Is Design Registration Worth It?
Design registration, which protects the visual appearance of products, is often perceived as less necessary and less effective than patent or trademark protection. This is because design rights have a narrow scope, making it difficult to claim infringement when even minor differences exist between designs.
Moreover, the very nature of product design—which makes searching for prior designs difficult—can sometimes lead to the invalidation of registered designs.
Why Register a Design?
Despite these challenges, it is better to register a design than not to register at all.
For original designs, registration is highly recommended. While the scope of protection may be limited, registration allows you to seek an injunction against use when imitations are found. Without registration, you have no enforceable rights, even for your own creations.
Strategic and Effective Design Registration
Given the short product cycles and high risk of imitation in many industries, a more strategic approach to design registration is essential. The Industrial Design Protection Act supports this by offering multiple systems to enhance protection.
One key example is the partial design system, which grants design rights to parts of an article. This system allows companies to register the most critical and distinctive design elements without covering the entire product.
Even if the overall appearance of the product differs, infringement can still be asserted where the key features of the registered design are imitated.
Example: Smartphone Case Design
For products like smartphone cases, registering essential design elements, such as unique shapes or patterns, provides stronger protection. In addition, proper management of article-specific designs and secret designs can help secure rights and control the timing of disclosure.
It is also important to establish a solid foundation by filing claims for exceptions to loss of novelty and taking steps to guard against invalidation.
Our Expertise
At Sarang IP Law Firm, we advise against pursuing design registration without careful consideration.
Sarang IP Law Firm works with overseas counsel and their clients to develop design registration strategies suited to each product, drawing on the systems available under Korean law to secure an appropriate and defensible scope of protection.
We are glad to advise foreign counsel on design protection strategy in Korea.
