It becomes more difficult to copy a design of an original popular product.(News Letter No. 518)
Author
KH
Post Date
2023-12-18
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1. It becomes more difficult to copy a design of an original popular product.
- A related design availability period is extended (1 year → 3 years) to protect a unique design. -Some changes to the Korean Design Protection Act will take effect from December 21, 2023. The period to file an application for a related design is extended from 1 year to 3 years. Usually, popular products are released with slightly modified designs. Since the scope of a right is broad to include a follow-up design, the launch of an imitation product is expected to be reduced. According to KIPO, some amendments to the Design Protection Act will take effect from December 21, 2023, to protect the right of a design right owner by relaxing requirements of priority claim of his/her design.
【 Systems to be Amended 】 1. Related Design Under this system, when a person files a similar design to his/her own prior design, it is not rejected on the ground of Article 33 and Article 46 (novelty violation and first to files system) and it can be registerable.
2. Exception to Lack of Novelty A design published before an application is filed may be rejected as to its registration for the reason that it is not a new design (lack of novelty). However, under this system, one’s own design which does not exceed 12 months after it was first published can be registerable.
3. Priority Claim Based on a design application filed in “A” country, when the same design application is filed in “B” country within 6 months, it is regarded as being filed on the filing date of “A” country.
(After the amendment): The period of filing a related design application is extended from one year to three years, thereby contributing to the building of a company’s brand and image and strengthening the protection of a competitive design. (Before the amendment): After launching a product, if the reaction from the market is good, a company steadily develops a follow-up product for sale with a partial modified design. However, previously, the period of filing the design of a follow-up product as a related design application was limited within one year from the filing date of the first design application. Therefore, innovative design companies had limits in expanding the scope of a design right and in continuously preventing an imitation or infringement.
If a design is not a newly created design, it cannot be registered due to a lack of novelty under the Design Protection Act. However, when a person files his/her own design which does not exceed 12 months after it was published, it can be registered by the exception to lack of novelty unless it has any other reason(s) for rejection. (After the Amendment): The procedural articles to regulate the time and deadline for submitting documents for the exception to lack of novelty are deleted, thereby improving the system such that the exception of lack of novelty can be flexibly applied to an owner of a right. (Before the Amendment): When a person could file his/her own design application within 12 months after the design was published (the period for the exception to lack of novelty), since the periods of submitting documents for the exception to lack of novelty were limited (i.e., at the time of filing an application, before whether a registration is decided, at the time of submitting a written answer to an objection or a trial on invalidation), there were restrictions that prevented the exception to lack of novelty in the disputes, such as a trial to confirm the scope of a right, etc.
When priority could not be claimed within the time limit (6 months from the filing date) due to a proper reason (for example, elapse of time due to circumstances that make work impossible, such as hospitalization due to chronic illness, or elapse of time due to system failure, etc.), the amended system improves the regulations by additionally giving a 2-month period and preparing additional procedures of priority claim, thereby promoting the right of and interests of the right holder. Through these amendments, the extension of the period of filing a related design application protects a company’s unique design, thereby contributing to company innovation and competitiveness reinforcement, the expansion of applying the exception to lack of novelty and the improvement of the procedure regulations of priority claim are expected to harmonize with the legal systems of major countries and strengthen the protection of a rightful owner.
2. KIPO and the Korean Trade Commission (KTC) concluded a business agreement… to rapidly relieve a company damaged by a technology leakage.
-The business agreement was concluded to protect a technology and to establish fair trade rules (November 17, 2023). -KIPO’s technical police and trademark police investigation and KTC’s investigation of an unfair trade act are interconnected.
KIPO and KTC announced that they concluded a business agreement to protect technology and to establish fair trade rules. As a part of promotion of national affairs, the business agreement was carried forward to rapidly relieve a company damaged and to build a fair technology protection system, by interconnecting the KIPO’s technical police and trademark police investigation of a technology leakage and an offending company that infringes on an IP right (criminal punishment) and the KTC’s investigation of an unfair trade act (administrative restriction, such as suspension of import and export of infringing goods). KIPO and KTC decided to expand cooperation not only in ▲ mutual connection of criminal punishment and administrative restriction but also in the areas that complement each other’s capabilities and authorities, such as ▲linkage between KTC’s investigation of an unfair trade act and KIPO’s dispute mediation system, ▲ rapid process of a trial case related to the unfair trade act investigation case, and ▲ KIPO’s technical consultation support in the process of KTC’s investigation of an unfair trade act case, etc.
When KIPO suspects an unfair trade act after investigating the cases of IP infringement and trade secret leakage, it informs KTC of the unfair trade act and KTC investigates the unfair trade act at the request of a damaged company and then imposes an administrative sanction, such as suspension of import and export thereof. When KTC needs KIPO’s investigation in the case which has been investigated, KTC also notifies KIPO and then KIPO starts an investigation at the request of the damaged company. In the past, even in the situation where KIPO’s technical police and trademark police were investigating a case of IP infringement, such as trade secret, trademark piracy, etc., since the IP infringing goods were imported or exported, there was a possibility that secondary damage occurs to the damaged company. However, since the relevant investigation and the suspension of import and export can be handled at once through this cooperative agreement, it is possible to minimize damage to the already damaged company.
