In South Korea, the design application system incorporates two different examination systems: the Substantive Examination System (SES) and the Partial-Substantive Examination System (PSES). The choice between these systems depends on the Locarno Classes assigned to the design articles.
The PSES is utilized for articles that are highly influenced by trends and have a short lifespan. These include foodstuffs (Class 1), clothing and fashion accessories (Class 2), travel goods (Class 3), textile products (Class 5), packages (Class 9), articles of adornment (Class 11), stationery and office equipment, as well as artists' and teaching materials (Class 19).
It is possible to file a multiple application encompassing up to 100 designs, provided that all the designs belong to the same Locarno class.
Upon request, a filed design can be kept confidential for a specific period. The applicant can make use of the Secret Design System, which allows the publication of a national design application to be postponed for a maximum of 3 years from the date of design registration in Korea.
Once a national design application is registered, the design can be protected for a duration of 20 years starting from the date of filing the application.
Filing an Application
(a) Requirements
To file a design application in South Korea, the following general requirements must be met:
i) The applicant's full name, address, and nationality.
ii) The designer's (creator's) full name, address, and nationality.
iii) The title of the design article.
iv) The Locarno class of the design article.
v) The materials used in the design article.
vi) Drawings that depict the complete appearance of the design article. The drawings can include line drawings, 3-D models, or photographs. Various views such as perspective, front, rear, right side, left side, top, bottom, and sectional views may be included.
vii) If priority is claimed, the details of the priority application (number, date, and country) and the priority document should be provided. Alternatively, the WIPO Digital Access Service (DAS) codes issued by the IP offices of the countries where the priority applications were filed can be submitted.
viii) A Power of Attorney (POA) signed by the applicant, if required.
(b) Claim of Priority
Under the Paris Convention or other international treaties based on bilateral or multilateral agreements, the right of priority can be claimed for a design application. To enjoy this right, an application must be filed in South Korea within 6 months from the filing date of the basic application.
The priority document should be submitted to the Korean Intellectual Property Office (KIPO) within 3 months from the filing date of the application. Alternatively, submitting the WIPO DAS codes issued by the IP offices of the countries where the priority applications were filed is sufficient, as long as these countries use the DAS code system.
(c) Claim of Exemption from Loss of Novelty
A design application can be filed within a 12-month grace period from the date of the first disclosure of the design anywhere in the world.
Claiming exemption from loss of novelty can be done at the time of filing the application or even after filing it. For example, exemption can be claimed when responding to a provisional refusal, opposing an application, or filing an Invalidation Trial Request.
Design of non substantive examination system
Early Publication upon Request
Upon request, the applicant has the option to request an early publication of the design application. In the case of an application for registration of multiple designs, the applicant can choose to publish all or only some of the designs included in the application.
Under the Korean Design Act, a published design application is granted special legal protection. Once the applicant's design application is published, they have the right to warn an alleged infringer and seek compensation. However, it's important to note that the compensation can only be secured upon the registration of the design.
Substantive Examination
(a) Initiation of Examination
Unlike patent or utility model applications, a separate request for examination is not necessary for substantive examination of design applications. Design applications are automatically subjected to examination based on their filing date. The examination process is typically completed within approximately one year from the filing date.
Expedited examination can be requested at the time of filing the design application if the design is currently being infringed by a third party or if the applicant is using or preparing to use the design. Expedited examination may also be available for urgent situations specified by the Design Act, such as designs related to the defense industry.
(b) Requirements for Registration
For a design to be eligible for registration under the Design Act, it must satisfy the following requirements:
i) Definition of Design: The design should fall within the scope defined in the Design Act, which considers a design eligible for protection as "the shape, pattern, color, or any combination thereof in an article that produces an aesthetic impression on the sense of sight." In other words, the design must be embodied in a tangible and movable article.
ii) Industrial Applicability: The design should be capable of being mass-produced using an industrial method.
iii) Novelty: The design must not be identical or similar to a design that was publicly known, worked, or published within or outside the Republic of Korea before the filing date of the design registration application.
iv) Creativity: The design should possess a level of creativity that would not have been easily conceived by a person with ordinary skill in the relevant field, based on shapes, patterns, colors, or combinations thereof that were widely known within the Republic of Korea.
v) Unregistrable Designs: The design should not fall under any of the categories of unregistrable designs listed in Article 34 of the Design Act. These include designs that disturb public order or good morals, designs identical or similar to national flags or emblems, or designs in a shape that is essential for the item's function.
If a design has been published, known, or used by the applicant themselves prior to the filing date of the design application, it is considered novel as long as the application is filed within a 12-month grace period from the date of the first disclosure.
To claim exemption from loss of novelty, an individual must submit a written statement to the Korean Intellectual Property Office (KIPO) at the time of filing the design application or even after filing it, such as when responding to a provisional refusal, opposing an application, or filing an invalidation trial request. Supporting documents substantiating the claim must also be submitted within 30 days from the filing date of the design application if the exemption is claimed at the time of filing, or within 30 days from the filing date of the response if the exemption is claimed in the response.
Rejection and Registration
If a design application falls under any of the grounds for rejection outlined in the Design Act, the Examiner is required to issue a notice of preliminary rejection. This notice includes the reasons for the rejection and grants the applicant an opportunity to submit a written opinion within a specified time limit.
If the examiner determines that there are no grounds for rejection or if they are persuaded by the applicant's arguments or amendments, a decision to grant registration will be issued. There is no publication for opposition of a design application under the Substantive Examination System (SES) after the substantive examination. However, once registration is granted, the design registration is published in the official gazette known as the "Design Registration under the SES Gazette."
If the examiner deems the applicant's arguments to be without merit and concludes that the grounds for rejection have not been overcome, a notice of final rejection for the design application will be issued.
Design under substantive examination system
Multiple Application
Under the Korean Classification of Products, which is based on the Locarno Classification, an applicant has the option to file a multiple design application covering up to 100 designs. However, these designs must all belong to the same class in the classification system.
For each design included in the multiple design application, individual descriptions are required. This entails submitting a set of drawings and indicating the creator(s) of each design. If priority is claimed for any of the designs, the relevant priority basis and supporting documentation must be provided for each design covered by the application.
Formality Examination and Registration
Under the Partial-Substantive Examination System (PSES), examiners perform a formality check and basic examination. The formality check ensures that the design application meets the necessary requirements, such as drawing specifications and industrial applicability. The basic examination focuses on determining if the design exhibits sufficient creativity based on well-known shapes, patterns, colors, or combinations thereof.
The formality check for design applications under the PSES is conducted in the same manner as the formality check under the Substantive Examination System (SES).
If the examiner identifies any grounds for refusal based on the aforementioned criteria, a preliminary refusal is issued. This notice states the reasons for refusal and provides the applicant with an opportunity to respond. The applicant can submit a written opinion or propose amendments within the designated time frame specified by the examiner.
If the examiner does not find any grounds for refusal, a decision to grant registration is issued.
Publication and Post-grant Opposition
After the design applicant pays the registration fee, the Korean Intellectual Property Office (KIPO) publishes a "Design Registration Gazette under the PSES" for the designs registered under the Partial Substantive Examination System (PSES).
Once a design is published in the Registration Gazette, any individual has the opportunity to file an opposition against the registration of the design within a period of 3 months from the publication date. The grounds for opposition align with the same requirements for registration under the Substantive Examination System (SES), which include assessing novelty, creativity, industrial applicability, and other factors pertaining to unregistrable designs.
Rights conferred to the design registration under the NSES
The exclusive rights granted to a design registration are identical under both the Partial Substantive Examination System (PSES) and the Substantive Examination System (SES).
However, if a design registration under the PSES is invalidated as a result of an opposition or invalidation trial, the registration will lose its effect retroactively. In essence, the invalidated design right will be considered to have never existed.
DAEILPAT
Design
The road to securing design registration in Korea is often as unique as your products, and we are here to guide you in the right direction.
Establishing design protection for the design of your products can have a significant commercial impact on your business, especially in today's world where product design plays a crucial role in captivating consumers and differentiating your offerings from competitors.
Design protection can be established for various products. While obvious examples include furniture, jewelry, and industrial equipment, it's important to note that design protection can also be applied to other products. For instance, it can be extended to the graphical user interface (GUI) of a software product or the pattern of a fabric. We recommend registering a design if you have invested time and resources into developing the design of your product and if it adds value to your offering.
Combining design protection with patent protection can provide robust protection for your product. This approach allows you to safeguard both the outer appearance and the technical functionality of your product, ensuring comprehensive protection.
Remember, protecting your designs in Korea can help safeguard your business interests and create a competitive advantage. By taking the necessary steps to register your designs and enforce your rights, you can maximize the commercial value of your products in the Korean market.
Learn more about Designs Registration and Protection in Korea
Benefits of Protecting Your Product's Visual Expression with a Design Registration in Korea
Registering your design in Korea offers numerous advantages for foreign companies entering the market. Here are the key benefits of design registration:
Market Positioning: By registering your design, you strengthen your market position in Korea. It enables you to prevent others from using your design, establishing your uniqueness and exclusivity. This sets your products apart from competitors and enhances your brand image.
Customer Confidence: A registered design adds value for both your company and customers. When customers see your registered design, they can trust that the origin and quality of the products are guaranteed. Over time, customers may develop a preference for your products, associating the design's quality with your brand. This builds customer loyalty and can drive repeat purchases.
Legal Protection: A strong design registration provides legal protection in Korea. It not only safeguards against identical designs but also against those that give the same overall impression. This broader protection ensures that competitors cannot create similar designs that confuse consumers. In case of infringement, you have the right to take legal action and seek financial damages from the infringing party.
Competitive Advantage: Design registration gives you a competitive edge in the Korean market. It prevents competitors from copying or imitating your design, preserving your unique selling point. This exclusivity can result in increased market share, higher sales, and improved profitability.
Brand Recognition and Value: A registered design contributes to brand recognition and enhances the value of your company's intellectual property portfolio. It demonstrates your commitment to innovation, design excellence, and protecting your creative assets. This can attract potential investors, partners, and licensees who value strong IP protection.
Licensing and Royalty Opportunities: A registered design opens up opportunities for licensing agreements. You can grant others the right to use your design in exchange for licensing fees or royalties. This can be a lucrative revenue stream and allow your design to reach a wider market without compromising your exclusivity.
By securing design registration in Korea, foreign companies can position themselves for success in the market. It establishes legal protection, enhances brand value, builds customer trust, and provides a competitive advantage, all of which contribute to long-term business growth and profitability.
If you have any questions or needs related to this, please feel free to contact us.
Read more:
- Utility Model System in Korea
- Copyright Protection in Korea for Works of Foreigners
- Protecting Trade Secrets in Korea
- Patent and Trademark Litigation in Korea
- Patent and Trademark Trial System in Korea
