Influence of functional parts when determining design similarity

Existing precedent
Decision 2016Hu1710
Takeaways

When determining the similarity of designs, how is a court's judgment affected when a design element has commonality with a functional element? A recent Supreme Court decision provides some insight into this question.

Existing precedent

The determination of whether designs are similar should be judged not by separating and contrasting the individual elements, but instead in accordance with the aesthetic sensibilities of a viewer observing and contrasting the designs as a whole. However, where the common parts of the designs are an intrinsic part of the product, or a basic or functional form of the design, such parts should be given low importance and the compared designs should not immediately be deemed identical or similar based only on the identity or similarity of such parts.(1)

Decision 2016Hu1710

Per existing precedent, in Decision 2016 Hu1710 (3 September 2020), relating to cargo vehicle toolbox designs, the Supreme Court ruled that where the common parts of compared designs are an intrinsic part of the product, or a basic or functional form of the design, such parts should be given low importance. However, the court additionally ruled that if it is possible to select an alternative form which can secure the function of the product (Figure 3), such form is not essential in securing the function of the product and instead simply relates to the function. As such, it should not be given low importance when determining the similarity of the designs just because it is related to the product's function.

In this case specifically, the court stated that the registered design in question and the preceding design had the following in common:

• a rectangular incision groove formed in the upper left corner of the body (Figure 1(1); Figure 2(a));
• the upper left part of the hinged door formed in the front of the body, cut at a 45º angle (Figure 1(2); Figure 2(b)).
• a long, inclined surface about the width of the hinged door, formed on the upper part of the body located at the top of the hinged door (Figure 1(3); Figure 2(c)); and
• a hemispherical concave groove formed obliquely at the rear centre of the right side of the body (Figure 1(4); Figure 2(d)).

The court stated that the parts in common were not seen as being essential in securing the function of the cargo vehicle toolbox and that, in commerce, consumers were expected to consider the aesthetic of the designs as a whole, including the common features of the above parts. Accordingly, such parts should not be given low importance when determining the similarity of the designs just because they related to the product's function, or were invisible after installation, and the similarity of the designs should be judged in accordance with the aesthetic sensibility felt when observing the designs as a whole, including such common parts.

The court went on to rule that while the registered design in question and the preceding design differed in respect of the following, when observed as a whole, the designs were aesthetically similar and should thus be regarded as similar designs:

• the narrow band protruding at the lower part of the concave elevation (Figure 1(5) versus no such protruding band (Figure 2(e));
• the rectangular concave surface formed in a horizontally long rectangle on the front of the hinged door (Figure 1(6)) versus the concave elevation being pentagonal, with triangular shapes protruding symmetrically on both sides of the concave elevation (Figure 2(f)); and
• the palm-of-the-hand-shaped figure and '5000' text expressed on the left side of the body and the lower right side of the hinged door (Figure 1(7)) versus no such parts (Figure 2(g)).

Takeaways

Looking at this precedent, it appears that the registered design in question was not strictly necessary to secure the function. Rather, as a selectable alternative form existed (eg, the known design shown in Figure 3), the registered design in question was not seen as essential in securing the function of the cargo vehicle toolbox and so should not be given low importance when determining the similarity between the designs.

In principle, if the common part of designs being compared is a basic or functional form of the product that has been widely used before the filing date of either design in the field to which the designs belong, the court should give low importance to such part when determining similarity. However, if the common part is not essential in securing the function of the product, when determining similarity between designs, the designs should be considered as a whole, including such common part.

Therefore, if there is commonality between a to-be-applied-for design and an existing design, where such common part is a basic or functional form of the product that has been widely used in the field to which the designs belong, it is necessary to consider whether:

• the designs differ except for such part;
• the common part is not essential; and
• the to-be-applied-for design as a whole, including such part, offers a different aesthetic sensibility to the existing design.

For further information on this topic please contact Jae-Sang Lim at NAM & NAM by telephone (+82 2 753 5477) or email (jslim@namlaw.co.kr). The NAM & NAM website can be accessed at www.nampat.co.kr.

Endnotes

(1) Supreme Court Decision 2003Hu1666; 14 October 2005.