자유실시디자인 항변의 판단 시 고려할 사항 - 대법원 2016. 8. 29. 선고 2016후878 판결 -

The Supreme Court Decision meaningfully dealt with the guideline for determining the similarity of designs and comparative prior art of the plea for free-to-work design in petition filed for the confirmation of the scope of a right under Design Protection Act Article 122. A similarity test is the one of the most difficult question of an intellectual property lawyers. Determining the similarity of designs is the key point for a substantive judgement with regard to the registration of the claimed design and the infringement of the design right. The decision considered the consistency in multiple similarity tests of each designs, such as registered design, the respondent’s design contended by the petitioner and comparative prior art, as a factor which has to be taken into account in determining the similarity of designs. Furthermore, the decision recognized that the designs which could have been easily created not only by ‘a shape, pattern, or color, or a combination thereof, widely known in the Republic of Korea’ but also by ‘a design publicly known or a combination of such designs’ were out of scope of registered design right. Thus, It is supposed that the design, added in nonobviousness provision in 2014, which could have been easily created by ‘a shape, pattern, or color, or a combination thereof, widely known in a foreign country’ is out of scope of registered design right also. Additionally, we think free-to-work design defense could be held regardless of comparison between the registered design and the respondent’s design.