트레이드드레스 보호의 소극적 요건으로서의 기능성 -미국 CAFC 2015. 5. 18. 선고 Apple v. Samsung 판결을 중심으로-

Trade dress can be protected within the system of the intellectual property law in Korea as well as in the United States. In the U.S. it can be protected as design patents and/or Federal Trademark Law irrespective of the registration of the marks, while in Korea it can be the subject matter of Design Protection Act, Trademark Act and the Unfair Competition Act. As distinctiveness acknowledged, trade dress can be protected as registered and/or unregistered trademark in the U.S. while it can be protected as either registered trademark under the Trademark Act or well-known sign under the Unfair Competition Act of Korea. The paper addresses the functionality doctrine as an exclusive requirement for the protection as a trade dress focusing on the recent U.S. federal decision on the Apple v Samsung case. The federal court approves the utilitarian functionality of the trade dress while the trial court approved neither utilitarian functionality nor aesthetic functionality of the trade dress on the external shape of the smart phone. In Korea, the Apple did not complain the trademark infringement, while infringement of registered design right was claimed, which is attributable to the lack of registration of the trade dress as a trademark in Korea. Though the non-functionality of the design is required by the Design Protection Act, the functionality of the design was not claimed by the defendant. In the end, the alleged product was decided not to infringe the registered design of the Apple based on the substantial difference of the designs. The so-called chopstick case partly addressed the functionality of the design as a one factor affecting the determination of the infringement of registered design. Doctrine of functionality which is well established in the U.S. and consistently applied to restrict the scope of trademark, vitally serves to determine the boundary of the scopes among patent, design and trademark. More affirmative application of the doctrine in Korea is proposed.