07/01/2001 : Revised Industrial Design
Law
DESIGN LAW
Law No. 951, Promulgated on Dec. 31, 1961
As Last
Amended by Law No. 5354, Aug. 22, 1997
CHAPTER I
GENERAL
PROVISIONS
Article 1 【Purpose】
The
purpose of this Law shall be to encourage the creation of
designs by ensuring their protection and utilization, so as to
contribute to the development of industry.
Article 2 【Definitions】
The
definitions of the terms used in this Law shall be as
follows:
(ⅰ) "design" means the shape, pattern, or color,
or a combination of these in an article (including part of an
article, hereinafter the same except where Article 12 applies)
which produces an aesthetic impression in the sense of
sight;
(ⅱ) "registered design" means a design for which a
design registration has been granted;
(ⅲ) "design
registration" means registration of examined or unexamined
designs;
(ⅳ) "examined design registration" means
registration of a design that subject to examination as to
whether it is completely qualified for registration;
(ⅴ)
"unexamined design registration" means registration of a
design that is subject to examination as to whether the
application for a design registration satisfies the
requirements for registration under this Law, with the
exception of the requirements that are not applied under
Article 26 (2).
(ⅵ) "working" of a design means any act of
manufacturing, using, assigning, leasing, importing, or
offering for assigning or leasing (including the displaying
for the purpose of assignment or lease) the article to which
the design has been applied.
Article 3 【Persons Entitled to Obtain Design
Registration】
(1) Any
person who creates a design or his successor shall be entitled
to obtain a design registration therefor in accordance with
this Law; however, employees of the Korean Intellectual
Property Office and the Intellectual Property Tribunal shall
not obtain design registration during their employment at the
Office except in the case of inheritance or
bequest.
(2) If two
or more persons jointly create a design, the right to obtain a
design registration shall be jointly owned.
Article 4 【Mutatis Mutandis Application of
Provisions of the Patent Law】
The
provisions of Articles 3 to 26 and 28 to 28-5 of the Patent
Law shall apply mutatis mutandis to designs. In such cases,
"Article 132ter" in Article 6, 11 (1)ⅳ, 15(1) and 17 of the
same Law shall read "Article 67bis or 67ter".
CHAPTER II
REGISTRABILITY OF DESIGNS AND
APPLICATIONS FOR REGISTRATION
Article 5 【Registrability of
Designs】
(1)
Designs that are industrially applicable may be registered
unless they fall under any of the following
subparagraphs:
(ⅰ) the design was publicly known or
publicly worked in the Republic of Korea or in a foreign
country prior to the filing of the design application;
(ⅱ)
the design was described in a publication distributed in the
Republic of Korea or in a foreign country prior to the filing
of the design application; or
(ⅲ) the design is similar to
a design referred to in subparagraph (i) or (ii).
(2) Where
a design could easily have been created by a person having
ordinary skill in the art to which the design pertains, on the
basis of a shape, pattern or color or a combination thereof
widely known in the Republic of Korea (other than a design
referred to in any of the subparagraphs of paragraph (1))
prior to the filing of the design application, a design
registration shall not be granted for such a design
notwithstanding paragraph (1).
(3)
Notwithstanding paragraph (1), a design registration shall not
be granted where a design for which an application for
registration has been filed is identical or similar to a part
of a design indicated in a specification, represented in a
drawing, photograph or sample attached to another application
for design registration that was filed before and laid open or
published after the filing date of the aforesaid design
application.
Article 6 【Unregistrable Designs】
Notwithstanding Article 5, the following designs shall
not be registrable:
(ⅰ) designs which are identical or
similar to the national flag, national emblem, 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;
(ⅱ) designs liable to contravene public
order or morality; and
(ⅲ) designs liable to give rise to
confusion with respect to articles connected with another
person's business.
(ⅳ) designs consisting solely of a shape
that is essential to secure the functions of the
article.
Article 7 【Similar Designs】
(1) The
owner of a design right or an applicant for a design
registration is entitled to obtain a design registration which
is similar only to his registered design or design for which
an application for registration has been filed (hereinafter
referred to as the "principal design") as a similar design
(hereinafter referred to as a "similar design").
(2)
Paragraph (1) shall not apply where a design that is similar
only to a similar design registered or applied for
registration under paragraph (1).
Article 8 【Exception to Loss of
Novelty】
(1) Where
a design owned by a person entitled to a design registration
falls within one of the subparagraphs of Article 5(1), it
shall be deemed that Article 5(1)(i) or (ii) shall not apply
to said design or a similar design application filed by said
design owner for a period of six months from the date
prescribed in the applicable subparagraph under Article
5(1).
(2) A
person who seeks to enjoy the provision under paragraph (1)
shall, at the time of filing the application for a design
registration, submit an application for a design registration
specifying the purport of said intention to the Commissioner
of the Korean Intellectual Property Office, and submit
documents proving the relevant facts within thirty days from
the date of application for design registration; however, this
shall not apply where the designs concerned fall under each
subparagraph of Article 5(1) against his will.
Article 9 【Applications for
Registration】
(1) Any
person desiring to obtain a design registration shall file an
application for an examined design registration or an
application for an unexamined design registration with the
Commissioner of the Korean Intellectual Property Office,
stating the following:
(ⅰ) the name and the domicile of the
applicant for registration of a design (if a legal entity, the
name and the place of business);
(ⅱ) the name and the
domicile, or place of business, of the agent, if any (if a
patent corporation, its title, and office location, and the
name of an appointed patent attorney);
(ⅲ) Deleted;
(ⅳ)
the article which is the object of the design;
(ⅳbis)
whether the application is an application for an independent
design registration, and whether the application is for a
similar design registration;
(ⅴ) the registration or
application number of the principal design (only where the
applicant is applying for a design registration as a similar
design under Article 7(1));
(ⅵ) the name and the domicile
of the creator of the design; and
(ⅶ) matters prescribed in
Article 23(3) (only when claiming a priority
right).
<Proviso Deleted>
(2) An
application for an examined design registration or the
application for an unexamined design registration under
paragraph (1) shall be accompanied by drawings of each design
and indicate the following:
(ⅰ) the article that is the
object of the design;
(ⅱ) an explanation of the design and
the essentials of the creation;
(ⅲ) serialized numbering of
the drawings of the design (only if the application is for a
multiple design registration under Article 11(2))
(3) An
applicant for a design registration may submit a photograph,
or sample of the design instead of drawings as referred to in
paragraph (2).
(4) A
person desiring to file an application for an unexamined
design registration shall indicate in the application for an
unexamined design registration whether an application for
multiple design registration is to be made under Article
11(2), and the number of designs in addition to matters
falling under each subparagraph of paragraph (1).
(5) A
person desiring to file an application for multiple design
registration under Article 11(2) shall file an application for
an unexamined design registration indicating the particulars
prescribed under paragraph (1)(i), (ii) and each of the
following subparagraphs:
(ⅰ) serialized numbering of the
designs; and
(ⅱ) the particulars prescribed under
subparagraphs (iv) to (vii) of paragraph (1).
(6)
Designs qualifying for an unexamined design registration shall
be limited to goods designated by the Ordinance of the
Ministry of Commerce, Industry and Energy among goods
classified by Article 11(2). In the case of the designated
goods, an application may be made only for an unexamined
design registration.
(7)
Matters other than those as prescribed in paragraphs (1) to
(6), which are necessary for the application for design
registration, shall be determined by the Ordinance of the
Ministry of Commerce, Industry and Energy.
Article 10 【Joint Application】
Where the
right to obtain a design registration is jointly owned under
Article 3(2), all joint owners shall jointly file an
application for the registration of the design.
Article 11 【Scope of One
Application】
(1) An
application for an examined design registration shall relate
to one design only.
(2) Any
person desiring to file an application for a design
registration may do so only with respect to the classes of
articles prescribed by the Ordinance of the Ministry of
Commerce, Industry and Energy.
Article 11bis 【Application for Multiple Design
Registration】
(1) An
application for an unexamined design registration may be made
for twenty designs or less (hereinafter referred to as an
"application for multiple design registration"). In such
cases, each design shall be represented separately.
(2) The
scope of designs qualifying for application for multiple
design registration shall be designs applied to goods under
the same classification as the classification of goods
prescribed by the Ordinance of the Ministry of Commerce,
Industry and Energy.
(3) A
person desiring to file an application for multiple design
registration may file an application for a similar design
registration falling within the category of a principal
design, together with the principal design.
(4) Where
a person files an application for multiple design registration
of designs similar to his registered design or a design for
which a design registration is applied, he may file an
application for a multiple design registration only with
respect to similar designs belonging to one principal design,
notwithstanding the provisions of paragraph (3).
Article 12 【Design of a Set of
Articles】
(1) Where
a design relating to two or more articles that are used
together as a set of articles, a design registration shall be
granted for the application as one design, provided that the
set of articles constitutes a coordinated whole.
(2) Sets
of articles referred to in paragraph (1) shall be governed by
the Ordinance of the Ministry of Commerce, Industry and
Energy.
(3)
Deleted
Article 13 【Secret Designs】
(1) An
applicant for a design registration may request that the
design be kept secret for a period which shall be designated
in the request and which shall not exceed three years from the
date on which the establishment of the design right was
registered. For a design for which an application for multiple
design registration has been made, the request shall be made
for all designs for which a design registration is
applied.
(2) A
person desiring to make a request under paragraph (1) shall,
at the time of filing of the application for a design
registration, state the designated period in the application
and submit it to the Commissioner of the Korean Intellectual
Property Office.
(3) The
applicant for a design registration, or the owner of a design
right, may reduce or extend the period designated by him under
paragraph (1) by a request. Where he extends that period, it
shall not exceed three years from the date of registration of
the establishment of the design right.
(4) In any
of the following cases, the Commissioner of the Korean
Intellectual Property Office shall allow persons to have
access to a design kept secret under paragraph (1):
(ⅰ)
where the request is made by a person who has obtained the
consent of the owner of the design right;
(ⅱ) where the
request is made by a party or an intervener in examination,
opposition to registration of an unexamined design, trial,
retrial or litigation proceedings relating to a design
identical with or similar to the design kept secret;
(ⅲ)
where the request is made by a person who has clearly stated
that he was warned of infringement of the registered design;
or
(ⅳ) where the request is made by a court or the
Intellectual Property Tribunal.
(5) In
cases concerning a request for laying-open of application
under Article 23(2), the request pursuant to paragraph (1)
shall be deemed to have been withdrawn.
Article 14 【Application for the Registration of
a Design Filed by an Unentitled Person; Protection of Lawful
Holder of Right】
If a
design registration cannot be granted on the ground that an
application has been filed by a person who has not succeeded
to the right to obtain a design registration or who has laid a
false claim to such right (hereinafter referred to as "the
unentitled person"), a subsequent application filed by the
lawful holder of the right shall be deemed to have been filed
on the date of the application previously filed by the
unentitled person. However, this provision shall not apply,
where the subsequent application is filed by the lawful holder
of the right more than thirty days after the application by
the unentitled person was rejected.
Article 15 【Design Registration Granted to
Unentitled Person; Protection of Lawful Holder of
Right】
If a
design registration is revoked or invalidated by a trial
decision for lack of entitlement to obtain a design
registration under the provisions of Article 3(1), a
subsequent application for a design registration filed by the
lawful holder of the right shall be deemed to have been filed
on the date of filing of the application which led to the
grant of the design registration that was revoked or
invalidated; however, this provision shall not apply if the
subsequent application is filed more than thirty days after
the decision to revoke or to invalidate it became final and
conclusive.
Article 16 【First-to-File Rule】
(1) Where
two or more applications for a design registration relating to
the same or a similar design are filed on different dates,
only the applicant filing the application having the earlier
filing date may obtain a design registration for the
design.
(2) Where
two or more applications for a design registration relating to
the same or a similar design are filed on the same date, only
the person agreed upon by all applicants after consultation
may obtain a design registration for the design and, if no
agreement is reached or no consultation is possible, none of
the applicants shall obtain a design registration
therefor.
(3) Where
an application for a design registration is withdrawn or
invalidated, such application shall, for the purposes of
paragraphs (1) and (2), be deemed to have never been
filed.
(4) An
application for a design registration filed by a person who is
not the creator of the design, nor the successor in title to
the right to obtain design registration shall, for the
purposes of paragraphs (1) and (2), be deemed never to have
been filed.
(5) The
Commissioner of the Korean Intellectual Property Office shall,
in the case provided for in paragraph (2), order the
applicants to notify him of the results of the consultation
within a designated period. If such a report is not submitted
within the designated period, the applicants shall be deemed
not to have concluded to an agreement within the meaning of
paragraph (2).
Article 17 【Amendment of
Procedure】
The
Commissioner of the Korean Intellectual Property Office or the
President of the Intellectual Property Tribunal may order
correction of a procedure relating to a design within a
designated period:
(ⅰ) where the requirements of Article
3(1) or (6) of the Patent Law applied under Article 4 of this
Law have not been complied with;
(ⅱ) where the procedure
has not complied with the formalities specified in this Law or
a Presidential Decree; or
(ⅲ) where the fees required in
accordance with Article 34 have not been paid.
Article 18 【Amendment to Application and Change
of Gist】
(1) An
applicant for a design registration may amend a specification
or a drawing attached to an application; provided that, the
gist of the specification and the drawing attached to the
original application has not been changed before transmittal
of the examiner's first decision to either grant or refuse a
design registration under the provisions of Article 28
(hereinafter referred to as "decision to grant or refuse a
design registration"). However, if a request for a trial
against the examiner's decision to refuse a design
registration is filed, the applicant may amend the
specification or the drawing within thirty days from the
filing date of such request.
(2) Where
an amendment under paragraph (1) is recognized as a change of
gist of the specification or the drawing originally attached
to the application after the date on which the establishment
of the design right was registered, the application for
registration of such design shall be deemed to have been filed
at the date of filing of such amendment.
Article 18bis 【Rejection of
Amendment】
(1) Where
an amendment to a specification or drawing attached to an
application under the provisions of Article 18 changes the
gist thereof, the examiner shall reject the amendment by
decision.
(2) Where
a decision to reject an amendment under paragraph (1) has been
made, the examiner's decision to grant or refuse a design
registration for the concerned application for design
registration shall not be rendered until a period of thirty
days elapses from the date of transmittal of the certified
copy of said decision.
(3) Where
an applicant has requested a trial under Article 67bis against
a decision to reject an amendment under paragraph (1), the
examiner shall suspend examination of the application for
design registration until the trial decision has become final
and conclusive.
(4) The
decision to reject an amendment under paragraph (1) shall be
made in writing and shall state the reasons
therefor.
Article 19 【Division of Applications for the
Registration of Designs】
(1) A
person falling under any of the following subparagraphs may
divide a part of his application for a design registration
into one or more new applications.
(ⅰ) a person who has
made an application for registration of two or more designs in
contravention of Article 11;
(ⅱ) a person who has made an
application for multiple design registration; or
(ⅲ)
Deleted.
(2) Such
divisional applications shall be deemed to have been filed at
the time of filing of the original application. However, this
provision shall not apply for the purposes of Article 8(2) or
Article 23(3) and (4).
(3) A
division of an application for a design registration under
paragraph (1) may be made within the time limit provided for
amendment under Article 18(1).
(4)
Deleted.
Article 20 【Conversion of
Application】
(1) An
applicant may convert his application for a similar design
registration into an application for an independent design
registration. In such a case, the application for an
independent design registration shall be deemed to have been
filed at the time of filing of the application for a similar
design registration. However, this provision shall not apply
for the purposes of Article 8(2) or Article 23(3) and
(4).
(2) An
applicant may convert his application for an independent
design registration into an application for a similar design
registration. In such a case, the application for a similar
design registration shall be deemed to have been filed at the
time of filing of the application for an independent design
registration. However, this provision shall not apply for the
purposes of Article 8(2) or Article 23(3) and (4).
(3) No
conversion of an application under Paragraphs (1) and (2) may
be made after an examiner's decision to grant or refuse a
design registration or a trial decision on the initial
application for the design or the similar design registration
becomes final and conclusive.
(4)
Deleted.
Article 20bis 【Conversion of Application for
Registration of Unexamined Designs, etc.】
(1) Where
a person makes an application for an unexamined design
registration in respect of articles subject to an examined
design registration, or vice versa, in contravention of
Article 9(6), he may convert the application for a design
registration into an application for an examined design
registration or an unexamined design registration.
(2) An
application for a design registration converted by paragraph
(1) shall be deemed to have been made when an initial
application for a design registration is made. However, this
shall not apply for the purposes of Article 8(2) or Article
23(3) and (4).
(3) A
conversion of an application under paragraph (1) may not be
made after decision to grant or refuse a design registration
or a trial decision on the initial application for a design
registration has been made.
(4)
Deleted.
Article 21 Deleted
Article 22 Deleted
Article 23 【Priority Claim under
Treaty】
(1) When a
national of a member country of a treaty, which recognizes
under the treaty a right of priority for an application filed
by a national of the Republic of Korea, claims a right of
priority for an application for a design registration in the
Republic of Korea on the basis of the prior application for
the same design filed in his country or in one of said
countries, the filing date of the prior application in the
foreign country shall be deemed to be the filing date in the
Republic of Korea for the purposes of Article 5 and 16. Where
a national of the Republic of Korea has filed an application
for a design registration in a country which recognizes, under
a treaty, a right of priority for an application for a design
registration filed by nationals of the Republic of Korea, and
claims the right of priority for the application for a design
registration in the Republic of Korea on the basis of the
prior application for the same design in said country, this
provision shall also apply.
(2) A
person intending to claim a right of priority shall file an
application for a design registration within six months from
the filing date of the prior application serving as the basis
for claiming the right of priority.
(3) A
person intending to claim a right of priority in accordance
with paragraph (1) shall, at the time of filing the
application for a design registration, specify such claim, the
name of the country in which the prior application was filed,
and the filing date of such application, in the application
for a design registration.
(4) A
person who has claimed a right of priority in accordance with
paragraph (3) shall submit a written statement setting forth
the filing date of the application, certified by the
government of the country where the prior application was
filed, and a certified copy of the drawing of the design, to
the Commissioner of the Korean Intellectual Property Office
within three months from the filing date of the application
for a design registration.
(5) Where
a person who has claimed a right of priority in accordance
with paragraph (3) fails to submit the document prescribed in
paragraph (4) within the required time limit, the claim to the
right of priority shall lose its effect.
Article 23bis 【Laying Open of
Application】
(1) An
applicant for an examined design registration may request the
laying open of his/her application by the Ordinance of the
Ministry of Commerce, Industry and Energy.
(2) Where
the request for the laying open of an application is made
under paragraph (1), the Commissioner of the Korean
Intellectual Property Office shall lay open the design
application in the Design Gazette in accordance with Article
78. However, the Commissioner of the Korean Intellectual
Property Office may not lay open the application in cases
where the design falls under any of the following
subparagraphs:
(ⅰ) is liable to contravene public order or
morality; or
(ⅱ) should be kept secret under Article 41 of
the Patent Law, applied mutatis mutandis under Article 24 of
the Design Law.
(3) The
request for the laying open of an application prescribed in
paragraph (1) shall not be available after initial certified
copies of the decision to grant or refuse a design
registration on the application for the design registration
have been transmitted.
(4)
Deleted.
Article 23ter 【Effects of Laying Open
Applications】
(1) After
an application is laid open, the applicant may give warning to
any person who has commercially or industrially worked the
filed design or a design similar thereto, in writing,
indicating that an application for a design registration has
been filed.
(2) The
applicant may demand a person, who has been warned under the
provisions of paragraph (1), or worked the filed design or a
design similar thereto knowing that the design has been laid
open, to pay compensation in an amount equivalent to what he
would normally receive for the working of the design
registered or a design similar thereto from the time of
warning or the time when he/she became aware of the fact that
the design application had been filed to the time of
registration of the filed design.
(3) The
right to demand compensation under paragraph (2) may be
exercised only after registration of the filed
application.
(4) The
exercise of the right to demand compensation under paragraph
(2) shall not preclude the exercise of the design
right.
(5)
Articles 63 and 67 of the Design Law and Articles 760 and 766
of the Civil Code shall apply mutatis mutandis to the exercise
of the right to demand compensation under paragraph (1). In
such case, "the time when the damaged party or his legal
representative became aware of such damage and of the identity
of the person causing it" in Article 766 of the Civil Code
shall read "the date of registration of the design
right".
(6) Where
an application for a design registration is abandoned,
invalidated or withdrawn after the laying open of the
application, a decision to refuse the design registration, a
decision to revoke a design registration under Article 29-5
(3), or a trial decision to invalidate a design registration
under Article 68 (except where Article 68 (1)(iv) applies) has
become final and conclusive, the right under paragraph (2)
shall be deemed to have never existed.
Article 23quater 【Transfer, etc. of Right to
Obtain Registration of Design】
(1) The
right to obtain registration of a design may be transferable.
However, the right to obtain a principal design and the right
to obtain a similar design shall be transferred
together.
(2) The
right to obtain registration of a design may not be
pledged.
(3) Where
the ownership of the right to obtain registration of a design
is held jointly by two or more persons, none of the joint
owners may assign his/her share without obtaining consent from
all the other joint owners.
Article 23quinquies 【Furnishing of
information】
Any person
may furnish the Commissioner of the Korean Intellectual
Property Office with information about a design for which an
application for design registration has been filed together
with evidence to the effect that the concerned design is
unregistrable under any of the subparagraphs of Article 26
(1).
Article 24 【Mutatis Mutandis Application of
Provisions of the Patent Law】
The
provisions of Articles 38 to 41 of the Patent Law shall apply
mutatis mutandis to the registrability of designs and to
applications for a design registration.
CHAPTER Ⅲ
EXAMINATION
Article 25 【Examination by
Examiner】
(1) The
Commissioner of the Korean Intellectual Property Office shall
have applications for a design registration and oppositions to
an unexamined design registration examined by an
examiner.
(2) The
qualifications for the examiners shall be prescribed by
Presidential Decree.
Article 26 【Decision to Refuse Design
Registration】
The
examiner shall make a decision to refuse a design registration
where it falls under any of the following subparagraphs
(hereinafter referred to as "reasons for refusal"):
(ⅰ)
Where the design in the application for a design registration
is not registrable in accordance with Articles 5 to 7, 9(6),
10 to 12, 16(1) and (2) of this Law or Article 25 of the
Patent Law as applied under Article 4 of this Law;
(ⅱ)
Deleted.
(ⅲ) Where a person shall not be entitled to obtain
a design registration under the provision of Article 3 (1), or
where the design in the application for a design registration
is not registrable under the proviso of Article 3 (1);
(ⅳ)
Where an application for a design registration is in violation
of the provisions of a treaty; or
(ⅴ) Where an application
for a similar unexamined design registration falls under any
of the following subparagraphs:
(a) where a design which is
registered as a similar design or a design for which a similar
design registration is applied, is indicated as a principal
design;
(b) where the term of the design right of a
principal design has expired; or
(c) where an application
for a principle unexamined design registration has been
invalidated, withdrawn or abandoned, or where a decision to
refuse a design registration becomes final and
conclusive.
(d) where an applicant for a similar unexamined
design registration is not identical with the owner of a
design right relating to a principle design or an applicant
for a principle design registration.
(e) where a design for
which a similar unexamined design registration is applied is
not similar to a principle design.
(2)
Notwithstanding paragraph (1), Articles 5, 7, 11(1), 16(1) and
(2) shall not apply to an application for an unexamined design
registration (except where the design is industrially
applicable under provisions other than those prescribed in the
subparagraphs of Article 5(1)).
Article 27 【Notification of Reasons for
Refusal】
(1) When
the examiner intends to make a decision to refuse a design
registration under Article 26, he shall notify the reason for
refusal (referring to reasons falling under any of the
subparagraphs of Article 26(1), hereinafter referred to as
"reason for refusal") to the applicant for design
registration, and give him an opportunity to submit a written
opinion within a designated time limit.
(2) Where
there are reasons for refusal with respect to some of the
designs in an application for multiple design registration,
the serial number of the designs concerned, the article that
is the object of the design and the reasons for refusal shall
be indicated.
Article 28 【Decision to Grant a Design
Registration】
Where an
examiner finds no reason for refusing an application for the
registration of a design, he shall render a decision to grant
a design registration.
Article 29 【Method of Decision to Grant or
Refuse a Design Registration】
(1) The
examiner's decision to grant or refuse a design registration
shall be in writing and shall state the reasons
therefor.
(2) When
the examiner's decision to grant or refuse a design
registration has been made, the Commissioner of the Korean
Intellectual Property Office shall transmit a certified copy
of the decision to the applicant for the design
registration.
Article 29bis 【Opposition to the Registration of
an Unexamined Design】
(1) From
the date of registration of establishment of a design right
under an application for an unexamined design registration to
three months after the date of publication of an unexamined
design registration, any person may file an opposition to the
grant of the design right with the Commissioner of the Korean
Intellectual Property Office based on the ground that the
registration falls under any of the following subparagraphs.
For registration of designs under an application for multiple
design registration, an opposition may be filed for each
design.
(ⅰ) where the design in the application for a
design registration is in violation of Articles 5, 6, 7(1),
10, 16(1) and (2) of this Law or Article 25 of the Patent Law
as applied under Article 4 of this Law;
(ⅱ) where a person
shall not be entitled to obtain a design registration under
the provision of Article 3 (1) or the design in the
application for design registration is not registrable under
the proviso of Article 3 (1); or
(ⅲ) where an application
for a design registration is in violation of the provisions of
a treaty.
(2) A
person filing an opposition to an unexamined design
registration shall submit an application for opposition to an
unexamined design registration, to the Commissioner of the
Korean Intellectual Property Office which shall state the
following, together with supporting evidence:
(ⅰ) the name
and address of the person filing the opposition against the
unexamined design registration (if a legal entity, the title,
place of business);
(ⅰbis) the name and the domicile, or
place of business, of the agent, if any (if a patent
corporation, its title, office location, and the name of the
appointed patent attorney);
(ⅱ) the indication of the
registered design(s) subject to the opposition to an
unexamined design registration;
(ⅲ) the purpose of the
opposition to an unexamined design registration; and
(ⅳ)
the grounds for the opposition to an unexamined design
registration and indication of supporting
evidences.
(3) When
an opposition to an unexamined design registration is filed,
the presiding trial examiner appointed under Article
29quater(3) shall transmit a certified copy of the opposition
to an unexamined design registration to the owner of the
registered design right subject to the opposition and give him
an opportunity to submit a written reply within a designated
time limit.
(4) The
provision of Article 68(6) shall apply mutatis mutandis to the
filing of an opposition to an unexamined design registration
under paragraph (1).
Article 29ter 【Amendment to Grounds for
Opposition to Unexamined Design Registration,
etc.】
A person
filing an opposition to an unexamined design registration may
amend the grounds or evidence indicated on the written
opposition to an unexamined design registration within thirty
days from the date of filing of the said
opposition.
Article 29quater 【Collegial Body for Examination
and Decision, etc.】
(1) A
collegial body consisting of three examiners shall examine and
decide an opposition to an unexamined design
registration.
(2) The
Commissioner of the Korean Intellectual Property Office shall
designate examiners constituting a collegial body for each
opposition to an unexamined design registration.
(3) The
Commissioner of the Korean Intellectual Property Office shall
appoint one of the examiners designated by paragraph (2) as a
presiding examiner.
(4) The
provisions of Articles 144(2), 145(2) and 146 (2), (3) of the
Patent Law shall apply mutatis mutandis to the collegial body
of examiners and the presiding examiner.
Article 29quinquies 【Decision on Opposition to
Unexamined Designs Registration】
(1) The
examiner shall make a decision on the opposition to an
unexamined design registration after the time limits provided
under Articles 29bis(3) and 29ter have lapsed.
(2)
Notwithstanding Article 29bis(3), where a person filing a
opposition to an unexamined design registration fails to
submit the grounds and evidence thereon, the presiding trial
examiner may reject an opposition to an unexamined design
registration by decision after the time limits provided under
the provisions of Article 29ter have lapsed.
(3) Where
it is deemed that an opposition to an unexamined design
registration has merit, the collegial body of examiners shall
make a decision to revoke the registered design (hereinafter
referred to as a "decision to revoke a design
registration".).
(4) Where
a decision to revoke a design registration becomes final and
conclusive, the design right shall be deemed never to have
existed.
(5) Where
it is deemed that the opposition to an unexamined design
registration has no merit, the collegial body of examiners
shall make a decision to maintain the registered design
(hereinafter referred to as a "decision to maintain a design
registration").
(6) No
appeal shall be made against a decision to refuse and/or
maintain a design registration to an opposition to an
unexamined design registration.
Article 30 【Mutatis Mutandis Application of
Provisions of the Patent Law】
(1) The
provisions of Articles 58, 58bis, 61, 68 and 78 of the Patent
Law shall apply mutatis mutandis to examination of
applications for a design registration.
(2) The
provisions of Articles 72, 73, 75, 76, 78, 141(1) to (3), 142,
148(ⅰ) to (ⅴ), (ⅶ), 154(8), 157, 165(3) to (6), and 166 of the
Patent Law shall apply mutatis mutandis to examination or
decision of the opposition to an unexamined design
registration.
CHAPTER
IV
REGISTRATION FEES AND REGISTRATION OF
DESIGNS
Article 31 【Design Registration
Fees】
(1) A
person desiring to register the establishment of a design
right, or the owner of a design right, shall pay the design
registration fees (hereinafter referred to as "registration
fees").
(2)
Matters relevant to the payment of registration fees,
including the method and time limits for payment of such fees
under paragraph (1), shall be prescribed by the Ordinance of
the Ministry of Commerce, Industry and Energy.
Article 31bis 【Abandonment for Each Design at
the Time of Payment of Registration Fees】
(1) A
person who receives a decision to grant a design registration
for an application for multiple design registration may
abandon some individual designs at the time of payment of the
registration fees.
(2)
Relevant matters relating to the abandonment of a design under
paragraph (1) shall be prescribed by President
Decree.
Article 32 【Payment of Registration Fees by an
Interested Party】
(1)
Regardless of the intent of a person responsible for payment
of registration fees, any interested party may pay such
fees.
(2) An
interested party who has paid the registration fees in
accordance with paragraph (1) may demand reimbursement of the
fees from the responsible party if such party is currently
making a profit.
Article 33 【Late Payment of Registration
Fees】
(1) Any
person wishing to register the establishment of a design
right, or the owner of a design right, may make late payments
of the registration fees within six months from the expiration
of the payment period prescribed under Article
31(2).
(2) Where
registration fees are paid late under paragraph (1), an amount
equivalent to twice the registration fees shall be
paid.
(3) If the
owner of the design right or person wishing to register the
establishment of a design right fails to pay the registration
fees within the extended period provided for under paragraph
(1), the application for a design registration shall be deemed
to have been abandoned or the design right concerned shall be
deemed to have been extinguished retroactively to the time
when the initial period for payment of the fees
expired.
Article 33bis [Restoration of Application for
Design Registration or Design Right by Late Payment of
Registration Fees, etc.]
(1) Where
a person desiring to register a design right or an owner of a
design right is unable to pay the late registration fee for
reasons beyond his or her control within the period for late
payment under Article 33(1), he/she may make late payment of
the registration fees within fourteen days from the date on
which the reasons for the delay cease to exist. However, this
provision shall not apply where six months have elapsed since
the expiration of the period for late payment under Article
33(1).
(2) Where
the registration fees are paid late under paragraph (1),
notwithstanding Article 33(3), the application for the design
registration shall be deemed not to have been abandoned and
the design right concerned shall be deemed to have existed
retroactively to the time when the period for the payment of
the registration fees expired.
(3) The
effects of an application for a design registration or a
design right under paragraph (2) shall not extend to the act
of working said design or a design similar thereto by another
person from the date of expiration of the period for late
payment of the registration fees to the date of late payment
submittal of said registration fees (hereinafter referred to
as the "term of limited effect").
(4) Where
a person has, in good faith, been commercially or industrially
working or preparing to work a design for which an application
for design registration has been filed, a registered design,
or a design similar thereto under paragraph (2) in the
Republic of Korea during the term of limited effect, he/she
shall have a non-exclusive license for the design right
concerned. However, said non-exclusive license shall be within
the scope of the object of the design or business that he/she
is working or preparing to work.
(5) A
person who has been granted a non-exclusive license in
accordance with paragraph (4) shall pay reasonable
remuneration as consideration to the owner of the design right
or the exclusive licensee.
Article 34 【Official Fees】
(1) A
person who files an application for a design registration,
makes a request or initiates any other procedure shall pay the
official fees.
(2)
Matters relevant to the payment of official fees, including
the method and time limits for payment of the fees under
paragraph (1), shall be prescribed by the Ordinance of the
Ministry of Commerce, Industry and Energy.
Article 35 【Reduction or Exemption of
Registration Fees or Official Fees】
(1)
Notwithstanding Articles 31 and 34, the Commissioner of the
Korean Intellectual Property Office shall grant an exemption
from the payment of registration fees or official fees in the
following situations:
(ⅰ) official fees or registration
fees in relation to applications for a design registration or
design rights belonging to the State; or
(ⅱ) fees for
requests for an invalidation trial made by an examiner under
Article 60(1).
(2)
Notwithstanding Articles 31 and 34, where an application for a
design registration has been filed by an entitled person in
accordance with Article 3 of the National Assistance Law, or a
person prescribed by the Ordinance of the Ministry of
Commerce, Industry and Energy, the Commissioner of the Korean
Intellectual Property Office may reduce or exempt from
payment, the registration fees equivalent to the first three
years for the registration of the establishment of a design
right and official fees as prescribed by the Ordinance of the
Ministry of Commerce, Industry, and Energy.
(3) A
person who wishes to take advantage of reduced registration
fees or exemption from the payment of registration fees or
official fees in accordance with paragraph (2) shall submit
the documents prescribed by the Ordinance of the Ministry of
Commerce, Industry and Energy to the Commissioner of the
Korean Intellectual Property Office.
Article 36 【Refund of Registration Fees,
etc.】
(1) The
registration fees and official fees which have been paid shall
not be refunded; however, such fees are refundable upon the
request of the person making payment in the following
cases:
(ⅰ) Registration fees and official fees which were
paid by mistake;
(ⅱ) Amount corresponding to the
registration fee for the year following the year in which the
decision on revocation or invalidation of the design
registration becomes final and conclusive.
(2) Where
registration and official fees have been paid incorrectly, the
Commissioner of the Korean Intellectual Property Office shall
make a notification to the party who paid said registration
and official fees
(3) The
refund of the registration fees and official fees as referred
to in paragraph (1)(i) may not be requested following the
expiration of one year from 2, and the amount corresponding to
the registration fee as referred to in paragraph (1)(ii) is
not subject to a refund from the date on which the decision to
revoke to design registration becomes final and
conclusive.
Article 37 【Design Register】
(1) The
Commissioner of the Korean Intellectual Property Office shall
keep a Design Register at the Korean Intellectual Property
Office and shall register the following matters:
(ⅰ) the
establishment, transfer, extinguishment or restriction on
disposal of a design right;
(ⅱ) the establishment,
maintenance, transfer, modification, extinguishment or
restriction on disposal of an exclusive or non-exclusive
license; and
(ⅲ) the establishment, transfer, modification,
extinguishment or restriction on disposal of a pledge on a
design right or on an exclusive or non-exclusive
license.
(2) The
Design Register under paragraph (1) may be stored in whole or
in part in electronic format, such as on an electronic
recording medium.
(3)
Relevant matters relating to the particulars and procedures of
registration not provided for in paragraphs (1) and (2) shall
be prescribed by Presidential Decree.
Article 38 【Issuance of Design Registration
Certificate】
(1) When
the establishment of a design right has been registered, the
Commissioner of the Korean Intellectual Property Office shall
issue a design registration certificate to the owner of the
registered design.
(2) When a
design registration certificate does not coincide with the
Design Register or other documents, the Commissioner of the
Korean Intellectual Property Office shall, upon request or ex
officio, reissue the design registration certificate with
amendments, or issue a new design registration
certificate.
CHAPTER V
DESIGN RIGHT
Article 39 【Registration of Establishment of
Design Right】
(1) A
design right shall be effective upon registration of its
establishment.
(2) When
the registration fees have been paid in accordance with
Article 31(1), or when an exemption from payment of such fees
or a reduction of payment has been granted under Article 35(1)
or (2), the Commissioner of the Korean Intellectual Property
Office shall publish the following particulars in the Design
Gazette:
(ⅰ) the name and domicile of the owner of the
design right (if a legal entity, the title, place of
business);
(ⅱ) the registration number of the design;
and
(ⅲ) the date of registration of the establishment of
the right.
Article 40 【Term of Design Right】
(1) The
term of a design right shall be fifteen years from the date of
registration of its establishment. However, the expiration
date of the term of a design right relating to a similar
design shall be the expiration date of the term of the design
right relating to the principal design.
(2) Where
a design registration is bestowed to a lawful holder under
Article 14 or 15, the term of the design right under paragraph
(1) shall run from the day following the date of registration
of the design right previously filed by the unentitled
person.
Article 41 【Effects of Design
Right】
The owner
of a design right shall have the exclusive right to work the
registered design and a design similar thereto commercially
and industrially. However, where the design right is subject
to an exclusive license, this provision shall not apply to the
extent wherein the exclusive licensee has the exclusive right
to work the registered design or similar design under Article
47(2).
Article 42 【Design Right Relating to Similar
Designs】
A design
right relating to a similar design as defined in Article 7(1)
shall be incorporated in a design right relating to the
principal design.
Article 43 【Scope of Protection of Registered
Designs】
The scope
of protection conferred by a registered design shall be
determined by the terms of the specification in the
application, the design represented in a drawing attached to
the application or shown in a photograph or sample attached to
the application, and in the explanation of the intent and
purpose of said design.
Article 44 【Limitations of Design
Right】
The
effects of a design right shall not extend to:
(ⅰ) use of
the registered design for the purpose of research or
experiment;
(ⅱ) vessels, aircrafts or vehicles merely
passing through the Republic of Korea or the machinery,
instruments, equipment or other accessories used therein;
or
(ⅲ) identical products existing in the Republic of Korea
at the time the application for registration of a design was
filed.
Article 45 【Relationship with Another Registered
Design】
(1) Where
the working of a registered design would utilize another
person's registered design or design similar thereto, patented
invention, registered utility model or registered trademark
under an application filed prior to the filing date of the
application for the registration of a design concerned, or
where a design right conflicts with another person's patent
right, utility model right or trademark right under an
application filed prior to the filing date of the application
for registration of a design concerned, the owner of the
design right or exclusive or non-exclusive licensee shall 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, except where Article
70 applies.
(2) Where
the working of a design similar to a registered design would
utilize another person's registered design or design similar
thereto, patented invention, registered utility model or
registered trademark under an application filed prior to the
filing date of the application for the registration of a
design concerned, or where a design right of the design
similar to the registered design conflicts with another
person's registered design, patent right, utility model right
or trademark right under an application filed prior to the
filing date of the application for registration of the design
concerned, the owner of the design right or exclusive or
non-exclusive licensee shall not work the design similar to
the registered design commercially or industrially without the
consent of the owner of the earlier patent right, utility
model right or trademark right, except where Article 70
applies.
(3) Where
the working of a registered design or a design similar thereto
would utilize or conflict with another person's copyright,
effective prior to the filing date of the application for
registration of a design concerned, the owner of the design
right or exclusive or non-exclusive licensee shall not work
the registered design or design similar thereto commercially
or industrially without the consent of the owner of the
copyright.
Article 46 【Assignment and Joint Ownership of
Design Right】
(1) A
design right may be assigned. However, a design right relating
to a principal design and a design right relating to a similar
design shall be assigned together.
(2) A
joint owner of a design right may neither assign his share nor
establish a pledge upon it without the consent of all the
other joint owners.
(3) Each
of the joint owners may, except as otherwise agreed by a
contract among all the joint owners, work the registered
design or similar design by himself without the consent of the
other joint owners.
(4) A
joint owner may grant neither an exclusive license nor a
non-exclusive license under the design right without the
consent of all the other joint owners.
(5) A
design right which is registered as a multiple design may be
divided and transferred for each design.
Article 47 【Exclusive License】
(1) The
owner of a design right may grant an exclusive license on the
design right.
(2) An
exclusive licensee who has been granted an exclusive license
under paragraph (1) shall have the exclusive right to work the
registered design or design similar thereto commercially and
industrially, to the extent provided for in the license
contract.
(3) An
exclusive licensee may not transfer the license without the
consent of the owner of the design right, except where it is
transferred together with the business in which it is worked,
or in the case of inheritance or other general
succession.
(4) An
exclusive licensee may establish a pledge or grant a
non-exclusive license on the exclusive license only with the
consent of the owner of the design right.
(5) The
provisions of Article 46(2) to (4) shall apply mutatis
mutandis to exclusive licenses.
Article 48 Deleted
Article 49 【Non-exclusive
License】
(1) The
owner of a design right may grant a non-exclusive license on
his design right.
(2) A
non-exclusive licensee shall have the right to work the
registered design and a design similar thereto commercially
and industrially to the extent provided for in the Design Law
or by the license contract.
(3) The
provisions of Article 46(2) and (3) and Article 102(4) to (6)
of the Patent Law shall apply mutatis mutandis to
non-exclusive licenses.
Article 50 【Non-exclusive License by Virtue of
Prior Use】
Where, at
the time of filing of an application for the registration of a
design, a person has created a design which is identical or
similar to the design in an existing application, without
having prior knowledge of the design in the application, or
has learned how to create the design from another person, and
has been working the design commercially or industrially in
the Republic of Korea, in good faith, or has been making
preparations therefor, shall have a non-exclusive license on
that registered design or design similar thereto. Such license
shall be limited to the design which is being worked, or for
which preparations for working have been made, and to the
purpose of such working or preparations.
Article 51 【Non-exclusive License Due to Working
Prior to Registration of Demand for Invalidation
Trial】
(1) Where
a person falling within any of the following subparagraphs has
been working a design or a design similar thereto,
commercially or industrially in the Republic of Korea, in good
faith, or has been making preparations therefor, prior to the
registration of a request for an invalidation trial of the
design registration concerned, without knowing that the design
registration is subject to invalidation, such person shall
have a non-exclusive license on that design right or on the
exclusive license existing at the time when the design
registration was invalidated, but such non-exclusive license
shall be limited to the design which is being worked or for
which preparations for working are being made and to the
purpose of such working or preparations:
(ⅰ) the original
owner of the design right, where one of two or more design
registrations granted for the same or a similar design has
been invalidated;
(ⅱ) the original owner of the design
right, where his design registration has been invalidated and
a design registration for the same or a similar design has
been granted to an entitled person;
(ⅲ) in the cases
referred to in subparagraphs (i) and (ii), a person who, at
the time of registration of the request for an invalidation
trial of the design right that has been invalidated, has been
granted an exclusive or non-exclusive license, or
non-exclusive license on the exclusive license, and such
license has been registered. However, a person falling under
Article 118(2) of the Patent Law as applied under Article 61
of the Design Law is not required to register the
license.
(2) A
person who has been granted a non-exclusive license in
accordance with paragraph (1) shall pay reasonable
remuneration as consideration to the owner of the design right
or the exclusive licensee.
Article 52 【Non-exclusive License After
Expiration of Design Right, etc.】
(1) Where
a design similar to a registered one conflicts with a design
right which has been registered prior to or on the date of
application for registration of the design (hereinafter
referred to as a "primary design right"), the owner of the
primary design right shall have a non-exclusive license with
respect to the design right not exceeding the scope of the
primary design right when the term of primary design right
expires, or has non-exclusive license with respect to an
exclusive license of a design right which exists at the time
when the term of the design right expires.
(2) Under
paragraph (1), an exclusive licensee of a primary design right
which exists at the time when the term of the primary right
expires, or a non-exclusive licensee under Article 118(1) of
the Patent Law, as applied mutatis mutandis in accordance with
Article 61 of the Design Law, has a non-exclusive license with
respect to a design right not exceeding the scope of the
primary design right, or has a non-exclusive license with
respect the exclusive license of the design right which exists
at the time when the term of primary design right
expires.
(3) The
provisions of paragraphs (1) and (2) shall apply mutatis
mutandis to cases where a registered design or a design
similar thereto conflicts with a patent right or a utility
model right which has been registered prior to or on the date
of application for registration of design, and where the term
of the patent right or utility model right expires.
(4) The
owner of a non-exclusive license pursuant to the provisions of
paragraph (2) (including cases in which the provisions of
paragraph (3) apply mutatis mutandis) shall pay reasonable
remuneration to the owner of the design right or the exclusive
licensee in relation to the design right.
Article 53 【Abandonment of Design
Right】
The owner
of a design right may abandon his design right.
Article 54 【Restriction on Abandonment of Design
Right, etc.】
(1) The
owner of a design right shall not abandon his design right
without the consent of the exclusive licensee, pledgee, or
non-exclusive licensee under Articles 47(4) or 49(1) of the
Design Law or Article 39(1) of the Patent Law as applied
mutatis mutandis under Article 24 of the Design Law.
(2) An
exclusive licensee shall not abandon his exclusive license
without the consent of the pledgee or non-exclusive licensee
under the provisions of Article 47(4).
(3) A
non-exclusive licensee shall not abandon his non-exclusive
license without the consent of the pledgee.
Article 55 【Effect of
Abandonment】
The design
right, or exclusive or non-exclusive license thereon, shall be
extinguished as of the time of abandonment of a design right
or of an exclusive or non-exclusive license.
Article 56 【Pledge】
Where a
design right or an exclusive or non-exclusive license is the
subject of a pledge, the pledgee may not work the registered
design except as otherwise provided by contract.
Article 57 【Subrogation for Right of
Pledge】
A pledge
may be exercised against the remuneration provided for under
the Design Law or against remuneration or goods to be received
for the working of the design right; however, an attachment
order shall be obtained prior to the payment or delivery of
the remuneration or goods.
Article 58 【Non-exclusive License When
Transferring the Design Right by Exercising the Pledge
Right】
Where the
owner of a design right has worked the registered design or
similar design which is the subject of a pledge prior to the
establishment of the pledge, and the design right is
subsequently sold at auction, etc., he shall have a
non-exclusive license on the registered design right; in such
case, the owner of the design right shall pay reasonable
remuneration to the pledgee.
Article 59 【Extinguishment of Design Right in
Absence of Successor】
A design
right shall be extinguished if, at the time of succession, no
successor exists.
Article 60 【Report on Working of Registered
Design】
The
Commissioner of the Korean Intellectual Property Office may
require the owner of a design right, or exclusive or
non-exclusive licensee, to report upon whether the registered
design has or has not been worked and the extent of such
working, etc.
Article 61 【Mutatis Mutandis Application of
Provisions of the Patent Law】
The
provisions of Articles 101, 106, 118 and 125bis of Patent Law
shall apply mutatis mutandis to design rights.
CHAPTER VI
PROTECTION OF OWNER OF DESIGN
RIGHT
Article 62 【Injunction Against Infringement,
etc.】
(1) An
owner of a design right or exclusive licensee may request a
person who is infringing or is likely to infringe on his
rights to discontinue or refrain from such
infringement.
(2) An
owner of a design right or an exclusive licensee who is acting
under paragraph (1) may demand the destruction of the articles
which resulted from the act of infringement, the removal of
the facilities used for the act of infringement, or other
measures necessary to prevent the infringement.
Article 63 【Acts Deemed to be
Infringing】
Acts of
commercially or industrially manufacturing, using, assigning,
leasing, importing or offering for assigning or leasing
(including displaying for the purpose of assignment or lease)
articles used exclusively for the manufacture of articles to
which a registered design or similar design is applied shall
be deemed to be an infringement of the design right or
exclusive license.
Article 64 【Presumption, etc., of Amount of
Damage】
(1) Where
the owner of a design right or exclusive licensee claims
compensation from a person who has intentionally or
negligently infringed a design right or exclusive license for
damages caused by the infringer's transfer of articles, the
amount of damages suffered by the owner of the trademark right
or exclusive licensee may be calculated as the number of
transferred articles multiplied by the profit per unit of the
articles that the owner of the trademark right or exclusive
licensee might have sold in the absence of said infringement.
Provided that, said compensation may not exceed an amount
calculated as follows: the estimated profit per unit
multiplied by the number of articles that the trademark right
owner or licensee could have produced subtracted by the number
of units actually sold. However, where circumstances exist
that prevent the owner of the trademark right or exclusive
licensee from selling part or all of the transferred articles,
a sum equivalent to the number of transferred articles subject
to said circumstances shall be deducted.
(2) Where
the owner of a design right or exclusive licensee claims
compensation for damages from a person who has intentionally
or negligently infringed a design right or exclusive license,
the profits gained by the infringer as a result of the
infringement shall be presumed to be the amount of damage
suffered by the owner of the design right or exclusive
licensee.
(3) An
owner of a design right or exclusive licensee may claim as
damages, the amount of money which he would normally be
entitled to receive for the working of the registered design
from the person who has intentionally or negligently infringed
the design right or exclusive license, as the amount of
damages suffered by him by the infringement.
(4)
Notwithstanding paragraph (2), where the amount of damages
exceed the amount referred to in paragraph (2), the amount in
excess may also be claimed as compensation for damages. In
such a case, the court may take into consideration the fact
that there has been neither willfulness nor gross negligence
on the part of the person who has infringed the design right
or the exclusive license when awarding damages.
(5) In
litigation relating to the infringement of a design right or
an exclusive license, where the court recognizes that the
nature of the facts of the case make it difficult to provide
evidence proving the amount of damage that has occurred,
notwithstanding paragraphs (1) to (4), the court may determine
a reasonable amount on the basis of an examination of the
evidence and a review of all the arguments.
Article 65 【Presumption of
Negligence】
(1) A
person who has infringed a design right or exclusive license
of another person shall be presumed to have been negligent
regarding such act of infringement. However, this provision
shall not apply to the infringement of a design right or
exclusive license relating to a design registered as a secret
design under Article 13(1).
(2) The
provision of paragraph (1) shall apply mutatis mutandis to
cases where the owner of the design right or exclusive or
non-exclusive licensee of registration design of unexamined
design infringes another person's design right or exclusive
license.
Article 66 【Measures for Recovery of Reputation
of Owner of Design Right, etc.】
Upon the
request of an owner of a design right or 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 a design right or exclusive licensee by
intentionally or negligently infringing the design right or
exclusive license, to take necessary measures to restore the
business reputation of the said owner or exclusive
licensee.
Article 67 【Mutatis Mutandis Application of
Provisions of the Patent Law】
The
provisions of Article 132 of the Patent Law shall apply
mutatis mutandis to the protection of the owner of a design
right.
Article 67bis 【Trial Against Decision to
Rejection Amendment】
Where a
person who receives a decision of rejection of amendment under
Article 18bis(1) is dissatisfied therewith, he may request a
trial within thirty days from the date of receipt of the
certified copy of the decision.
Article 67ter 【Trial Against a Decision to
Refuse a Design Registration or a Decision to Revoke a Design
Registration】
Where a
person has received a decision to refuse or revoke a design
registration, such person may request a trial within thirty
days from the date of receipt of the certified copy of the
ruling.
CHAPTER Ⅶ
TRIAL
Article 68 【Trial to Invalidate a Design
Registration】
(1) In the
following cases, an interested person or an examiner may
request a trial to invalidate a design registration. In such
cases, request may be made with respect to each design for
which an application for registration of multiple designs is
made pursuant to Article 11bis.
(ⅰ) the
registration has been effected contrary to Articles 5, 6,
7(1), 10, 16(1) and 16(2) of the Design Law or Article 25 of
the Patent Law as applied under Article 4 of the Design
Law;
(ⅱ) where it is filed by a person who do not have
the right to obtain a patent or it is not patentable under the
proviso of Articles 3(1);
(ⅲ) the registration has
been effected with respect to an application for registration
of a design filed by a person who is not entitled to obtain
the design registration;
(ⅳ) the
registration has been effected contrary to the provisions of a
treaty; or
(ⅴ) after the registration, the owner of the
design right is no longer capable of enjoying the design right
under Article 25 of the Patent Law as applied under Article 4
of the Design Law, or the registration no longer complies with
a treaty.
(2) A
trial under paragraph (1) may be requested even after the
extinguishment of a design right.
(3) Where
a trial decision invalidating a design registration has become
final and conclusive (except a design registration of a
similar design), the design right shall be deemed never to
have existed; however, where a design registration falls under
paragraph (1)(iv) and a trial decision invalidating the design
registration has become final and conclusive, the design right
shall be deemed not to have existed from the time when the
design registration first fell under the said
paragraph.
(4) Where
a trial decision invalidating a design registration of a
principal design has become final and conclusive, the design
registration of a similar design shall also become
invalid.
(5) Where
a trial decision invalidating the design registration of a
similar design has become final and conclusive or where the
design registration of a similar design becomes invalid under
paragraph (4), the design right of the similar design shall be
deemed not to have existed from the beginning. However, where
a trial decision invalidating a design registration of a
similar design under paragraph (1)(iv) has become final and
conclusive, the design right of the similar design shall be
deemed not to have existed from the time when the design
registration of the similar design first fell under the said
paragraph.
(6) Where
a trial for invalidation under paragraph (1) has been
requested, the presiding trial examiner shall transmit a copy
of the request to the exclusive licensee of the design right
and to any other persons who have registered rights relating
to the design registration.
Article 69 【Trial to Confirm the Scope of a
Design Right】
The owner
of a design right or an interested person may request a trial
to confirm the scope of a design right protected by the design
registration.
Article 70 【Trial for Granting Non-exclusive
License】
(1) If the
owner of a design right, or exclusive or non-exclusive
licensee, desires to obtain permission to exercise the right
provided for in Article 45(1), and if the other party refuses
to grant permission without justifiable reasons or if it is
not possible to obtain such permission, the said owner or
exclusive or non-exclusive licensee may request a trial for
the grant of a non-exclusive license to the extent necessary
to work the registered design.
(2) If a
person who has granted a non-exclusive license under paragraph
(1) desires to work the registered design of the person who
has been granted such non-exclusive license, and if the latter
refuses to give permission or if it is impossible to obtain
such permission, the former may request a trial for the grant
of a non-exclusive license within the scope necessary to work
the registered design.
(3) A
non-exclusive licensee, who was granted a non-exclusive
license under paragraph (1) or (2), shall pay remuneration to
the patentee, owner of the utility model right, owner of the
design right or exclusive licensee thereof; however, if
payment is not possible for reasons beyond the control of the
said non-exclusive licensee, the remuneration shall be
deposited.
(4) A
non-exclusive licensee under paragraph (3) shall not work the
patented invention, registered utility model or design right
or similar design without payment of remuneration or deposit
thereof.
Article 71 【Mutatis Mutandis Application of the
Provisions of Examination to Trial Against Decision to Refuse
Design Registration】
(1) The
provisions of main stipulation of Article 18(1), Articles
18bis, 27 and 28 shall apply mutatis mutandis to trial against
decision to refuse a design registration. In such cases,
"before transmittal of the examiner's first decision to either
grant or refuse a design registration under the provisions of
Article 28 (hereinafter referred to as 'decision to grant or
refuse a design registration')" in Article 18(1) shall read
"within the time limit designated for submission of arguments
by notification of reasons for refusal", "where an applicant
has requested a trial under Article 67bis" in Article 18bis(3)
shall read "where an action has been brought under Article
186(1) of the Patent Law applying mutatis mutandis under
Article 75 of this Law", and "until the trial decision has
become final and conclusive" shall read "until the ruling has
become final and conclusive".
(2) The
provisions of Article 18bis(1), (4) and 27 applying mutatis
mutandis under paragraph (1) shall apply only to cases where
the reasons for refusal differ from the grounds for the
examiner's original decision to refuse a design
registration.
Article 72 【Mutatis Mutandis Application of
Provisions of the Patent Law】
The
provisions of Articles 139 to 166 and 171 to 176 of the Patent
Law shall apply mutatis mutandis to trials concerning designs.
In such cases, "A person who desires to request a trial
against a decision of refusal or revocation of a patent under
Article 132ter" in Article 140bis(1), excluding the
subparagraphs thereof, shall read "a person who desires to
request a trial under Article 67bis or 67ter", "date of
decision" in Article 140bis(1)(iv) shall read "date of
decision to refuse a design registration, date of decision to
revoke a design registration, or date of decision to reject an
amendment", "the costs in connection with a trial under
Article 132ter and 136 or 138" in Article 165(3) of the Patent
Law shall read "the costs in connection with the trial under
Article 67bis, 67ter or 70", and "a ruling of refusal to grant
a patent, a ruling of refusal against registration of an
extension of term of a patent right, or revocation by an
examiner" in Article 171(2) of the Patent Law shall read "a
decision to reject an amendment, refuse a design registration,
or revoke a design registration".
CHAPTER Ⅷ
RETRIAL AND
LITIGATION
Article 73 【Request for Retrial】
(1) Any
party may request a retrial against a trial decision that has
become final and conclusive.
(2)
Articles 422 and 424 of the Code of Civil Procedure shall
apply mutatis mutandis to a request for a retrial under
paragraph (1).
Article 74 【Restriction on Effects of Design
Rights Restored by Retrial】
(1) Where
a design right relating to an invalidated design registration
has been restored through a retrial and falls under any of the
following subparagraphs, the effects of the design right shall
not extend to any product that was, in good faith, imported
into, or manufactured or acquired in the Republic of Korea,
after the trial decision became final and conclusive but
before the request for a retrial has been registered,
where:
(ⅰ) a design right (including a design right that
has been finally and conclusively revoked in a trial against a
decision to revoke a design registration) that had been
invalidated but was restored by retrial;
(ⅱ) after a trial
decision became final and conclusive, ruling that a product
was outside the scope of the design right, a decision to the
contrary at a retrial has become final and conclusive;
(ⅲ)
the establishment of the design right with respect to an
application for registration of a design previously rejected
by a trial decision has been registered through
retrial.
(2) Where
a design right falls under paragraph (1), the effects of the
design right shall not extend to the following acts:
(ⅰ)
working of a design in good faith after the trial decision
became final and conclusive but before the registration of the
request for a retrial;
(ⅱ) manufacturing, assigning,
leasing, importing, or offering for assigning or leasing the
products to which the registered design has been applied,
after the trial decision became final and conclusive but
before the registration of the request for a retrial.
Article 75 【Mutatis Mutandis Application of
Provisions of the Patent Law】
The
provisions of Articles 179, 180 and 182 to 185, of the Patent
Law and Articles 186 to 191 of the Patent Law shall apply
mutatis mutandis to a retrial or litigation with respect to a
design. In such cases, "action against a trial decision" in
Article 186(1) of the Patent Law shall read "action against a
trial decision, and a decision to reject an amendment under
Article 18bis(1) shall apply mutatis mutandis under Article
71(1) (including where Article 184 of the Patent Law applies
mutatis mutandis under Article 75)".
CHAPTER IX
SUPPLEMENTARY
PROVISIONS
Article 76 【Inspection of
Documents】
(1) A
person who desires a design registration certificate, a
certified copy or extract of documents, inspection or copy of
the Design Register or other documents may make a request to
that effect to the Commissioner of the Korean Intellectual
Property Office or the President of the Intellectual Property
Tribunal.
(2) The
Commissioner of the Korean Intellectual Property Office or the
President of the Intellectual Property Tribunal may not grant
the request under paragraph (1) if the required document
relates to an application that has not been published and has
not led to the registration of a design right, or is liable to
contravene public order or morality.
Article 77 【Prohibition of Opening or Removal of
Design Register and Documents Relating to Application,
Examination or Trial 】
(1) The
removal of the Design Register or of documents relating to an
application for design registration, examination, and
opposition to the registration of an unexamined design, trial
or retrial shall be prohibited. However, this provision shall
not apply in cases concerning the removal of documents
relating to an application for design registration or
examination.
(2) A
response shall not be given to a request for an expert
opinion, testimony or an inquiry as to the contents of a
pending application for design registration, examination,
opposition to the registration of unexamined design, trial or
retrial or as to the contents of a decision or
ruling.
Article 78 【Design Gazette】
(1) The
Korean Intellectual Property Office shall publish the Design
Gazette. However, a registered design which is required to be
kept in secret for the purposes of national defense under
Article 41 of the Patent Law as applied under Article 24 of
the Design Law shall not be published in the Design
Gazette.
(2) The
Design Gazette may be published through a communication
network as prescribed by Ordinance of the Ministry of the
Trade, Industry and Energy.
(3) When
the Design Gazette is published through electronic media, the
Commissioner of the Korean Intellectual Property Office shall
make public the fact of publication of the Design Gazette, its
principal contents and service by public notification through
a computerized network.
(4)
Matters to be published in the Design Gazette shall be
determined by Presidential Decree.
Article 79 【Design Registration
Marking】
The owner
of a design right or an exclusive or non-exclusive licensee
may mark upon the product to which a registered design has
been applied for, an identification of the registered design,
or the identification may be made on the container or package
thereof.
Article 80 【Prohibition of False
Marking】
The
following acts shall be unlawful:
(ⅰ) marking an indication
of a design registration having been granted or an application
for registration of a design having been filed, or any sign
likely to cause confusion therewith, on a product for which a
design registration has not been granted or an application for
the registration of a design is not pending, or on a container
or package thereof;
(ⅱ) assigning, leasing or displaying
product which has been marked as referred to in subparagraph
(i);
(ⅲ) marking an indication that product is subject to a
registered design or an application for registration of a
design, or any confusingly similar indication, on
advertisements, signboards or tags for the purpose of causing
others to manufacture, use or lease the product for which a
design registration has not been granted or a design
application is not pending.
Article 81 【Mutatis Mutandis Application of
Provisions of the Patent Law】
The
provisions of Articles 218 to 220, 222 and 224bis of the
Patent Law shall apply mutatis mutandis with respect to
designs.
CHAPTER X
PENAL PROVISIONS
Article 82 【Offense of
Infringement】
(1) Any
person who has infringed a design right or an exclusive
license shall be liable to imprisonment with labor not
exceeding seven years or to a fine not exceeding 100 million
Won.
(2)
Prosecution for offenses under paragraph (1) shall be
initiated upon filing of a complaint by an injured
party.
Article 83 【Offense of Perjury】
(1) Where
a witness, expert witness or interpreter, having taken an oath
under the law, has made a false statement or given a false
expert opinion or interpreted falsely before the Intellectual
Property Tribunal, he shall be liable to imprisonment with
labor not exceeding five years or to a fine not exceeding 10
million Won.
(2) Any
person having committed an offense under paragraph (1) who
admits it prior to the examiner's decision or decision on
opposition to registration of an unexamined design is rendered
or before a trial decision on the case becomes final and
conclusive may be partially or completely exempted from the
penalty.
Article 84 【Offense of False
Marking】
Any person
who has violated Article 80 shall be liable to imprisonment
with labor not exceeding three years or to a fine not
exceeding 20 million won.
Article 85 【Offense of Fraud】
Any person
who has obtained a design registration or a trial decision by
means of fraud or any other unjustified act shall be liable to
imprisonment with labor not exceeding three years or to a fine
not exceeding 20 million won.
Article 86 【Offense of Divulging
Secrets】
Where any
present or former official of the Korean Intellectual Property
Office or the Intellectual Property Tribunal has divulged or
appropriated secrets relating to a design contained in a
design application, or which is requested to be kept secret
under Article 13(1) to which he had access during the course
of his duties, he shall be liable to imprisonment with labor
not exceeding two years or to a fine not exceeding 3 million
Won.
Article 87 【Dual Liability】
Where a
representative of a legal entity or an agent, employee or any
other servant of a legal entity or natural person has
committed an act in violation of Articles 82(1), 84 or 85 with
regard to the business of the legal entity or natural person,
in addition to the offender, the legal entity shall be
sentenced to fine which falls any of the following
subparagraphs and the natural person shall be sentenced to the
fine provided for in the relevant Article.
(ⅰ)
Article 82(1): a fine not exceeding 300 million Won;
or
(ⅱ)
Article 84 or 85: a fine not exceeding 60 million
Won.
Article 88 【Administrative Fine】
(1) Any
person who has committed an act in violation of any of the
following subparagraphs shall be liable to an administrative
fine not exceeding 500,000 Won:
(ⅰ) making a false
statement before the Intellectual Property Tribunal after
having taken an oath under Article 271(2) or 339 of the Code
of Civil Procedure
(ⅱ) after having been ordered by the
Intellectual Property Tribunal to submit or show documents or
other materials with respect to the taking of evidence or to
the preservation of evidence, failure to comply with the order
without justifiable reasons;
(ⅲ) failure to comply with an
order to report under Article 60 on matters relating to the
working of a registered design without justifiable
reasons;
(ⅳ) after having been summoned by the Intellectual
Property Tribunal as a witness, expert witness or interpreter,
failure to comply with the subpoena, or refusal to take an
oath, to make a statement, to testify, to give an expert
opinion or to interpret, without justifiable
reasons.
(2) The
administrative fine referred to in paragraph (1) shall be
imposed and collected by the Commissioner of the Korean
Intellectual Property Office as prescribed by the Presidential
Decree.
(3) Any
person who objects to the imposition of an administrative fine
under paragraph (2) may make a protest to the Commissioner of
the Korean Intellectual Property Office within thirty days
from the date of notification of the imposition.
(4) The
Commissioner of the Korean Intellectual Property Office shall,
upon receipt of a protest under paragraph (3), notify the
competent court that shall adjudicate upon the case of the
administrative fine according to the provisions of the Act on
Non-Contentious Procedures without delay.
(5) Where
no opposition has been raised within the period prescribed in
paragraph (3) and where the fine has not been paid, the
Commissioner of the Korean Intellectual Property Office shall
collect it in accordance with the rules concerning collection
of national taxes in arrears through the head of the competent
tax office.
Article 89 【Mutatis Mutandis Application of
Provisions of the Patent Law】
The
provisions of Article 231 of the Patent Law shall apply
mutatis mutandis to penal provisions with respect to
designs.
ADDENDUM
Article 1 【Date of Entry into
Force】
The Design
Law shall enter into force on March 1, 1998.
Article 2 【Transitional Measures as to
Application for Registration, etc.】
An
examination or ruling of refusal with respect to applications
for design registration made prior to the entry into force of
the Design Law shall be governed by the previous
provisions.
Article 3 【Transitional Measures as to Trial on
Registered Design】
Trials,
retrials and court actions with respect to registered designs
on which the rights are established in accordance with
applications for design registration prior to the entry into
force of the Design Law shall be governed by the previous
provisions.
Article 4 【Transitional Measures as to Rejection
of Amendment】
With
regards to amendment before the entry into force of this Law,
the previous provisions shall apply.
Article
5 【Application of Exceptions to Loss of
Novelty】
The
amended provisions of Article 8(1) and (2) shall be effective
from the application for registration of design which is made
first after the entry into force of the Design Law.
Article 6 【Application of Extension of Term of
the Design Right, etc.】
The
amended provisions of Article 40(1) shall be effective from
the design right which is registered by a first application
for design registration after the entry into force of the
Design Law.
Article 7 【Application of Relationship with
Another Person's Design Right, etc.】
The
amended provisions of Article 45(2) shall be effective from
the owner of design right which is registered by a first
application for design registration after the entry into force
of the Design Law, or to the exclusive licensee
thereto.
ADDENDUM
Article 1 【Date of Entry into
Force】
This Law
shall enter into force on July 1, 2001. However, the amended
provisions of Article 36(2) and (3) shall enter into force on
and after the day of promulgation.
Article 2 【General Transitional
Measures】
The
previous provisions shall apply to the requirements for
registration, division, conversion, examination, registration,
design right, opposition to an unexamined design registration,
trial, retrial and/or litigation related to an application for
a design registration that occurred before this Law entered
into force. However, the previous provisions shall not apply
to cases that fall under any of the following
subparagraphs.
1. The
amended provisions of Article 31bis shall apply to cases where
a design(s) in an application for multiple design registration
is abandoned.
2. The
amended provisions of Article 33bis shall apply where an
application for design registration or design right is deemed
to have existed retroactively by late payment of the
registration fees.
3. The
provisos of Article 140bis(1) and Article 140bis(3) of the
Patent Law that apply mutatis mutandis under the amended
provisions of Article 72 shall apply where a trial against a
ruling to refuse a design registration is
requested.
|