Prerequisites for registration of designs
To achieve registration, a design must satisfy several prerequisites, including novelty and creativity:
- "Novelty" signifies that the design, before application, must not have been:
- included in publications or catalogues;
- publicised through sales or exhibitions; or
- exposed in any other manner such that somebody could identify it.
- "Creativeness" signifies that a person with ordinary skill in the art could not easily create a given design based on pre-existing internationally or domestically known designs, well-known shapes, patterns or colours, or any combination thereof.
Interplay between designs and trademarks
Even if the aforementioned requirements are satisfied, designs that are liable to create confusion over articles connected with another party's business cannot be registered and shall be invalidated if granted. Typical examples include designs that use another person's well-known trademarks, service marks, collective marks or business emblems (including 3D trademarks).
Here, a question arises as to whether a likelihood of confusion requires that there be similarity between the design article and the designated goods of the trademark. The court recently found that such similarity is not required in finding a likelihood of confusion.(1)
The registered design in question is shown in Figures 1-3 below and was for a "handbag accessory".
Figure 1: original 3D file
Figure 2: front view
Figure 3: side view
The case examined whether the plaintiff's registered design created a possibility of confusion with the defendant's products, relating to the trademarks shown in Figures 4 and 5, and if so, whether the plaintiff's registered design should be invalidated.
Figure 4: pre-existing trademark 1 (registered in classes 6, 9, 14, 18, 20 and 24)
Figure 5: pre-existing trademark 2 (registered in classes 14, 25 and 26)
Well-known or remarkably famous trademarks are protected, regardless of whether they are registered under the Trademark Act, by restricting the registration of any identical or similar marks. An application for the registration of a similar mark filed by a person other than the owner of such a well-known or famous trademark will be rejected and, if registration is erroneously granted, the mark will be subject to invalidation. The registration of a similar mark may also be rejected even if the goods of the trademark application are not identical or similar to those of the well-known or famous trademark due to the possibility of misleading consumers about the origin of the goods as well as anti-competitive practices.
Given the global brand recognition of Chanel, whether the defendant's pre-existing trademarks met the legal standards for being "famous" was not in question. Rather, the key issue was with respect to whether the plaintiff's registered design was likely to cause confusion over articles connected with the defendant's business.
The court ruled that there was indeed a possibility of confusion. The court's reasoning can be outlined as follows:
- The registered design comprised two overlapping circular rings similar to the English letter "O" and was closed overall, while the pre-existing trademarks consisted of two "C" shapes overlapping in different directions, with both sides open. The registered design showed five thin "O"-shaped rings that were connected to form a single ring, while the pre-existing trademark was in the shape of a thick, black English letter "C". The design differed from the trademark in that the two disk rings were combined in a ring shape to form a three-dimensional effect, while the trademark was flat and two-dimensional.
- A key similarity between the registered design in question and the pre-existing trademarks involved an intersection and overlapping of two characters featuring the same thickness, while both converged at the same angle.
- The area that intersected and combined symmetrically was the dominant aesthetic feature of both the trademarks and the design. The differences between them were too minor to offset the overwhelming similarity in their dominant aesthetic features. Therefore, overall, the two were similar enough to reasonably conclude that the design could create confusion over articles connected with the trademark owner's business.
It is important to note that the court rejected the plaintiff's argument that "the designated products on which the design is to be applied differ in purpose and function from the defendant's products, and are therefore unlikely to cause confusion". According to the court, as long as there is a possibility of confusion between the registered design and the articles connected with another party's business, the products of the registered design and the products of the pre-existing trademark are not required to be the same or similar for the purposes of invalidating the registered design.
However, there were two important additional factors that the court considered in reaching its decision. First, the plaintiff's product, in this case a handbag, comprised zippers, straps and materials that had been used in the same or a similar fashion to those of the defendant's products.
Second, the plaintiff's design had been separately applied for and registered as a trademark for the same design in class 18, which pertains to leather and leather imitation products and includes handbags.
Well-known trademarks are legally protected under both the Trademark Act and the Design Protection Act. According to the Trademark Act, any trademark likely to cause confusion with the goods or business of another person that is remarkably recognised by consumers is ineligible for trademark registration.
Similarly, the Design Protection Act states that the application of a design likely to cause confusion with an article associated with another person's business may be rejected if it is found to be to identical or similar to a pre-existing trademark. Here, as long as there is a possibility of confusion over articles connected with another person's business, the products of the design and the goods of the trademark are not required to be the same or similar for the purposes of rejecting a design application or invalidating a registered design.
When considering filing a design application, it is important to carry out a similarity search not only for prior designs but also pre-existing trademarks that are well known or famous in the market.
For further information on this topic please contact Ben Yuu at NAM & NAM by telephone (+82 2 753 5477) or email ([email protected]). The NAM & NAM website can be accessed at www.nampat.co.kr.