapes lacking a fixed pattern and thus cannot be said as a widely-known shape and form.  However, widely-known shapes and forms just mean such shapes and forms that are specified to be conceived generally and intuitively by the name.  Such widely-known shapes and forms are not meant to require uniformity, but it is sufficient if they can be conceived in universal shapes and forms within certain range. In particular, in case of natural motif, the actual shapes and forms invariably differ to some extent according to the used parts or kinds and thus the width of the conception should be seen wider.  In this respect, in case of natural subjects like giraffe pattern which are familiar and well known, even if the shapes or forms show certain deviations according to the parts or kinds, it should be proper to acknowledge that there exists shapes that can be generally and intuitively conceived (it is because such deviation similarly exists in case of turtlebacks and nets, etc. patterns which are acknowledged by the Defendant as well-known shapes and forms).  Accordingly, the giraffe pattern, one of the motifs of the Pattern, is said to be a well-known shape and form under Article 5(2) of the old Design Protection Act and thus the Defendant’s assertion is not accepted.

 

However, as to whether the Subject Design, which was created by combining well-known shapes and forms based on the patterns of giraffes, turtlebacks and nets, etc. which are natural things, can be easily created, due to the reasons set below, the Subject Design created by combination of such patterns cannot be seen as a design that can be easily created by a person with ordinary knowledge in the area to which the Design belongs.

 

(i)  As seen in the foregoing, well-known shapes and forms are just shapes and forms specified by intuitively conceived forms from their names, and the manner of expressing them cannot be said to be uniform and therefore, even if being created based on the well-known shapes and forms, the creation of such design is not necessarily easy. In particular, the Pattern could have been only designed through the steps of specifying intuitively conceived shapes of natural things such as giraffes, turtlebacks and nets, etc., of which expression of each pattern can be far wider, the step of collecting and selecting such specified parts, and the step of combining them, with each step added by aesthetic creation giving a new aesthetic sense.  In other words, the Subject Design created a new aesthetic sense, different from the well-known shapes and forms, rather than expressing on the goods the patterns of giraffes, turtle backs and nets, etc. as they are or by modifying them.

 

(ii)  In addition, even for a design consisting of well-known shapes, forms and the like, to say that they are created easily, formation of a design for goods referring to the shapes, forms and the like should have been ordinarily conducted in the field to which the design belongs, and therefore, if there was no such formation based on such basic shapes and forms in the past in the relevant field, it cannot be said that creation is easy.  In the present case, there are hardly any examples of prior designs that adopted the shapes and forms of animals and plants in design fields for stairs, treads, and boundary blocks (presenting Plaintiff’s Exhibit 8, the Plaintiff claims that the boundary blocks have been designed by applying shapes and forms of animals and plants before the application for registration of the Subject Design is filed, but as seen in the foregoing, Plaintiff’s Exhibit 8-Gazette of Registered Designs was publicized after the designs were registered on May 22, 2015 and thus such designs cannot be an evidence of prior designs before the application for registration of the Subject Design), and there is no evidence to support that it is easy to design stairs, treads, boundary blocks, etc., based on the shapes or forms of animals and plants as a motif.  Accordingly, the Subject Design cannot be said to be a design which can be created by anyone with ordinary knowledge in the field to which the design belongs by adding some changes in applying or reallocating the foregoing well-known shapes and forms to the articles in order to make the design appropriate to the articles.

 

D. Whether the IPTAB Decision is lawful

 

Therefore, the Subject Design cannot be said to contain reasons of invalidation as stipulated in Article 5(2) of the old Design Protection Act, and the IPTAB decision having the same conclusion is legitimate.

 

3. Conclusion

 

Therefore, since the Plaintiff’s claim seeking cancellation of the IPTAB decision is without merit, the Court dismisses the claim and renders its decision as stated in the Order.

 

 

Presiding Judge Woosu KIM

Judge Boohan KIM

Judge Sanghoon Na

 

 

 

Appendix

 

The Subject Design

 

1. Articles subject to the Design

 

Assembly type stair treads

 

2. Description of the Design

 

1) Made of synthetic resin.

 

2) Made of waste tire chips and molded into treads;

 

3) Characterized by the upper surface of the tread being provided with anti-slip grooves

 

3. Key-point of the Creation

 

The key-point of the created design is the combination of the shape and the form of the assembly type stair treads.

 

4. Drawing