Introduction

In a recent design infringement case brought by Ezaki Glico against Lotte Confectionery, the Seoul Central District Court issued a now-final decision that substantially strengthens the protection for registered designs in South Korea. The court ruled that Lotte's use of similar packaging for a confectionery product that was similar to Glico's not only infringed Glico's registered packaging design, but also violated the dead copy and catch-all provisions of the Unfair Competition Prevention and Trade Secrets Protection Act, even though Glico's product had not yet been sold in South Korea.1

Facts

In October 2012 Glico started selling Bâton d'or cookies in Japan in a style of packaging that can be seen here on the original article.

It registered a design for the packaging in South Korea in April 2013. In October 2014 Lotte launched a limited edition of its Premier Pepero products in South Korea in similar packaging, as shown here on the original article.

Glico sued for a permanent injunction against Lotte, alleging that Lotte's product infringed its registered design rights in the Bâton d'or packaging and constituted unfair competition under the act.

Decision

The court found in favour of Glico. The court rejected Lotte's argument that Glico's design lacked novelty and originality over prior designs,3 ruling that Lotte's product infringed Glico's registered design rights due to the similarity of the packaging.

The court also ruled that the dead copy provision in the act was breached through Lotte's close copying of Glico's packaging, even though Glico's Bâton d'or product was not marketed in South Korea. Lotte argued that the fact that the Bâton d'or product was not sold in South Korea meant that Glico's business interests in South Korea had not been not demonstrably harmed (and thus did not qualify for relief under the act). However, the court did not take such a narrow view, noting that it was reasonable to conclude that Glico's business interests would be harmed for the following reasons:

  • The parties were direct competitors in the same industry.
  • Glico was already selling a similar confectionery product in South Korea (under the name Pocky).
  • It was sufficient for the purposes of the act that Glico intended to start selling the Bâton d'or product in South Korea in the near future, even if there were no existing sales.
  • There was a likelihood of confusion between Glico's products and Lotte's products, due to Lotte's infringement of Glico's registered design.

The defendant also breached the catch-all provision of the act, which is intended in part to protect a plaintiff's substantial investment of time and money in developing its business against unfair exploitation by others. The court recognised Glico's substantial effort and investment in developing its packaging and found that because Lotte had clearly copied Glico's product, it was unfairly profiting from Glico's investment, in violation of the act.

Comment

This case illustrates the value of design registrations in protecting the appearance of products against copycats. While the act's dead copy protection is limited to a three-year period from the date on which the original product was created, owners of registered design rights need not worry about any such limitation. Moreover, the act requires that plaintiffs have sufficient business interests in South Korea in order to be protected. Although the court in this case held that such business interests are not limited to actual sales, having a design registration in South Korea eliminates any uncertainty as to whether a company's designs qualify for protection.