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【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