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CHAPTER II REGISTRABILITY
OF DESIGNS AND APPLICATIONS FOR REGISTRATION
Article 5 ーRegistrability of Designs―
(1) Designs which are industrially applicable
may be registered unless they fall under any
of
the following subparagraphs:
(ァ) 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;
(ア) 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
(ィ) 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).
Article 6 ーUnregistrable Designs―
Notwithstanding Article 5, the following
designs shall not be registerable:
(ァ) 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;
(ア) designs liable to contravene public
order or morality; and
(ィ) designs liable to give rise to confusion
with respect to articles connected with another
person's business.
Article 7 ーSimilar Designs―
(1) The owner of a design right or an applicant
for the registration of a design is entitled
to
obtain the registration of a design which
is similar only to his registered design or
design for
which a registration is applied (hereinafter
referred to as "principal design")
as a similar
design (hereinafter referred to as "similar
design").
(2) Paragraph (1) shall not apply in the
case of a design that is similar only to a similar
design registered or applied for registration
under paragraph (1).
Article 8 ーException to Loss of Novelty―
(1) Where a design owned by a person entitled
to a design registration falls within each
subparagraph of Article 5(1), it is deemed
that each subparagraph of Article 5(1) shall
not
apply to a design application filed within
six months from the applicable date of each
subparagraph of Article 5(1).
(2) A person wishing to be subject to paragraph
(1) shall submit an application for design
registration together with documents specifying
the purpose of the claim to the
Commissioner of the Korean Industrial 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 ーApplications for Registration―
(1) Any person desiring to obtain a design
registration shall file an application with
the
Commissioner of the Korean Industrial Property
Office, stating the following:
(ァ) the name and the domicile of the applicant
for registration of a design (in the case of
a
legal entity, the name and place of business
and the name of its representative);
(ア) the name and the domicile, or place
of business, of the agent, if any;
(ィ) the date of filing of the application;
(イ) the article which is the object of the
design;
(ゥ) the name and the domicile of the creator
of the design;
(ウ) the registration or application number
of the principal design (only when applying
for a
design registration as a similar design under
Article 7(1))
(ェ) matters prescribed in Article 23(3)
(only when claiming a priority right).
However, in case of a multiple design application
pursuant to Article 11bis, subparagraphs
(iv) to (vii) shall not be stated.
(2) The application under paragraph (1) shall
be accompanied by a drawing of the design
stating the following:
(ァ) the article which is the object of the
design;
(ア) an explanation of the design and essentials
of the creation
(ィ) serial number of drawings of the design
(only when applying for an application for
multiple design registration under Article
11(2))
(3) An applicant for registration of a design
may submit a photograph, model or sample of
the design instead of drawings as referred
to in paragraph (2).
(4) A person desiring to file an application
for registration of unexamined designs shall
indicate on the application for registration
of designs 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 registration
of designs, together with a specification of
multiple
designs containing matters falling under
each of the following subparagraphs:
(ァ) serial number of designs and drawings;
and
(ア) matters falling under subparagraphs
(iv) to (vii) of paragraph (1).
(6) Designs qualifying for registration of
unexamined designs shall be limited to goods
designated by the Ordinance of the Ministry
of Trade, Industry and Energy from among
goods classified by Article 11(2). In the
case of the designated goods, an application
may be
made only for registration of unexamined
designs.
(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 Trade, Industry and Energy.
Article 10 ー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 ーScope of One Application―
(1) An application for the registration of
an examined design shall relate to one design
only.
(2) Any person desiring to file an application
for the registration of a design may do so only
with respect to the classes of articles prescribed
by the Ordinance of the Ministry of Trade,
Industry and Energy.
Article 11bis ーApplication for Multiple
Design Registration―
(1) An application for registration of unexamined
designs may be made for twenty designs or
less (hereinafter referred to as an "application
for multiple design registration").
(2) The scope of designs qualifying for application
for multiple design registration shall be
designs applied to goods under the same classification
from the classification of goods
prescribed by the ordinance of the Ministry
of Trade, Industry and Energy.
(3) A person desiring to file an application
for multiple design registration may make an
application for registration of similar designs
falling within the category of a principal design,
together with the principal design.
(4) Where a person makes an application for
multiple design registration of his registered
designs or designs similar to those for which
an application is made for registration, he
may
make an application for multiple design registration
only with respect to similar designs
belonging to one principal design, notwithstanding
the provisions of paragraph (3).
Article 12 ーDesign of a Set of Articles―
(1) In the case of a design relating to articles
of two or more kinds that are customarily sold
or used together as a set of articles, an
application for the registration of a design
may be
filed for 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 Trade, Industry and Energy.
(3) An application for the registration of
a design under paragraph (1) may be granted
only
where the design incorporated in the articles
forming the set of articles falls under the
provisions of Article 5, 6, 16(1) and (2).
Article 13 ーSecret Designs―
(1) An applicant for the registration of
a design 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 an application
for registration is made.
(2) A person desiring to make a request under
paragraph (1) shall, at the time of filing of
the
application for registration of a design,
submit to the Commissioner of the Korean Industrial
Property Office a document stating the designated
period.
(3) The applicant for the registration of
a design, 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 Industrial Property Office
shall allow persons to have access to a design
kept secret under paragraph (1):
(ァ) where the request is made by a person
who has obtained the consent of the owner of
the design right;
(ア) where the request is made by a party
or an intervenor in examination, opposition
to
registration of unexamined design, trial,
retrial or litigation proceedings relating to
a design
identical or similar to the design kept secret;
(ィ) where the request is made by a person
who has clearly stated that he was warned of
infringement of the registered design; or
(イ) where the request is made by a court
or the Industrial Property Tribunal.
(5) In the case of 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 ーApplication for the Registration
of a Design Filed by an Unentitled Person;
Protection of Lawful Holder of Right―
If the registration of a design 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 ーDesign Registration Granted
to Unentitled Person; Protection of
Lawful Holder of Right―
If a design registration is revocated or
invalidated by a trial decision under the provisions
of
Article 68(1)(ii), a subsequent application
for the registration of a design 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 revocated or invalidated; however,
this provision shall not apply if the subsequent
application is filed more than thirty days after
the decision to revocate or to invalidate
it became final and conclusive.
Article 16 ーFirst-to-File Rule―
(1) Where two or more applications for the
registration of a design 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 the
registration of a design 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 the registration
of a design is withdrawn or invalidated, such
application shall, for the purposes of paragraphs
(1) and (2), be deemed never to have been
filed.
(4) An application for the registration of
a design 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 Industrial
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 period designated, the
applicants shall be deemed not to have concluded
to an agreement within the meaning of
paragraph (2).
Article 17 ーAmendment of Procedure―
The Commissioner of the Korean Industrial
Property Office or the presiding trial examiner
may order correction of a procedure relating
to a design within a designated period:
(ァ) 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;
(ア) where the procedure has not complied
with the formalities specified in this Law or
a
Presidential Decree; or
(ィ) where the fees required in accordance
with Article 34 have not been paid.
Article 18 ーAmendment to Application
and Change of Gist―
(1) An applicant for the registration of
a design may amend the specification or drawing
attached to an application, provided that
the gist of the specification and the drawing
originally attached to the application have
not changed, before the transmittal of the
examiner's first decision with respect to
the original application. However, if a request
for a
trial against the examiner's decision of
rejection is filed, the applicant may amend
the
specification or 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 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 19 ーDivision of Applications
for the Registration of Designs―
(1) A person falling under any of the following
subparagraphs may devide his application for
the registration of designs into two or more
applications.
(ァ) a person who has made an application
for registration of two or more designs in
contravention of Article 11;
(ア) a person who has made an application
for multiple design registration; or
(ィ) a person who has made an application
for registration of design for a set of articles
under Article 12(1).
(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 the
registration of a design under paragraph (1)
may be
made within the time limit provided for amendment
under Article 18(1).
(4) Where an application relating to a set
of articles under Article 12(1) has been divided
into
two or more applications under paragraph
(1), the original application shall be deemed
to
have been withdrawn.
Article 20 ーConversion of Application―
(1) An applicant may convert his application
for registration of a similar design into an
application for registration of an independent
design. In such a case, the application for
registration of an independent design shall
be deemed to have been filed at the time of
filing
of the application for registration of a
similar design. 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 into an application
for
registration of a similar design. In such
a case, the application for registration of
a similar
design shall be deemed to have been filed
at the time of filing of the application for
registration of an independent design. 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 ruling or a trial decision on
the initial application for the design or similar
design
registration becomes final and conclusive.
(4) If a conversion of an application is
made under paragraphs (1) and (2), the initial
application for the design or similar design
registration shall be considered to have been
withdrawn.
Article 20bis ーConversion of Application
for Registration of Unexamined Designs, etc.―
(1) Where a person makes an application for
registration of unexamined designs in respect
of articles subject to registration of examined
designs, or vice versa, in contravention of
Article 9(6), he may convert the application
for registration of design into an application
for
registration of unexamined or examined designs.
(2) An application for registration of design
converted by paragraph (1) shall be deemed to
have been made when an initial application
for registration of design is made. However,
this
shall not apply for the purposes of Article
8(2) or Article 23(3) and (4).
(3) A conversion application under paragraph
(1) may not be made after the ruling or decision
on the initial application for registration
of design has been made.
(4) In the case of a conversion application
under paragraph (1), the initial application
for
registration of design shall be deemed to
have been withdrawn.
Article 21 ーConversion of Patent or Utility
Model Application into Application for the
Registration of a Design―
(1) An applicant for a patent or the registration
of a utility model may convert his patent or
utility model application into an application
for registration of a design. However, the
conversion shall not be carried out after
the expiry of thirty days after the service
of the
examiners' first decision rejecting the patent
or utility model application.
(2) Where such conversion of an application
is carried out pursuant to paragraph (1), the
application for registration of a design
shall be deemed to have been filed at the time
of filing
of the patent or utility model application.
However, this provision shall not apply for
the
purposes of Article 8(2) or Article 23(3)
and (4).
(3) Where such conversion of an application
is carried out pursuant to paragraph (1), the
patent or utility model application shall
be deemed to have been withdrawn.
(4) The thirty day period prescribed in the
provision of paragraph (1) shall, when the time
limit
for filing a trial against a rejection of
an application has been extended in accordance
with
Article 15(1) of the Patent Law or Article
15(1) of the Patent Law applied mutatis mutandis
under Article 3 of the Utility Model Law,
be deemed to have been extended likewise.
Article 22 ーSpecial Provisions Concerning
Conversion of an Application Relating
to an International Application―
(1) Notwithstanding Article 21, an international
application considered to be a patent
application under Article 199(1) of the Patent
Law may not be converted into an application
for the registration of a design before the
fees under Article 82(1) of the said Law have
been
paid, and the translated version under Article
201(1) of the said Law has been submitted (in
respect of an international application considered
to be a patent application under Article
214(4), before the decision under the said
Article has been made).
(2) Notwithstanding Article 21, an international
application considered to be an application
for
the registration of a utility model may not
be converted before the fees under Article 17(1)
of
the Utility Model Law have been paid, and
the translated version under Article 37(1) of
the
said Law has been submitted (in respect of
an international application considered to be
an
application for the registration of a utility
model under Article 44(4) of the said Law, before
the decision under the said Article has been
made).
Article 23 ー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 the registration
of a design 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 Articles 5(1) and 16. Where a national of
the
Republic of Korea has filed an application
for the registration of a design in a country
which
recognizes, under a treaty, a right of priority
for an application for the registration of a
design
filed by nationals of the Republic of Korea,
and claims the right of priority for the application
for the registration of a design 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 the registration
of
the design 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 the
registration of a design, 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 the registration of
a design.
(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 Industrial Property Office within
three months from the filing date of the
application for registration of a design.
(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 ーLaying Open of Application―
(1) An applicant for a registration of examined
design may request the laying open of his/her
application by the Ordinance of the Ministry
of Trade, Industry and Energy.
(2) Where the request for the laying open
of an application is made under paragraph (1),
the
Commissioner of the Korean Industrial Property
Office shall lay open the design application
in the Design Gazette in accordance with
Article 78. However, the Commissioner of the
Korean Industrial Property Office may not
lay open the application in cases where the
design
falls under any of the following subparagraphs:
(ァ) is liable to contravene public order
or morality; or
(ア) 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 on the application for the design
registration have been transmitted.
(4) Any person may, when the application
is published under paragraph (1), furnish the
Commissioner of the Korean Industrial Property
Office with information, together with
evidence to the effect that the design concerned
is unregistrable under Articles 5, 6 or 16.
Article 23ter ー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 registration
of the design 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
invention has been laid open, to pay compensation
in an amount equivalent to what he would
normally receive for the working of the registered
design or a design similar thereto as of 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".
Article 23quater ー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 the registration
rights of designs 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 24 ーMutatis Mutandis Application
of Provisions of the Patent Law―
The provisions of Articles 38 to 41 and 51
of the Patent Law shall apply mutatis mutandis
to
the registrability of designs and to applications
for the registration of a design.
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