Image Design Application Strategy in Korea
Eric (Keewan) Koo, Muhann Patent & Law Firm (Korea)
A revised version of the Design Protection Act (“Act”) was implemented in 2021. Under the revised Act, there are two ways to obtain a design registration for an image design.
(1) image design without article (“image design”) – “image design” means a figure, symbol, etc. expressed by digital technology or electronic means [limited to those that are used for the operation of devices or that exhibit a function, and including parts of an image] (Article 2. 2-2 of Act). Previously, it was only possible to claim an image design, represented on a physical panel or screen as described below (2). Now it is possible to claim this kind of design on its own.
(2) image design on a physical panel or screen (“image design with article”) – “image design with article” means an image design expressed on part of an article (mainly a display device). Functionality is not a requirement.
- Judgement on similarity between image design and image design with article
According to the Examination Guidelines of the Korean Intellectual Property Office (“KIPO”), a design without article and a design with article are considered dissimilar (based solely on the absence/presence of an article) and accordingly, in principle, an image design and image design with article shall be judged dissimilar, even in case where the images per se are similar each other. Therefore, the rules related to novelty, etc. do not apply to a comparison between an image design and image design with article.
- Judgement on creativity between image design and image design with article
According to the KIPO Examination Guidelines, an image design (with or without article) application can be rejected on the basis that the design is easy to create, when the design comprises a publicly known image.
Supposing the images per se of an image design and image design with article are identical and/or similar to each other and supposing the possible use, function, actual use, etc. of the designs could be the same or similar, if the image of one image design is publicly known or being publicly worked, an examiner can determine that the other image design can be easily created from the publicly known or worked image.
- Image design application strategy in Korea
As explained, an image design and an image design with article are generally considered dissimilar due to the article or lack thereof, regardless of whether the images per se are similar or not. This guideline creates a potential problem, in the case where neither image is publicly known.
For the reasons presented above, if one party files an image design (without article) and later, before the image of that design becomes publicly known, another party files an image design with article, and the images per se are identical or similar to each other, theoretically, both the image design and the image design with article could be registered, even though the image design was filed first. In other words, under certain circumstances, a registration for an image design belonging to one party and a registration for a similar image design belonging to another party can exist at the same time.
Also, since the revised Act was recently implemented, there is no court decision yet that states the scope of rights of an image design covers the image design with article.
Therefore, to prevent the situation described above from occurring, when filing a design application for an image, a recommendation is to claim both the image design and the image design with an article together. If the application for the image design will claim priority based on a foreign image design application, an option is to file a separate application for the image design with article at the same time.
In the future, when there are sufficient precedents that define the scope of an image design without article, this strategy may no longer be needed. For now, however, while there is some uncertainty, claiming both forms is the safer approach.