IP & Art

The term "trade dress" was made public through an intellectual property dispute between Samsung and Apple. In the lawsuit, Apple claimed that the rounded corners of Samsung's smartphones were patent infringement because it was a design patent they had registered.

In order to understand Apple's claim, it is necessary to understand the difference between the US intellectual property law and Korea's related laws.

In the United States, designs and utility models are not protected under separate laws like Korea, but are recognized as one of the objects of protection under the Patent Act. In Korea, intellectual property rights are protected by the Design Protection Act, the Trademark Act, and the Unfair Competition Prevention Act.

Trade dress generally refers to the design of elements constituting the appearance or image of goods or services provided to potential buyers, such as packaging, labels, signs, and decorations. This is a legal term recognized according to case law in the United States. To put it more simply, it is a dress worn for trade such as goods or services. In this sense, the rounded corners of the smartphone can be seen as one of the trade dresses. Representative examples of the most well-known trade dresses are the bottle shape of Coca-Cola and the statue of grandfather doll of KFC.

However, trade dress is unfamiliar because it is not a legal term recognized in the Korean legal system. On the other hand, in the United States, trade dress is protected as a design patent or trademark under federal law, and under state law, under the Unfair Competition Prevention Act and common law tort laws.

Trade dress can be protected as a design patent and trademark at the same time, but the important point is that the trademark registration should be done after design registration. This is because novelty is a requirement in order to be registered as a design patent.

However, under federal trademark law, trade dresses can be registered or protected even if they are not registered. This is because, unlike Korea, there are regulations such as the Unfair Competition Prevention Act in the Federal Trademark Act, which protects even unregistered trade dresses. Each state in the United States has its own anti-unfair competition laws like Korea's Unfair Competition Prevention Act.

In contrast, in Korea, trade dresses are protected by the Design Protection Act, the Trademark Act, and the Unfair Competition Prevention Act. In particular, by protecting three-dimensional trademarks and color trademarks in the Trademark Act, certain trade dresses can be protected through trademark registration. If the trademark is not registered, it can be protected under the Unfair Competition Prevention Act in the case of a trade dress with publicity (widely known), etc. Furthermore, the recently inserted provisions of the recent Unfair Competition Protection Act,  which is  a general provision, the so-called 'CHA MOK' provision, may provide a rather wide range of protection.

What are the requirements for a trade dress to be established? In summary, in order for a trade dress to be established, the visual appearance of the product or packaging, which means the source of the product, to the consumer, must have intrinsic distinct characteristics or secondary distinct characteristics by use. However, there should be no functional element in such distinct characteristics.

For example, the U.S. Supreme Court denied whether a pillow-shaped meal cereal could be considered a trade dress. Recognizing this, if a competitor replaces the cereal with a different shape, it will increase cost and decrease quality, so the pillow shape is considered functional.

In the digital age, website layout can also be recognized as a trade dress. This is because the appearance that affects website visitors, that is, individual elements such as glyph, text, image, blank space, background, color and picture, or the external image in the form of a combination thereof, must be protected by law. However, a more detailed legal review will be required for those that have already been widely publicized or recognized and have no differentiation, or are simply ideas that should be shared by the public.

In this regard, Korean courts have ruled that pop-up advertisements on Internet web pages can be protected under the Unfair Competition Act. In other words, if the form and composition of a pop-up window are recognized as indicating the source of a pop-up advertisement widely recognized in Korea, and the use of imitation of the pop-up window causes confusion as if it is a well-known pop-up advertisement business activity, it is considered a violation of the Act.