CONTENTS
- 1. Design Protection Act | Concept and Legislative Intent
- - Key Terms of the Design Protection Act
- - Subject Matter of Design Protection
- 2. Design Protection Act | Registration Procedures
- - Standards for Determining Design Right Infringement
- - Management of Design Right Expiration and Duration
- 3. Design Protection Act | Main Legal Sanctions for Design Right Infringement
- - Civil Claim for Damages
- - Claim for Return of Unjust Enrichment
- - Claim for Injunction Against Infringement
- - Criminal Punishment
- 4. Design Protection Act | Strategies for Preventing and Responding to Corporate Design Right Risks
- - Checklist for Preventing Corporate Legal Risks
1. Design Protection Act | Concept and Legislative Intent
The Design Protection Act is a law that legally protects a ‘design,’ which consists of the shape, pattern, or color of an article, or a combination of these.
Beyond mere aesthetic appearance, its purpose is to grant exclusive rights to a person who has created a design with marketability and commercial value, and to prohibit the unauthorized use of such a design.
Through the Design Protection Act, a company can protect the distinctive appearance of its own products, and it should take care not to infringe the design rights of others.
As the commercial value of product design has grown rapidly in recent years, the scope of application and effectiveness of the Design Protection Act have been strengthened.
Key Terms of the Design Protection Act
1. Design
This includes not only the article as a whole but also a part of the article, typefaces, and images (UI, icons, digital graphics, and the like).
Recently, not only the external appearance of a product but also digital content and the UI design of mobile apps may be protected, so it is a concept that should be considered during the product development stage of a business.
2. Typeface
Because typefaces are also protected under the Design Protection Act, separate design registration should be considered to legally protect the design of a proprietary brand font or a product-name logo.
3. Image
In particular, this includes digital UI, icons, and display graphics that are used to operate a device or that are necessary for it to perform its functions.
For example, an automobile navigation UI, a smartwatch screen design, or a mobile app menu icon may also be subject to protection, so IT and digital companies should be aware of this concept.
4. Registered Design
Only a registered design can receive legal protection against infringement by others, so it is important to verify whether a design is registered and to file an application before a product is launched.
5. Design Registration
Design examination registration : a procedure that registers a design after examining all registration requirements, such as novelty, creativity, and industrial applicability
Design partial examination registration : a simplified procedure that examines only some requirements before registration (mainly applied to numerous designs and series-type designs)
A business may choose the appropriate method between the two procedures and file accordingly, depending on its product strategy.
6. Working
In the case of an article design : the act of producing, distributing, selling, importing or exporting, or exhibiting a product
In the case of an image design : the act of producing, using, or providing online a UI, icon, app screen, and the like, or trading related media
This concept of “working” is a key criterion in determining whether a design right has been infringed.
Subject Matter of Design Protection
A ‘design’ protected under the Design Protection Act refers to the shape, pattern, color, or any combination of these of an article that can be perceived visually.
This includes not only traditional product shapes but also UIs (user interfaces), fonts, application icons, and the exterior appearance of structures.
Following the 2021 amendment, the scope of protection was expanded to include ‘partial designs of an article’ and ‘image designs,’ and in practice it is necessary to review in advance whether a design is registrable.
2. Design Protection Act | Registration Procedures
To have rights in a design protected under the Design Protection Act, registration must be completed according to the following procedure.
A design application proceeds by submitting an application to the Korean Intellectual Property Office and obtaining registration after a deferment of publication of up to one year and a request for examination.
At the time of filing, ‘novelty,’ ‘creativity,’ and ‘industrial applicability’ are required as requirements, and a design that lacks ‘novelty’ in particular will be refused registration, so a thorough prior design search is needed in advance.
A company should consider filing at an early stage of development in order to protect the design of its products in advance.
Standards for Determining Design Right Infringement
Whether a design right has been infringed is assessed based on the ‘overall aesthetic similarity’ between the protected design and the product at issue.
In practice, the overall impression, the similarity of the core form, and the likelihood of confusion from the perspective of traders and consumers are evaluated comprehensively.
Companies should periodically review whether their own designs are similar to competitors' products and prepare a response strategy in the event of a dispute.
Management of Design Right Expiration and Duration
A design right is maintained for 20 years from the filing date and requires payment of the registration establishment fee.
To maintain the right, a company should designate a department for management, set up reminders for annual fee payment deadlines, and review whether to strategically re-file or abandon the right before the term of the right expires.
In particular, for industries with long product life cycles, early re-filing relative to competitors may be necessary before the right expires.
3. Design Protection Act | Main Legal Sanctions for Design Right Infringement
The following outlines the principal legal sanctions that may apply in cases of design right infringement.
Civil Claim for Damages
The first right that a design right holder may exercise against an infringer is a claim for damages.
The amount of damages may be calculated based on ① the profit gained by the infringer, ② the loss suffered by the right holder, and ③ statutory damages, and courts have recently tended to recognize higher damages for design infringement.
Claim for Return of Unjust Enrichment
The holder of a design right may also claim the return of unjust enrichment in respect of the profit gained by the infringer through the act of infringement.
In particular, pursuing a claim for the return of unjust enrichment alongside civil damages can produce a dual-claim effect, which may increase a company's prospects of recovering its losses.
Claim for Injunction Against Infringement
The holder of a design right may seek an injunction against the infringer prohibiting the production, sale, import and export, display, and online provision of the products, and the court may grant such a claim and even order the disposal or recall of all infringing products, the closure of production facilities, and the blocking of online services.
In design disputes, an injunction against infringement is a key means of exercising one's rights to prevent the expansion of harm.
Criminal Punishment
Design right infringement may be punishable by imprisonment for up to 7 years or a fine of up to 100 million won.
Where the act was committed for profit or on a habitual basis, imprisonment and a fine may also be imposed concurrently.
4. Design Protection Act | Strategies for Preventing and Responding to Corporate Design Right Risks
To prevent the risk of design right infringement, a company should establish the following system.
① Management of design right registration : Before launching a product, register the company's own design under the Design Protection Act, and check for the existence of similar designs through searching and analyzing other companies' registered designs.
② Prior review of design right infringement before product launch : Confirm in advance, through expert review, whether the shape, pattern, or color is similar to a design right holder's registered design, so as to forestall the possibility of a dispute.
③ Prompt securing of evidence when infringement occurs : Secure evidence early by purchasing a competitor's infringing product, taking photographs, and collecting online materials, in order to prepare for future civil and criminal proceedings.
④ Establishment of a process for exercising civil and criminal rights : Establish an internal process for systematically operating the identification of the distribution channels of infringing products, the dispatch of warning letters to infringers, civil claims for damages and injunctions, and criminal complaint procedures.
⑤ Response to protection of digital and graphic designs : For UI, mobile applications, and display screen designs, which have recently increased, also actively secure rights and conduct infringement checks in parallel.
If you need legal advice related to the Design Protection Act, please consult our firm's attorneys handling intellectual property matters.
Checklist for Preventing Corporate Legal Risks
Checklist Item | Key Review Points | Result (O/X) |
|---|---|---|
Confirm whether the company's product designs are registered | Confirm whether the products, packaging, UI, typefaces, and screen designs currently in use are registered |
|
Investigate the design registration status of competitors and similar businesses | Conduct a preliminary investigation of whether similar designs are registered and of the possibility of infringement (prepare a design rights investigation report) |
|
Check for disclosure or sale before filing the design application | Confirm whether the product was publicly disclosed, sold, or promoted before filing, in order to prevent loss of novelty of the design |
|
Manage the term of registered design rights | Manage the term of the design right (20 years from the registration date) and check whether renewal is needed |
|
Confirm whether design right assignment or license agreements have been concluded | Check whether design right use agreements and license agreements have been concluded and registered |
|
Review the possibility of design infringement when developing new products | Before launching a new product or service, review whether similar designs exist and whether rights are infringed |
|
Establish a system to prevent unauthorized use of the company's designs | Regularly monitor whether product designs are misappropriated on online shopping malls, SNS, and partner companies |
|
Prepare a response process for when design right infringement is found | Detection of infringement → sending a warning letter → preparing for an injunction and claim for damages proceedings |
|
Design protection training for employees and designers | Provide training on the basics of the Design Protection Act, maintaining novelty, procedures for acquiring rights, and the like |
|
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