|
DESIGN LAW
( 07/01/2001
: Revised Industrial Design Law )
Law No. 951, Promulgated on Dec. 31,
1961
As Last Amended by Law No. 5354, Aug. 22,
1997
CHAPTER I GENERAL PROVISIONS
Article 1 ーPurpose―
The purpose of this Law shall be to encourage
the creation of designs by ensuring their protection
and utilization, so as to contribute to the
development of industry.
Article 2 ーDefinitions―
The definitions of the terms used in this
Law shall be as follows:
(ァ) "design" means the shape,
pattern, or color, or a combination of these
in an article (including part of an article,
hereinafter the same except where Article 12
applies) which produces an aesthetic impression
in the sense of sight;
(ア) "registered design" means
a design for which a design registration has
been granted;
(ィ) "design registration" means
registration of examined or unexamined designs;
(イ) "examined design registration"
means registration of a design that subject
to examination as to whether it is completely
qualified for registration;
(ゥ) "unexamined design registration"
means registration of a design that is subject
to examination as to whether the application
for a design registration satisfies the requirements
for registration under this Law, with the exception
of the requirements that are not applied under
Article 26 (2).
(ウ) "working" of a design means
any act of manufacturing, using, assigning,
leasing, importing, or offering for assigning
or leasing (including the displaying for the
purpose of assignment or lease) the article
to which the design has been applied.
Article 3 ーPersons
Entitled to Obtain Design Registration―
(1) Any person who creates a design or his
successor shall be entitled to obtain a design
registration therefor in accordance with this
Law; however, employees of the Korean Intellectual
Property Office and the Intellectual Property
Tribunal shall not obtain design registration
during their employment at the Office except
in the case of inheritance or bequest.
(2) If two or more persons jointly create
a design, the right to obtain a design registration
shall be jointly owned.
Article 4 ーMutatis
Mutandis Application of Provisions of the Patent
Law―
The provisions of Articles 3 to 26 and 28
to 28-5 of the Patent Law shall apply mutatis
mutandis to designs. In such cases, "Article
132ter" in Article 6, 11 (1)イ, 15(1) and
17 of the same Law shall read "Article
67bis or 67ter".
CHAPTER II REGISTRABILITY OF DESIGNS
AND APPLICATIONS FOR REGISTRATION
Article 5 ーRegistrability
of Designs―
(1) Designs that 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).
(3) Notwithstanding paragraph (1), a design
registration shall not be granted where a design
for which an application for registration has
been filed is identical or similar to a part
of a design indicated in a specification, represented
in a drawing, photograph or sample attached
to another application for design registration
that was filed before and laid open or published
after the filing date of the aforesaid design
application.
Article 6 ーUnregistrable
Designs―
Notwithstanding Article 5, the following
designs shall not be registrable:
(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.
(イ) designs consisting solely of a shape
that is essential to secure the functions of
the article.
Article 7 ーSimilar
Designs―
(1) The owner of a design right or an applicant
for a design registration is entitled to obtain
a design registration which is similar only
to his registered design or design for which
an application for registration has been filed
(hereinafter referred to as the "principal
design") as a similar design (hereinafter
referred to as a "similar design").
(2) Paragraph (1) shall not apply where 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 one of
the subparagraphs of Article 5(1), it shall
be deemed that Article 5(1)(i) or (ii) shall
not apply to said design or a similar design
application filed by said design owner for a
period of six months from the date prescribed
in the applicable subparagraph under Article
5(1).
(2) A person who seeks to enjoy the provision
under paragraph (1) shall, at the time of filing
the application for a design registration, submit
an application for a design registration specifying
the purport of said intention to the Commissioner
of the Korean Intellectual 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 for an
examined design registration or an application
for an unexamined design registration with the
Commissioner of the Korean Intellectual Property
Office, stating the following:
(ァ) the name and the domicile of the applicant
for registration of a design (if a legal entity,
the name and the place of business);
(ア) the name and the domicile, or place
of business, of the agent, if any (if a patent
corporation, its title, and office location,
and the name of an appointed patent attorney);
(ィ) Deleted;
(イ) the article which is the object of the
design;
(イbis) whether the application is an application
for an independent design registration, and
whether the application is for a similar design
registration;
(ゥ) the registration or application number
of the principal design (only where the applicant
is applying for a design registration as a similar
design under Article 7(1));
(ウ) the name and the domicile of the creator
of the design; and
(ェ) matters prescribed in Article 23(3)
(only when claiming a priority right).
<Proviso Deleted>
(2) An application for an examined design
registration or the application for an unexamined
design registration under paragraph (1) shall
be accompanied by drawings of each design and
indicate the following:
(ァ) the article that is the object of the
design;
(ア) an explanation of the design and the
essentials of the creation;
(ィ) serialized numbering of the drawings
of the design (only if the application is for
a multiple design registration under Article
11(2))
(3) An applicant for a design registration
may submit a photograph, or sample of the design
instead of drawings as referred to in paragraph
(2).
(4) A person desiring to file an application
for an unexamined design registration shall
indicate in the application for an unexamined
design registration 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 an unexamined
design registration indicating the particulars
prescribed under paragraph (1)(i), (ii) and
each of the following subparagraphs:
(ァ) serialized numbering of the designs;
and
(ア) the particulars prescribed under subparagraphs
(iv) to (vii) of paragraph (1).
(6) Designs qualifying for an unexamined
design registration shall be limited to goods
designated by the Ordinance of the Ministry
of Commerce, Industry and Energy among goods
classified by Article 11(2). In the case of
the designated goods, an application may be
made only for an unexamined design registration.
(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 Commerce, 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 an examined design
registration shall relate to one design only.
(2) Any person desiring to file an application
for a design registration may do so only with
respect to the classes of articles prescribed
by the Ordinance of the Ministry of Commerce,
Industry and Energy.
Article 11bis ーApplication
for Multiple Design Registration―
(1) An application for an unexamined design
registration may be made for twenty designs
or less (hereinafter referred to as an "application
for multiple design registration"). In
such cases, each design shall be represented
separately.
(2) The scope of designs qualifying for application
for multiple design registration shall be designs
applied to goods under the same classification
as the classification of goods prescribed by
the Ordinance of the Ministry of Commerce, Industry
and Energy.
(3) A person desiring to file an application
for multiple design registration may file an
application for a similar design registration
falling within the category of a principal design,
together with the principal design.
(4) Where a person files an application for
multiple design registration of designs similar
to his registered design or a design for which
a design registration is applied, he may file
an application for a 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) Where a design relating to two or more
articles that are used together as a set of
articles, a design registration shall be granted
for the application as 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 Commerce, Industry and Energy.
(3) Deleted
Article 13 ーSecret
Designs―
(1) An applicant for a design registration
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 a design registration
is applied.
(2) A person desiring to make a request under
paragraph (1) shall, at the time of filing of
the application for a design registration, state
the designated period in the application and
submit it to the Commissioner of the Korean
Intellectual Property Office.
(3) The applicant for a design registration,
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 Intellectual 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 intervener in examination, opposition
to registration of an unexamined design, trial,
retrial or litigation proceedings relating to
a design identical with 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 Intellectual Property Tribunal.
(5) In cases concerning 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 a design registration 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 revoked or invalidated
by a trial decision for lack of entitlement
to obtain a design registration under the provisions
of Article 3(1), a subsequent application for
a design registration 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 revoked or invalidated; however, this
provision shall not apply if the subsequent
application is filed more than thirty days after
the decision to revoke or to invalidate it became
final and conclusive.
Article 16 ーFirst-to-File
Rule―
(1) Where two or more applications for a
design registration 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 a
design registration 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 a design registration
is withdrawn or invalidated, such application
shall, for the purposes of paragraphs (1) and
(2), be deemed to have never been filed.
(4) An application for a design registration
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 Intellectual
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 designated period,
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 Intellectual
Property Office or the President of the Intellectual
Property Tribunal 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 a design registration
may amend a specification or a drawing attached
to an application; provided that, the gist of
the specification and the drawing attached to
the original application has not been changed
before transmittal of the examiner's first decision
to either grant or refuse a design registration
under the provisions of Article 28 (hereinafter
referred to as "decision to grant or refuse
a design registration"). However, if a
request for a trial against the examiner's decision
to refuse a design registration is filed, the
applicant may amend the specification or the
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 the 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 18bis ーRejection
of Amendment―
(1) Where an amendment to a specification
or drawing attached to an application under
the provisions of Article 18 changes the gist
thereof, the examiner shall reject the amendment
by decision.
(2) Where a decision to reject an amendment
under paragraph (1) has been made, the examiner's
decision to grant or refuse a design registration
for the concerned application for design registration
shall not be rendered until a period of thirty
days elapses from the date of transmittal of
the certified copy of said decision.
(3) Where an applicant has requested a trial
under Article 67bis against a decision to reject
an amendment under paragraph (1), the examiner
shall suspend examination of the application
for design registration until the trial decision
has become final and conclusive.
(4) The decision to reject an amendment under
paragraph (1) shall be made in writing and shall
state the reasons therefor.
Article 19 ーDivision
of Applications for the Registration of Designs―
(1) A person falling under any of the following
subparagraphs may divide a part of his application
for a design registration into one or more new
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) Deleted.
(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 a design
registration under paragraph (1) may be made
within the time limit provided for amendment
under Article 18(1).
(4) Deleted.
Article 20 ーConversion
of Application―
(1) An applicant may convert his application
for a similar design registration into an application
for an independent design registration. In such
a case, the application for an independent design
registration shall be deemed to have been filed
at the time of filing of the application for
a similar design registration. 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 registration into
an application for a similar design registration.
In such a case, the application for a similar
design registration shall be deemed to have
been filed at the time of filing of the application
for an independent design registration. 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 decision to grant or refuse a design
registration or a trial decision on the initial
application for the design or the similar design
registration becomes final and conclusive.
(4) Deleted.
Article 20bis ーConversion
of Application for Registration of Unexamined
Designs, etc.―
(1) Where a person makes an application for
an unexamined design registration in respect
of articles subject to an examined design registration,
or vice versa, in contravention of Article 9(6),
he may convert the application for a design
registration into an application for an examined
design registration or an unexamined design
registration.
(2) An application for a design registration
converted by paragraph (1) shall be deemed to
have been made when an initial application for
a design registration is made. However, this
shall not apply for the purposes of Article
8(2) or Article 23(3) and (4).
(3) A conversion of an application under
paragraph (1) may not be made after decision
to grant or refuse a design registration or
a trial decision on the initial application
for a design registration has been made.
(4) Deleted.
Article 21 Deleted
Article 22 Deleted
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 a
design registration 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 Article 5 and 16.
Where a national of the Republic of Korea has
filed an application for a design registration
in a country which recognizes, under a treaty,
a right of priority for an application for a
design registration filed by nationals of the
Republic of Korea, and claims the right of priority
for the application for a design registration
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 a design
registration 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 a
design registration, 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 a design registration.
(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
Intellectual Property Office within three months
from the filing date of the application for
a design registration.
(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 an examined design registration
may request the laying open of his/her application
by the Ordinance of the Ministry of Commerce,
Industry and Energy.
(2) Where the request for the laying open
of an application is made under paragraph (1),
the Commissioner of the Korean Intellectual
Property Office shall lay open the design application
in the Design Gazette in accordance with Article
78. However, the Commissioner of the Korean
Intellectual 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 to grant or refuse a design
registration on the application for the design
registration have been transmitted.
(4) Deleted.
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
a design registration 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 design has
been laid open, to pay compensation in an amount
equivalent to what he would normally receive
for the working of the design registered or
a design similar thereto from 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".
(6) Where an application for a design registration
is abandoned, invalidated or withdrawn after
the laying open of the application, a decision
to refuse the design registration, a decision
to revoke a design registration under Article
29-5 (3), or a trial decision to invalidate
a design registration under Article 68 (except
where Article 68 (1)(iv) applies) has become
final and conclusive, the right under paragraph
(2) shall be deemed to have never existed.
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 registration of a
design 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 23quinquies
ーFurnishing of information―
Any person may furnish the Commissioner of
the Korean Intellectual Property Office with
information about a design for which an application
for design registration has been filed together
with evidence to the effect that the concerned
design is unregistrable under any of the subparagraphs
of Article 26 (1).
Article 24 ーMutatis
Mutandis Application of Provisions of the Patent
Law―
The provisions of Articles 38 to 41 of the
Patent Law shall apply mutatis mutandis to the
registrability of designs and to applications
for a design registration.
CHAPTER ゲ EXAMINATION
Article 25 ーExamination
by Examiner―
(1) The Commissioner of the Korean Intellectual
Property Office shall have applications for
a design registration and oppositions to an
unexamined design registration examined by an
examiner.
(2) The qualifications for the examiners
shall be prescribed by Presidential Decree.
Article 26 ーDecision
to Refuse Design Registration―
The examiner shall make a decision to refuse
a design registration where it falls under any
of the following subparagraphs (hereinafter
referred to as "reasons for refusal"):
(ァ) Where the design in the application
for a design registration is not registrable
in accordance with Articles 5 to 7, 9(6), 10
to 12, 16(1) and (2) of this Law or Article
25 of the Patent Law as applied under Article
4 of this Law;
(ア) Deleted.
(ィ) Where a person shall not be entitled
to obtain a design registration under the provision
of Article 3 (1), or where the design in the
application for a design registration is not
registrable under the proviso of Article 3 (1);
(イ) Where an application for a design registration
is in violation of the provisions of a treaty;
or
(ゥ) Where an application for a similar unexamined
design registration falls under any of the following
subparagraphs:
(a) where a design which is registered as
a similar design or a design for which a similar
design registration is applied, is indicated
as a principal design;
(b) where the term of the design right of
a principal design has expired; or
(c) where an application for a principle
unexamined design registration has been invalidated,
withdrawn or abandoned, or where a decision
to refuse a design registration becomes final
and conclusive.
(d) where an applicant for a similar unexamined
design registration is not identical with the
owner of a design right relating to a principle
design or an applicant for a principle design
registration.
(e) where a design for which a similar unexamined
design registration is applied is not similar
to a principle design.
(2) Notwithstanding paragraph (1), Articles
5, 7, 11(1), 16(1) and (2) shall not apply to
an application for an unexamined design registration
(except where the design is industrially applicable
under provisions other than those prescribed
in the subparagraphs of Article 5(1)).
Article 27 ーNotification
of Reasons for Refusal―
(1) When the examiner intends to make a decision
to refuse a design registration under Article
26, he shall notify the reason for refusal (referring
to reasons falling under any of the subparagraphs
of Article 26(1), hereinafter referred to as
"reason for refusal") to the applicant
for design registration, and give him an opportunity
to submit a written opinion within a designated
time limit.
(2) Where there are reasons for refusal with
respect to some of the designs in an application
for multiple design registration, the serial
number of the designs concerned, the article
that is the object of the design and the reasons
for refusal shall be indicated.
Article 28 ーDecision
to Grant a Design Registration―
Where an examiner finds no reason for refusing
an application for the registration of a design,
he shall render a decision to grant a design
registration.
Article 29 ーMethod
of Decision to Grant or Refuse a Design Registration―
(1) The examiner's decision to grant or refuse
a design registration shall be in writing and
shall state the reasons therefor.
(2) When the examiner's decision to grant
or refuse a design registration has been made,
the Commissioner of the Korean Intellectual
Property Office shall transmit a certified copy
of the decision to the applicant for the design
registration.
Article 29bis ーOpposition
to the Registration of an Unexamined Design―
(1) From the date of registration of establishment
of a design right under an application for an
unexamined design registration to three months
after the date of publication of an unexamined
design registration, any person may file an
opposition to the grant of the design right
with the Commissioner of the Korean Intellectual
Property Office based on the ground that the
registration falls under any of the following
subparagraphs. For registration of designs under
an application for multiple design registration,
an opposition may be filed for each design.
(ァ) where the design in the application
for a design registration is in violation of
Articles 5, 6, 7(1), 10, 16(1) and (2) of this
Law or Article 25 of the Patent Law as applied
under Article 4 of this Law;
(ア) where a person shall not be entitled
to obtain a design registration under the provision
of Article 3 (1) or the design in the application
for design registration is not registrable under
the proviso of Article 3 (1); or
(ィ) where an application for a design registration
is in violation of the provisions of a treaty.
(2) A person filing an opposition to an unexamined
design registration shall submit an application
for opposition to an unexamined design registration,
to the Commissioner of the Korean Intellectual
Property Office which shall state the following,
together with supporting evidence:
(ァ) the name and address of the person filing
the opposition against the unexamined design
registration (if a legal entity, the title,
place of business);
(ァbis) the name and the domicile, or place
of business, of the agent, if any (if a patent
corporation, its title, office location, and
the name of the appointed patent attorney);
(ア) the indication of the registered design(s)
subject to the opposition to an unexamined design
registration;
(ィ) the purpose of the opposition to an
unexamined design registration; and
(イ) the grounds for the opposition to an
unexamined design registration and indication
of supporting evidences.
(3) When an opposition to an unexamined design
registration is filed, the presiding trial examiner
appointed under Article 29quater(3) shall transmit
a certified copy of the opposition to an unexamined
design registration to the owner of the registered
design right subject to the opposition and give
him an opportunity to submit a written reply
within a designated time limit.
(4) The provision of Article 68(6) shall
apply mutatis mutandis to the filing of an opposition
to an unexamined design registration under paragraph
(1).
Article 29ter ーAmendment
to Grounds for Opposition to Unexamined Design
Registration, etc.―
A person filing an opposition to an unexamined
design registration may amend the grounds or
evidence indicated on the written opposition
to an unexamined design registration within
thirty days from the date of filing of the said
opposition.
Article 29quater ーCollegial
Body for Examination and Decision, etc.―
(1) A collegial body consisting of three
examiners shall examine and decide an opposition
to an unexamined design registration.
(2) The Commissioner of the Korean Intellectual
Property Office shall designate examiners constituting
a collegial body for each opposition to an unexamined
design registration.
(3) The Commissioner of the Korean Intellectual
Property Office shall appoint one of the examiners
designated by paragraph (2) as a presiding examiner.
(4) The provisions of Articles 144(2), 145(2)
and 146 (2), (3) of the Patent Law shall apply
mutatis mutandis to the collegial body of examiners
and the presiding examiner.
Article 29quinquies
ーDecision on Opposition to Unexamined Designs
Registration―
(1) The examiner shall make a decision on
the opposition to an unexamined design registration
after the time limits provided under Articles
29bis(3) and 29ter have lapsed.
(2) Notwithstanding Article 29bis(3), where
a person filing a opposition to an unexamined
design registration fails to submit the grounds
and evidence thereon, the presiding trial examiner
may reject an opposition to an unexamined design
registration by decision after the time limits
provided under the provisions of Article 29ter
have lapsed.
(3) Where it is deemed that an opposition
to an unexamined design registration has merit,
the collegial body of examiners shall make a
decision to revoke the registered design (hereinafter
referred to as a "decision to revoke a
design registration".).
(4) Where a decision to revoke a design registration
becomes final and conclusive, the design right
shall be deemed never to have existed.
(5) Where it is deemed that the opposition
to an unexamined design registration has no
merit, the collegial body of examiners shall
make a decision to maintain the registered design
(hereinafter referred to as a "decision
to maintain a design registration").
(6) No appeal shall be made against a decision
to refuse and/or maintain a design registration
to an opposition to an unexamined design registration.
Article 30 ーMutatis
Mutandis Application of Provisions of the Patent
Law―
(1) The provisions of Articles 58, 58bis,
61, 68 and 78 of the Patent Law shall apply
mutatis mutandis to examination of applications
for a design registration.
(2) The provisions of Articles 72, 73, 75,
76, 78, 141(1) to (3), 142, 148(ァ) to (ゥ),
(ェ), 154(8), 157, 165(3) to (6), and 166 of
the Patent Law shall apply mutatis mutandis
to examination or decision of the opposition
to an unexamined design registration.
CHAPTER IV REGISTRATION FEES AND
REGISTRATION OF DESIGNS
Article 31 ーDesign
Registration Fees―
(1) A person desiring to register the establishment
of a design right, or the owner of a design
right, shall pay the design registration fees
(hereinafter referred to as "registration
fees").
(2) Matters relevant to the payment of registration
fees, including the method and time limits for
payment of such fees under paragraph (1), shall
be prescribed by the Ordinance of the Ministry
of Commerce, Industry and Energy.
Article 31bis ーAbandonment
for Each Design at the Time of Payment of Registration
Fees―
(1) A person who receives a decision to grant
a design registration for an application for
multiple design registration may abandon some
individual designs at the time of payment of
the registration fees.
(2) Relevant matters relating to the abandonment
of a design under paragraph (1) shall be prescribed
by President Decree.
Article 32 ーPayment
of Registration Fees by an Interested Party―
(1) Regardless of the intent of a person
responsible for payment of registration fees,
any interested party may pay such fees.
(2) An interested party who has paid the
registration fees in accordance with paragraph
(1) may demand reimbursement of the fees from
the responsible party if such party is currently
making a profit.
Article 33 ーLate Payment
of Registration Fees―
(1) Any person wishing to register the establishment
of a design right, or the owner of a design
right, may make late payments of the registration
fees within six months from the expiration of
the payment period prescribed under Article
31(2).
(2) Where registration fees are paid late
under paragraph (1), an amount equivalent to
twice the registration fees shall be paid.
(3) If the owner of the design right or person
wishing to register the establishment of a design
right fails to pay the registration fees within
the extended period provided for under paragraph
(1), the application for a design registration
shall be deemed to have been abandoned or the
design right concerned shall be deemed to have
been extinguished retroactively to the time
when the initial period for payment of the fees
expired.
Article 33bis ーRestoration
of Application for Design Registration or Design
Right by Late Payment of Registration Fees,
etc.―
(1) Where a person desiring to register a
design right or an owner of a design right is
unable to pay the late registration fee for
reasons beyond his or her control within the
period for late payment under Article 33(1),
he/she may make late payment of the registration
fees within fourteen days from the date on which
the reasons for the delay cease to exist. However,
this provision shall not apply where six months
have elapsed since the expiration of the period
for late payment under Article 33(1).
(2) Where the registration fees are paid
late under paragraph (1), notwithstanding Article
33(3), the application for the design registration
shall be deemed not to have been abandoned and
the design right concerned shall be deemed to
have existed retroactively to the time when
the period for the payment of the registration
fees expired.
(3) The effects of an application for a design
registration or a design right under paragraph
(2) shall not extend to the act of working said
design or a design similar thereto by another
person from the date of expiration of the period
for late payment of the registration fees to
the date of late payment submittal of said registration
fees (hereinafter referred to as the "term
of limited effect").
(4) Where a person has, in good faith, been
commercially or industrially working or preparing
to work a design for which an application for
design registration has been filed, a registered
design, or a design similar thereto under paragraph
(2) in the Republic of Korea during the term
of limited effect, he/she shall have a non-exclusive
license for the design right concerned. However,
said non-exclusive license shall be within the
scope of the object of the design or business
that he/she is working or preparing to work.
(5) A person who has been granted a non-exclusive
license in accordance with paragraph (4) shall
pay reasonable remuneration as consideration
to the owner of the design right or the exclusive
licensee.
Article 34 ーOfficial
Fees―
(1) A person who files an application for
a design registration, makes a request or initiates
any other procedure shall pay the official fees.
(2) Matters relevant to the payment of official
fees, including the method and time limits for
payment of the fees under paragraph (1), shall
be prescribed by the Ordinance of the Ministry
of Commerce, Industry and Energy.
Article 35 ーReduction
or Exemption of Registration Fees or Official
Fees―
(1) Notwithstanding Articles 31 and 34, the
Commissioner of the Korean Intellectual Property
Office shall grant an exemption from the payment
of registration fees or official fees in the
following situations:
(ァ) official fees or registration fees in
relation to applications for a design registration
or design rights belonging to the State; or
(ア) fees for requests for an invalidation
trial made by an examiner under Article 60(1).
(2) Notwithstanding Articles 31 and 34, where
an application for a design registration has
been filed by an entitled person in accordance
with Article 3 of the National Assistance Law,
or a person prescribed by the Ordinance of the
Ministry of Commerce, Industry and Energy, the
Commissioner of the Korean Intellectual Property
Office may reduce or exempt from payment, the
registration fees equivalent to the first three
years for the registration of the establishment
of a design right and official fees as prescribed
by the Ordinance of the Ministry of Commerce,
Industry, and Energy.
(3) A person who wishes to take advantage
of reduced registration fees or exemption from
the payment of registration fees or official
fees in accordance with paragraph (2) shall
submit the documents prescribed by the Ordinance
of the Ministry of Commerce, Industry and Energy
to the Commissioner of the Korean Intellectual
Property Office.
Article 36 ーRefund
of Registration Fees, etc.―
(1) The registration fees and official fees
which have been paid shall not be refunded;
however, such fees are refundable upon the request
of the person making payment in the following
cases:
(ァ) Registration fees and official fees
which were paid by mistake;
(ア) Amount corresponding to the registration
fee for the year following the year in which
the decision on revocation or invalidation of
the design registration becomes final and conclusive.
(2) Where registration and official fees
have been paid incorrectly, the Commissioner
of the Korean Intellectual Property Office shall
make a notification to the party who paid said
registration and official fees
(3) The refund of the registration fees and
official fees as referred to in paragraph (1)(i)
may not be requested following the expiration
of one year from 2, and the amount corresponding
to the registration fee as referred to in paragraph
(1)(ii) is not subject to a refund from the
date on which the decision to revoke to design
registration becomes final and conclusive.
Article 37 ーDesign
Register―
(1) The Commissioner of the Korean Intellectual
Property Office shall keep a Design Register
at the Korean Intellectual Property Office and
shall register the following matters:
(ァ) the establishment, transfer, extinguishment
or restriction on disposal of a design right;
(ア) the establishment, maintenance, transfer,
modification, extinguishment or restriction
on disposal of an exclusive or non-exclusive
license; and
(ィ) the establishment, transfer, modification,
extinguishment or restriction on disposal of
a pledge on a design right or on an exclusive
or non-exclusive license.
(2) The Design Register under paragraph (1)
may be stored in whole or in part in electronic
format, such as on an electronic recording medium.
(3) Relevant matters relating to the particulars
and procedures of registration not provided
for in paragraphs (1) and (2) shall be prescribed
by Presidential Decree.
Article 38 ーIssuance
of Design Registration Certificate―
(1) When the establishment of a design right
has been registered, the Commissioner of the
Korean Intellectual Property Office shall issue
a design registration certificate to the owner
of the registered design.
(2) When a design registration certificate
does not coincide with the Design Register or
other documents, the Commissioner of the Korean
Intellectual Property Office shall, upon request
or ex officio, reissue the design registration
certificate with amendments, or issue a new
design registration certificate.
CHAPTER V DESIGN RIGHT
Article 39 ーRegistration
of Establishment of Design Right―
(1) A design right shall be effective upon
registration of its establishment.
(2) When the registration fees have been
paid in accordance with Article 31(1), or when
an exemption from payment of such fees or a
reduction of payment has been granted under
Article 35(1) or (2), the Commissioner of the
Korean Intellectual Property Office shall publish
the following particulars in the Design Gazette:
(ァ) the name and domicile of the owner of
the design right (if a legal entity, the title,
place of business);
(ア) the registration number of the design;
and
(ィ) the date of registration of the establishment
of the right.
Article 40 ーTerm of
Design Right―
(1) The term of a design right shall be fifteen
years from the date of registration of its establishment.
However, the expiration date of the term of
a design right relating to a similar design
shall be the expiration date of the term of
the design right relating to the principal design.
(2) Where a design registration is bestowed
to a lawful holder under Article 14 or 15, the
term of the design right under paragraph (1)
shall run from the day following the date of
registration of the design right previously
filed by the unentitled person.
Article 41 ーEffects
of Design Right―
The owner of a design right shall have the
exclusive right to work the registered design
and a design similar thereto commercially and
industrially. However, where the design right
is subject to an exclusive license, this provision
shall not apply to the extent wherein the exclusive
licensee has the exclusive right to work the
registered design or similar design under Article
47(2).
Article 42 ーDesign
Right Relating to Similar Designs―
A design right relating to a similar design
as defined in Article 7(1) shall be incorporated
in a design right relating to the principal
design.
Article 43 ーScope
of Protection of Registered Designs―
The scope of protection conferred by a registered
design shall be determined by the terms of the
specification in the application, the design
represented in a drawing attached to the application
or shown in a photograph or sample attached
to the application, and in the explanation of
the intent and purpose of said design.
Article 44 ーLimitations
of Design Right―
The effects of a design right shall not extend
to:
(ァ) use of the registered design for the
purpose of research or experiment;
(ア) vessels, aircrafts or vehicles merely
passing through the Republic of Korea or the
machinery, instruments, equipment or other accessories
used therein; or
(ィ) identical products existing in the Republic
of Korea at the time the application for registration
of a design was filed.
Article 45 ーRelationship
with Another Registered Design―
(1) Where the working of a registered design
would utilize another person's registered design
or design similar thereto, patented invention,
registered utility model or registered trademark
under an application filed prior to the filing
date of the application for the registration
of a design concerned, or where a design right
conflicts with another person's patent right,
utility model right or trademark right under
an application filed prior to the filing date
of the application for registration of a design
concerned, the owner of the design right or
exclusive or non-exclusive licensee shall not
work the registered design commercially or industrially
without the consent of the owner of the earlier
patent right, utility model right or trademark
right, except where Article 70 applies.
(2) Where the working of a design similar
to a registered design would utilize another
person's registered design or design similar
thereto, patented invention, registered utility
model or registered trademark under an application
filed prior to the filing date of the application
for the registration of a design concerned,
or where a design right of the design similar
to the registered design conflicts with another
person's registered design, patent right, utility
model right or trademark right under an application
filed prior to the filing date of the application
for registration of the design concerned, the
owner of the design right or exclusive or non-exclusive
licensee shall not work the design similar to
the registered design commercially or industrially
without the consent of the owner of the earlier
patent right, utility model right or trademark
right, except where Article 70 applies.
(3) Where the working of a registered design
or a design similar thereto would utilize or
conflict with another person's copyright, effective
prior to the filing date of the application
for registration of a design concerned, the
owner of the design right or exclusive or non-exclusive
licensee shall not work the registered design
or design similar thereto commercially or industrially
without the consent of the owner of the copyright.
Article 46 ーAssignment
and Joint Ownership of Design Right―
(1) A design right may be assigned. However,
a design right relating to a principal design
and a design right relating to a similar design
shall be assigned together.
(2) A joint owner of a design right may neither
assign his share nor establish a pledge upon
it without the consent of all the other joint
owners.
(3) Each of the joint owners may, except
as otherwise agreed by a contract among all
the joint owners, work the registered design
or similar design by himself without the consent
of the other joint owners.
(4) A joint owner may grant neither an exclusive
license nor a non-exclusive license under the
design right without the consent of all the
other joint owners.
(5) A design right which is registered as
a multiple design may be divided and transferred
for each design.
Article 47 ーExclusive
License―
(1) The owner of a design right may grant
an exclusive license on the design right.
(2) An exclusive licensee who has been granted
an exclusive license under paragraph (1) shall
have the exclusive right to work the registered
design or design similar thereto commercially
and industrially, to the extent provided for
in the license contract.
(3) An exclusive licensee may not transfer
the license without the consent of the owner
of the design right, except where it is transferred
together with the business in which it is worked,
or in the case of inheritance or other general
succession.
(4) An exclusive licensee may establish a
pledge or grant a non-exclusive license on the
exclusive license only with the consent of the
owner of the design right.
(5) The provisions of Article 46(2) to (4)
shall apply mutatis mutandis to exclusive licenses.
Article 48 Deleted
Article 49 ーNon-exclusive
License―
(1) The owner of a design right may grant
a non-exclusive license on his design right.
(2) A non-exclusive licensee shall have the
right to work the registered design and a design
similar thereto commercially and industrially
to the extent provided for in the Design Law
or by the license contract.
(3) The provisions of Article 46(2) and (3)
and Article 102(4) to (6) of the Patent Law
shall apply mutatis mutandis to non-exclusive
licenses.
Article 50 ーNon-exclusive
License by Virtue of Prior Use―
Where, at the time of filing of an application
for the registration of a design, a person has
created a design which is identical or similar
to the design in an existing application, without
having prior knowledge of the design in the
application, or has learned how to create the
design from another person, and has been working
the design commercially or industrially in the
Republic of Korea, in good faith, or has been
making preparations therefor, shall have a non-exclusive
license on that registered design or design
similar thereto. Such license shall be limited
to the design which is being worked, or for
which preparations for working have been made,
and to the purpose of such working or preparations.
Article 51 ーNon-exclusive
License Due to Working Prior to Registration
of Demand for Invalidation Trial―
(1) Where a person falling within any of
the following subparagraphs has been working
a design or a design similar thereto, commercially
or industrially in the Republic of Korea, in
good faith, or has been making preparations
therefor, prior to the registration of a request
for an invalidation trial of the design registration
concerned, without knowing that the design registration
is subject to invalidation, such person shall
have a non-exclusive license on that design
right or on the exclusive license existing at
the time when the design registration was invalidated,
but such non-exclusive license shall be limited
to the design which is being worked or for which
preparations for working are being made and
to the purpose of such working or preparations:
(ァ) the original owner of the design right,
where one of two or more design registrations
granted for the same or a similar design has
been invalidated;
(ア) the original owner of the design right,
where his design registration has been invalidated
and a design registration for the same or a
similar design has been granted to an entitled
person;
(ィ) in the cases referred to in subparagraphs
(i) and (ii), a person who, at the time of registration
of the request for an invalidation trial of
the design right that has been invalidated,
has been granted an exclusive or non-exclusive
license, or non-exclusive license on the exclusive
license, and such license has been registered.
However, a person falling under Article 118(2)
of the Patent Law as applied under Article 61
of the Design Law is not required to register
the license.
(2) A person who has been granted a non-exclusive
license in accordance with paragraph (1) shall
pay reasonable remuneration as consideration
to the owner of the design right or the exclusive
licensee.
Article 52 ーNon-exclusive
License After Expiration of Design Right, etc.―
(1) Where a design similar to a registered
one c | 