With the recent activation of online platform sales, the intellectual property rights dispute is growing rapidly. In particular, large platforms, such as Coupang, often stop selling immediately without waiting for a separate hearing or judgment when a design right infringement report is filed.
IPLEX received an urgent request from a seller whose Coupang products had been suspended following a design complaint. The seller asked whether the products really infringed the claimed design.
This article is an introduction to how we responded and how we solved it, based on the actual case we were working on.
Case background: a laundry bag design complaint
The client sold laundry bags on Coupang.
<Sales Products>
However, a certain design right person insisted that the product was a copy of his own registered design, and Coupang stopped selling immediately.
<Registered Design>
The client considered the laundry bags to be ordinary products rather than copies. IPLEX began by comparing the registered design with the specific features of the client's product.
Legal Review 1 – Design Infringement Requirements
To be recognized for design infringement, the following requirements must be met:
- A valid registered design must exist.
- An identical or similar design must be used for identical or similar products.
- The user must lack authorization or another lawful basis for use.
- No applicable exception may exclude the product from the right's effect.
Therefore, it is not enough to simply claim that the appearance is the same, but above all, that the registered design is valid, and that the product is substantially similar.
Legal review 2 – reason for invalidation of the registered design
We found records of identical or similar laundry bags sold by multiple sellers in China several months before the design's filing date.
The evidence raised novelty and creativity issues under Article 33 of the Design Protection Act. We argued that the registration had clear invalidity grounds and that enforcing it in these circumstances constituted an abuse of rights.
Legal review 3: freely usable prior-art design
Another important logic is freely usable prior-art design. This is a design that everyone can use freely, which is already widely known.
The client’s product has already been published and sold abroad before the filing date. So it's a free-for-all design that belongs to the public domain, and it's not something that the rightholder can monopolize.
Legal Review 4 – Specific Comparisons Between Products
We compared the two designs in detail.
- - Client products (left): Black resin body, hexagonal pattern, blue mesh exposure only at the end.
- - Registered design (right): Full white mesh and ribbed textile, soft and three-dimensional appearance.
The designs differed in the location and extent of the mesh, the main body material and the resulting texture. We argued that their overall aesthetic impressions were distinct.
Our office response process
We prepared a patent attorney's opinion for Coupang, setting out the following arguments:
- The registration had clear invalidity grounds, making enforcement an abuse of rights.
- The client's product is subject to freely usable prior-art design.
- The two designs are essentially different.
The mere “rejection” appeal cannot convince Coupang. Therefore, it was important to systematically organize and submit legal, case-by-case, and specific comparative data.
On the other hand, we used our own know-how to put a lot of pressure on the design right person in the response, so that the design right person could voluntarily withdraw the claim of infringement. This is hard to come by for patent attorneys who do not fully understand the process of stopping sales in connection with the infringement of coupang intellectual property rights, and we have a 100% success rate in resuming sales after filling in the statement.
Resolution: sales resumed
Coupang reviewed our opinion and then lifted the client's sales stop. It became clear that the claim of infringement was unacceptable.
The client was able to continue the sale again and minimize the loss of sales. If the initial response was delayed, there would be a long-term cessation of sales, and the account itself would be at risk of being sanctioned.
Implications from the case
What we want to highlight in this case is:
A registration may still be vulnerable to invalidation. Its validity should be reviewed.
Specific comparisons are important. You need to be able to clearly show the difference between products.
Consider the freely usable prior-art design defense where the product follows an earlier public design.
Abuse of rights can be a strong defense where the asserted registration has clear invalidity grounds.
Especially because of the nature of the online platform, the “report first, review after sanctions” procedure is common, so it is difficult for sellers to respond alone without the help of experts.
This case reinforced that design complaints affect not only legal rights but also a seller's ability to continue trading.
If you have a similar issue, you need expert legal review and response documents, rather than complaining of your own injustice. We will continue to do our best to protect the rights of the seller and to prevent unnecessary abuse.
This article reflects the information available when it was published. Contact us to discuss your circumstances.