Following an extremely hard-fought litigation waged in multiple courts, Attorneys Doo-Hyeong Lee, Dong-Hwan Kim and Seo-Young Kim of Dentons Lee succeeded in winning before the Korea Supreme Court, which upheld an earlier decision of the Patent Court in favor of their client, overturning a prior decision of the Korean Intellectual Property Office (KIPO), which found that the client’s product is within the scope of the registered design relating to a latch for fastening quick connectors.

The core issue of the case concerned how to determine the difference in form related to a product’s function when evaluating aesthetic features of a design. The opposing party argued that because the difference between its registered design and the product of our client is related to function, such difference must be seen as insignificant. In response, Dentons Lee presented precedent of the Supreme Court which ruled that even if a form of design is related to function, the significance of the morphological similarity must not be underestimated if there is an alternative form that could otherwise be selected, while submitting as evidence previous designs that adopted various alternative solutions for the functional element in question. Furthermore, focusing on the fact that the shape changes when a registered design is used, Dentons Lee additionally suggested another precedent of the Supreme Court which stated that the similarity of designs that naturally change their forms upon use because of function or property must be prepared in the same state before and after such change in forms. Based on this, the counsels of Dentons Lee compared the product of the client and the registered design for each stage of product use, making it further reveal the difference in aesthetic factors.

Recently in various industries such as machinery, textiles and electronics, an increasing number of parties are registering the designs of relatively simple to secure exclusive rights for the designs of those parts. These design right applications have given rise to a need to assess  of functional elements and judgment of changes in forms by use as critical issues in many design right infringement cases.

This case won by Dentons Lee holds additional significance in that the Patent Court and the Supreme Court had rendered conflicting rulings on major issues in recent design infringement cases. This decision may help to clarify the scope of rights secured in design infringement cases going forward.

About Dentons

Across over 80 countries, Dentons helps you grow, protect, operate and finance your organization by providing uniquely global and deeply local legal solutions. Polycentric, purpose-driven and committed to inclusion, diversity, equity and sustainability, we focus on what matters most to you. www.dentons.com