Korea has adopted the "first to file" rule and the "similar design" system for the protection of designs. Under these systems, rights for designs are obtained only when an applicant who wishes to register a design has filed the first application with the KIPO.
Korea is a member of the Paris Convention. Therefore, priority can be claimed for a design application based on the first application filed in another treaty member country.
Under Korean practice, it takes about one year from the filing date before a first office action is received. If the Examiner finds no reason to reject the application, they will issue a Notice of Allowance. The applicant must then pay the required registration fee to the KIPO within three months after receiving this document. The KIPO will issue a Certificate of Design Registration and then publish the design in the Official Gazette. The term of design rights is fifteen years from the registration date.
The applicant or the owner of a design can also file a similar design application and obtain a similar design registration for a design that is similar to their principal design. The rights of a similar design expire on the expiration date of their principal design.
1. First-to-File rule
Where two or more design applications relating to the same or a similar design are filed on different dates, only the first applicant may obtain a design registration therefor.
2. Requirements for filing design application
In order to file a design application in Korea, the following information and documents are required:
Name(s), address(es) and nationality of the applicant and the inventor(s);
Drawings or photos of six directional views and a perspective view of the article;
Original executed Power of Attorney signed by the applicant, or a representative if the applicant is a legal entity; and
A certified copy of the priority document, (if claimed.)
3. Similar Design Applications
A person who has a design right, or files an application for the registration of a design, is entitled to file an application for the registration of a design which is similar to his registered design or pending application, as a similar design. A similar design application is subject to non-substantive examination, or substantive examination, depending on the articles for which the design application is filed. The rights granted under a similar design registration are the same as those of a basic design registration. However, the term of the similar design registration is subject to that of the basic design registration on which it is based. Accordingly, the similar design registration will automatically expire on the date that the basic design registration expires.
4. Laying Open of Applications
An applicant of a design application for a substantive examination may request the KIPO to lay open the application to the public. After the application is laid open, the applicant may send a written warning to a person who has commercially or industrially worked the filed design, or a design similar thereto, indicating that it is a design for which an application for substantive examination has been filed. In addition, the applicant has a right to demand compensation from the person who infringes the design after the application is granted registration.
5. Information Briefs
Any person may file an information brief with the KIPO, together with evidence to the effect that the design concerned should not be registered. The examiner will refer to the information brief in determining the registrability of the design, and reject its registration during the examination stage if he finds the information persuasive. An information brief can be submitted regardless of whether the design application is laid open, or whether the design application is subject to substantive examination.
6. Secret Designs
An applicant of a design application may request that the design be kept secret for a period not exceeding three years from the date of registration. The period may be reduced or extended within three years from the date of registration upon request.
7. Exception to Loss of Novelty
Although a design was publicly known or worked prior to the filing of a design application, its novelty will be recognized if an application for the design is filed within six months from the publication of the design.
1. Applications for Non-Substantive Examination
A design application for articles with fashionable short commercial life cycles, i.e., clothing, bedding, office paper products, package, packing containers, textiles, knit fabric, synthetic resin fabric, etc., qualifies for non-substantive examination. A design application for non-substantive examination may be filed for twenty designs or less. A design application for non-substantive examination is granted registration if it meets the formal requirements for filing a design application and conforms to public order. Accordingly, it generally takes approximately four (4) months to obtain registration.
2. Applications for substantive Examination
Designs that do not qualify for non-substantive examination are subject to a substantive examination. A design application for a substantive examination is granted registration only after the Examiner's substantive examination is completed and no grounds for rejection exists.
3. Notification of Reasons for Rejection
A design cannot be registered if it could easily have been created by a person who is ordinarily skilled in the relevant industry to which the design pertains, in light of the shape, pattern and color, or combinations thereof, widely known in Korea.
If the examiner of the KIPO determines that there is a ground for rejection, he will issue a preliminary rejection of the application. In order to overcome the rejection, the applicant may file an Argument and/or Amendment by the designed due date, which can be extended on a monthly basis. It generally takes approximately ten (10) months to obtain registration
4. Decision of Rejection of Design Registration
The examiner shall make a decision that a design registration application is to be rejected when the applicant could not overcome the reasons for rejection.
5. Decision of Registration
Where no grounds for rejecting a design registration application are established, the examiner shall make a decision that the design is to be registered.
6. Payment of Registration fee
When a design application is granted registration, the annuities for the first to three years are paid in a lump sum. Accordingly, once a design application is registered, it will be effective for three years from the registration date. Thereafter, the term of a design registration will be extended upon payment of the annuity for the relevant year. A six-month grace period for payment of the annuity is allowed. However, the official fees will be twice as much if paid during the grace period.
If the registrant is unable to pay the annuities within the six-month grace period due to unavoidable reasons, the registrant is permitted to pay the annuities within 14 days from the date that the reason(s) for the unavoidable delay is resolved, together with documents evidencing the unavoidable reasons. However, if six months have passed from the six-month grace period, this provision shall not be applicable.
7. Post-Registration Opposition
Any person may file an opposition against an unexamined design within three (3) months from the registration date of the design application. An opposition to a multiple design application may be filed for each design. If the design registration of an unexamined design is cancelled in an opposition, the design right shall be deemed to have never existed.
1. Injunction
The owner of a design right or an exclusive licensee may request a person who has infringed or is likely to infringe his design right or his right exclusive license to cease or desist from the infringement.
2. Damages
Where the owner of a design right or an exclusive licensee claims, from a person who has intentionally or negligently infringed the design right or exclusive license, compensation for damage caused to him by the infringement.
3. Restoration of Business Reputation of Owner of Design Right
Upon request of the owner of a design right or the exclusive licensee, a court may order a person who has injured the business reputation of the owner of the design right or the exclusive licensee by intentional or negligent infringement of the design right or the exclusive license to take necessary measures to recover the business reputation of the owner of the design right or the exclusive licensee.
4. Criminal Penalties
Any person who infringes a design right or an exclusive license shall be subject to imprisonment for not more than seven years or by a fine not exceeding one hundred million Won.
Revisions to the Korean Design Act have been passed to take effect on July 1, 2001.
1. Part of an Article
The revised Design Act has expanded the scope of the definition of a "design" by amending the definition to read "The term 'design' herein means a shape, pattern or color or their combination of an article (including parts of the article), which produces an aesthetic visual impression " (Article 2, Subparagraph 1 of the revised Design Act). Accordingly, a design of a part of an article ("partial design") can be registered in Korea as of July 1, 2001. Consequently, the registrant of a partial design registration will be able to claim design infringement against a third party's unauthorized use and incorporation of the partial design. Furthermore, an applicant for a design registration will also be able to file an application for both a partial design, as well as an entire design. However, the application for a partial design application is required to be filed prior to, or simultaneously with, the filing of the application for an entire design.
2. Set of Articles
Under the current Design Act, articles that are customarily or ordinarily on sale, or in use as a set may be applied for registration in one application if the articles have uniformity as a whole set (Article 12, Paragraph 1 of the present Design Act).
However, pursuant to the revision, irrespective of whether two or more articles are customarily or ordinarily on sale, or in use, and whether their components are identical to each other, those articles that are simultaneously in use as a set and have uniformity as a whole set, can be applied for in one application. Accordingly, when such a set of articles under a design satisfies the requirements for a design registration as a whole, the design of the set of articles is granted registration even though the design of each of their components is not independently eligible for registration. Thus, a design for a kitchen system, an audio system or a computer system may be registered by filing an application.
3. Exclusion of Functionality
The new law prescribes that the design protection does not extend to the features of shape or configuration dictated solely by the function which the article has to perform.
4. Enforcing the Protection of the Rightful Owner
Certain revisions to the Korean Patent Law have been adopted in the revised Design Act to enforce the protection of the rightful owner of a design. The provisions that have been adopted pertain to "Redemption of design right extinguished due to failure to pay registration fee" (Article 33-2 of the revised Design Act); "Simplification of estimating the amount of damages" (Article 64, Paragraph 1 of the revised Design Act); and "Strengthening of the penalty provisions" (Article 82 of the revised Design Act). Article 33-2 of the revised Design Act will be applied to designs that have been applied for prior to July 1, 2001 because of the favorable effect it will have on applicants.
5. Enhanced Protection of Registered Design Owner
The same revisions have been made as in the Patent Act in relation to assumption damages, criminal penalty against infringement of registered design. That is to say, the new law raises the criminal penalty from five (5) years to seven (7) years imprisonment, and the criminal fine from 50 million Korean won to 100 million Korean won. In a damages suit based on design infringement, the design owner is required to show the amount of damage caused by the infringing activities of the defendant. The new law ameliorates the design owner's burden of showing damages by allowing the calculation of damages based on the number of unit products sold by the infringer and the design owner's cost accounting.
