[Valuable Intellectual Property] 3 Million Won Fine for Imitating Hair Roll... "Protect Your Design Rights"

Frequent Design Litigation in Contract and Transaction Relations
Evidence Collection Crucial... "Must Prove Intentionality"
SME Discounts, Design Applications and Registrations Around 50,000 Won

Recently, an influencer who copied and manufactured counterfeit products by imitating new designs from luxury brands such as Chanel was caught. Over three years from 2020, they sold counterfeit goods worth 34 billion KRW at genuine product prices, earning a total criminal profit of 2.43 billion KRW. This is the first case where the perpetrator was arrested for a design crime and the entire criminal proceeds were confiscated and preserved.

Imitating someone else's design without permission is clearly a crime. Unlike large corporations such as luxury brands, small and medium-sized enterprises (SMEs) must have their company representatives or designers directly protect their designs. Large companies have legal teams to handle disputes, but smaller companies often lack such resources.

In particular, designers who have moved from large corporations to startups or SMEs often face difficulties when they repeat past practices. For example, Company A, a large corporation, had a policy of not filing lawsuits even when discovering design infringements because initiating litigation would effectively promote the opposing company.

However, Mr. B, who left Company A to start his own business, encountered a design dispute and when questioned by the Patent Office’s Special Judicial Police, he said, "I never considered applying for design registration." While it is important for designers to study new design trends, they must also pay attention to securing design rights.

The Korean Intellectual Property Office recently apprehended a corporate design crime organization that had amassed criminal proceeds amounting to over 2.4 billion won. On the 14th, Kim Si-hyung, Director of the Industrial Property Protection Cooperation Bureau at the Korean Intellectual Property Office, held a briefing at the Government Complex Daejeon and unveiled the seized items.

The Patent Office has six Special Judicial Police officers specializing in design rights infringement cases, known as 'design investigators.' Since starting with trademark special judicial police in 2010, the Patent Office has expanded its scope to include patents, trade secrets, and design infringement cases. These design investigators typically have backgrounds in design, hold doctoral degrees in law, or are certified design engineers. Compared to regular police officers, they possess deeper knowledge of design basics, relevant laws, and the ability to assess design infringement. According to their annual performance, 122 people were criminally charged in 2021, 166 last year, and 181 up to August this year.

When a design infringement complaint is filed with the Patent Office, an investigator is assigned. The investigator collects evidence and determines whether infringement has occurred. We examined the importance of protecting and managing design rights with the cooperation of Team Leader Hyungwon Lee and investigators Seonghee Hong and Sumin Seo (from left in the photo) of the Patent Office’s Technology Design Special Judicial Police.

My Design Was Copied... How Should I Respond?

Did you know that design disputes often occur among acquaintances in contractual or transactional relationships? For example, a client company may secretly copy a design after refusing to sign a contract with a design specialist firm, or wholesalers may appropriate designs from small companies in the same industry.

Investigator Seonghee Hong explained, "Design often involves multiple participants such as the idea originator, prototype maker, and designer, which can complicate rights. It is important to clearly identify your role."

The best way to prevent disputes is to apply for and register design rights with the Patent Office. MisoIn Co., Ltd. developed a unique product combining the functions of a hair roller and clip. They completed design application and registration in 2018, but last year Company C copied the design and sold it on the market. MisoIn won the criminal lawsuit, and Company C was fined 3 million KRW.

Investigator Sumin Seo, who handled the case, said, "Common products like hair rollers are often overlooked for design registration, but as this case shows, registering the design is essential to protect rights." Many hesitate to apply for design registration thinking it will be expensive, but SMEs can receive a 70% discount on both application and registration fees. It is possible to complete from application to registration by the third year for around 50,000 KRW.

Hair rollers by Miso-in Co., Ltd., legally protected through design registration. They combine the functions of hair rollers and clips. [Source=KIPRIS Patent Information Search Service]

To Prevent Design Disputes... Keep Evidence

Once design registration is complete, it is important to keep 'evidence' to prepare for possible disputes. From the moment a collaboration or partnership begins, it is necessary to use recordable means such as emails. It is better to document agreements rather than rely on verbal communication. Many design infringements occur when collaboration or wholesale-retail relationships break down.

When infringement is discovered, a warning letter (certified content letter) should be sent. Registered mail is recommended. This notifies the infringer of the existence of your design rights. Investigator Hong said, "To punish, the infringer must be aware of the illegality and intent of the criminal act." In other words, punishment is possible when the infringer knowingly continues infringement despite awareness of the registered design rights.

It is also helpful to take photos of counterfeit products, investigate when sales began, and collect information on sales quantity and amounts. After sending a warning letter, it is important to check whether manufacturing and sales of infringing products continue.

Meanwhile, legal protection for designs is available under the 'Design Protection Act' and the 'Unfair Competition Prevention Act.' If the design is registered, protection is provided under the Design Protection Act. If the design is not registered but the product form has been copied within three years of creation, criminal punishment is possible under the Unfair Competition Prevention Act.