PREREQUISITES FOR ACQUIRING DESIGN RIGHTS IN KOREA
Prerequisites for acquiring Korean design rights
To register a Korean 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 Non-Substantive Examination System (NSES) 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 non-substantive examination design rights, the Act was revised on July 2007 to refuse a design easily created by widely known domestic designs.
Industrial applicability
1. 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.
2. If there is no industrial applicability
- Things for which the design is used as it is and so cannot be produced in large quantities
- Works related to pure art
Novelty
1. Concept
- Novelty signifies that the design is not carried by publications or catalogues before application, publicized through sales or exhibition, or exposed to a condition in which someone can identify it.
2. Exception of a loss of novelty
- If a design owned by a person entitled to design registration is publicly known, worked, or described in the Republic of Korea or foreign country and the person files the application for the design within six 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 specify the purport of such intention on an application for design registration and submit it to the Commissioner of the Korean Intellectual Property Office with documentary evidence within 30 days of the filing date of the application for design registration.
Creativity
1. 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, by domestically well-known shapes, patterns, colors, or a combination thereof.
2. 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, 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 part of the design components are converted into other designs
- When the design is configured into one design by a combination of multiple designs
- When the design simply rearranges common design components
3. 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
- 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 indispensible 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 shapes (inevitable shapes) designated duly to secure the technical function(s) of articles; or ii) designs which are composed of shapes (semi-inevitable shapes) designated by standardized size to secure the compatibility of articles.
4. 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 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.
Read more about Korean Design here:
Korean Design System
- What is a Korean Industrial Design?
- Information on the Design System
- Requirements for a Korean Design Definition
- Prerequisites for Acquiring Design Rights in Korea
Application Procedure for Design in Korea
- Substantive Examination System
- Non-Substantive Examination System
DAEILPAT
Design
The road to securing design registration in Korea is often as unique as your products, and we are here to guide you in the right direction.
Establishing design protection for the design of your products can have a significant commercial impact on your business, especially in today's world where product design plays a crucial role in captivating consumers and differentiating your offerings from competitors.
Design protection can be established for various products. While obvious examples include furniture, jewelry, and industrial equipment, it's important to note that design protection can also be applied to other products. For instance, it can be extended to the graphical user interface (GUI) of a software product or the pattern of a fabric. We recommend registering a design if you have invested time and resources into developing the design of your product and if it adds value to your offering.
Combining design protection with patent protection can provide robust protection for your product. This approach allows you to safeguard both the outer appearance and the technical functionality of your product, ensuring comprehensive protection.
Remember, protecting your designs in Korea can help safeguard your business interests and create a competitive advantage. By taking the necessary steps to register your designs and enforce your rights, you can maximize the commercial value of your products in the Korean market.
Learn more about Designs Registration and Protection in Korea
Benefits of Protecting Your Product's Visual Expression with a Design Registration in Korea
Registering your design in Korea offers numerous advantages for foreign companies entering the market. Here are the key benefits of design registration:
Market Positioning: By registering your design, you strengthen your market position in Korea. It enables you to prevent others from using your design, establishing your uniqueness and exclusivity. This sets your products apart from competitors and enhances your brand image.
Customer Confidence: A registered design adds value for both your company and customers. When customers see your registered design, they can trust that the origin and quality of the products are guaranteed. Over time, customers may develop a preference for your products, associating the design's quality with your brand. This builds customer loyalty and can drive repeat purchases.
Legal Protection: A strong design registration provides legal protection in Korea. It not only safeguards against identical designs but also against those that give the same overall impression. This broader protection ensures that competitors cannot create similar designs that confuse consumers. In case of infringement, you have the right to take legal action and seek financial damages from the infringing party.
Competitive Advantage: Design registration gives you a competitive edge in the Korean market. It prevents competitors from copying or imitating your design, preserving your unique selling point. This exclusivity can result in increased market share, higher sales, and improved profitability.
Brand Recognition and Value: A registered design contributes to brand recognition and enhances the value of your company's intellectual property portfolio. It demonstrates your commitment to innovation, design excellence, and protecting your creative assets. This can attract potential investors, partners, and licensees who value strong IP protection.
Licensing and Royalty Opportunities: A registered design opens up opportunities for licensing agreements. You can grant others the right to use your design in exchange for licensing fees or royalties. This can be a lucrative revenue stream and allow your design to reach a wider market without compromising your exclusivity.
By securing design registration in Korea, foreign companies can position themselves for success in the market. It establishes legal protection, enhances brand value, builds customer trust, and provides a competitive advantage, all of which contribute to long-term business growth and profitability.
