Hello, this is patent attorney Yongduck Kim of IPLEX IP Law Firm.
This case describes how IPLEX responded to a design infringement complaint and helped a seller resume sales of a suspended product. The key points are summarized below.
Following a design infringement complaint, Coupang restricted a product listing and suspended sales. A patent attorney's opinion supporting non-infringement helped restore the listing.
The client sold nipple covers and engaged IPLEX after a design complaint. IPLEX prepared an opinion that supported resumption of sales.
This article explains how sellers can respond to design infringement complaints on Coupang and presents cases in which sales were reinstated.
Incident Overview
The client sold nipple covers in a round metal case. The complaint alleged similarity to Design Registration No. 30-1282472.
The product at issue is shown below.
The registered design is as follows:
Due to Coupang’s policy, if an infringement of intellectual property rights is received, the sale of the product will cease immediately, and recovery will be difficult if you do not object. The customer requested the IPLEX IP Law Firm’s intellectual property rights service.
From the point of view of the public, it is possible to determine that the registered design and the sale products look similar and are actually design infringing.
IPLEX's review found that the asserted design had been registered after the client's product was already being sold. We prepared a non-infringement opinion addressing the circumstances of the registration, and sales resumed.
The opinion addressed the following grounds:
1. Design registration itself is invalid
The registered design has already been virtually identical to the product sold in the same form in the Naver Smart Store and China Online Mall since 2021. In accordance with Article 33 (1) of the Design Protection Act, the design already known is invalid.
2. Abuse of rights
Enforcing a design registration with clear invalidity grounds may constitute an abuse of rights and may not receive legal protection.
3. Freely usable prior-art design
The client’s product is almost the same as the existing announcement design, which can be freely used by anyone. This is also an important issue, not a design breach.
4. Products outside the right's effect
The products had been present in Korea before the design's filing date, supporting an exception under Article 94(1)(3) of the Design Protection Act.
5. A non-exclusive license based on prior use
The client's manufacture and sales before the filing date supported a statutory non-exclusive license based on prior use.
As a result of submitting a patent attorney opinion of IPLEX IP Law Firm to Coupang, Coupang acknowledges that the product is not subject to design infringement and re-authorizes the exposure and sale of the product.
Even after a design-related suspension, evidence of prior disclosure, design differences or qualifying prior use can support a response and help restore sales.
In other words, this is an example of a real-life case that led to a report of a design breach → stop selling → legal response → re-sale.
IPLEX IP Law Firm is specialized in the handling of infringement disputes related to design right , trademark and patent rights in Coupang, Smart Store, Amazon, etc.
IPLEX IP Law Firm is not just providing legal advice. As a partner in creating customer success together, we are ready to quickly and accurately address all issues related to intellectual property rights. In the future, as a strong supporter of our customers, we will create more success stories.
This article reflects the information available when it was published. Contact us to discuss your circumstances.