We are therefore grateful to Kim and Chang (via the excellent Lexology newsletter) for reporting Dyson’s apparent victory for in Korea, where they obtained an interlocutory injunction under their patent and also under Korean unfair competition law. Some background from Lee International about the early stages of the case is here.
The patent was KR101038000, equivalent to EP2342466, but that’s another story - we are more interested here in the unfair competition aspect.
It appears that the relevant statute is the Korean Unfair Competition Prevention and Trade Secret Protection Act (Act No. 911 of December 30, 1961 as last amended by Act No. 9537 of March 25, 2009, "UCPA"), according to which one of the acts defined under Art 2(1) as unfair competition is:
(ix) an act of transferring, assigning, exhibiting, importing or exporting goods whose shape (referred to as the form, image, color, gloss or any combination of these, including the shape of any test product or product introduction) has been copied from the goods produced by another person. However, this provision does not apply to either of the following acts :
(a) an act of transferring, assigning, exhibiting, importing or exporting goods whose shape has been copied from other goods more than three years after the date on which the shape of the other goods was completed, such as when the prototype was produced;
(b) an act of transferring, assigning, exhibiting, importing or exporting goods whose shape has been copied from other goods that are identical to the goods ordinarily produced by another person (or from other goods whose function or utility is identical or similar to the goods ordinarily produced by another person);
More or less the same protection exists in Japan under Art 2(1)(iii) of the Unfair Competition Prevention and Trade Secret Protection Act (Act No. 911 of December 30, 1961 as last amended by Act No. 9537 of March 25, 2009), except that the three year term limitation under Art 19(1)(v)(a) runs from disclosure in Japan, whereas the Court in the Dyson case found that the term limit in Korea runs from the first disclosure anywhere in the world.
This is obviously reminiscent of the EU’s Unregistered Community Design system – with the crucial difference that so far as I can see, Korea and Japan do not exclude protection for designs first disclosed outside their own territories, as many think the EU right does. What, then, would have happened in this case if the geography were reversed, and a Korean company sought to enforce rights in the EU?
- The equivalent European patent is not yet off the starting blocks. The UK priority patent application is granted, but as the UK courts do not give interlocutory relief under patents that would not have achieved the desired result.
- Unregistered Community Design protection would be refused in many EU jurisdictions as the design was first disclosed outside the EU.
- Copyright and national unfair competition rules are unharmonised and vary wildly across the EU (neither would assist in the UK, nor would UK Unregistered Design Right be available for a Korean company).