[Decision on Trademark rendered by the Korean Supreme Court on January 12, 2017] 

1. Trademark Case in Question

A Japanese corporation ("A") owned the following mark which was well-known in Koreain relation to table tennis goods (the “Prior Used Mark”):

A Korean individual (“B”) registered the following mark which he used in relation to the marketing of bags (the “Registered Mark”):

 “A” filed a trial for invalidation of B’s Registered Mark with the Korean Intellectual Trial Board (the “KIPT”) based on Article 7(1)(xi) of the former Trademark Act which reads, in part, as follows:

Article 7(1) … a trademark falling under any of the following subparagraphs shall be unregisterable:

(xi) Any trademark which is liable to mislead or deceive consumers on the quality of goods.

2. KIPT (Case No. 2012 DANG 368)

The KIPT agreed with A’s position and rendered a decision to invalidate the registration of the Registered Mark on March 14, 2014.  The grounds for the decision were as follows:

i) With respect to whether the Prior Used Mark was well-recognized as indicating the goods of a particular person by consumers within the Republic of Korea, the KIPT held that the Prior Used Mark was in fact sufficiently well-recognized domestically among traders and consumers of table tennis goods at the time the Registered Mark was registered on October 30, 1995.

ii) With respect to the degree of similarity between the Registered Mark and the Prior Used Mark, the KIPT found that the Registered Mark was sufficiently similar to the Prior Used Mark.

iii) With respect to the business connection between A and B’s respective designated goods, the KIPT determined that the respective goods of A and B, namely bags and table tennis goods shared economic relevance.  Accordingly, by using the Registered Mark on its bags, B misleads or deceives consumers.

3. Patent Court (Case No. 2014 HEO 2535)

“B”filed an appeal of the KIPT’s decision with the Patent Court.  The Patent Court rejected the appeal on August 28, 2014.  The grounds of the Patent Court's decision were similar to those of the KIPT, as follows:

i)       The Patent Court accepted the KIPT’s first reason for refuting B’s argument.

ii) With respect to the similarity between the Registered Mark and the Prior Used Mark, the Patent Court held that the Registered Mark can be abbreviated to "butterfly" and is therefore similar to the Prior Used Mark in terms of sound and meaning,

iii) The Patent Court accepted the KIPT’s third reason for refuting B’s argument.

4. Supreme Court (Case No. 2014 HU 1921)

“B”filed another appeal, this time before the Supreme Court of Korea.  The Supreme Court accepted the appeal and overturned the case sending it back to the original court, the Patent Court, on January 12, 2017.  The grounds of the Supreme Court's decision were as follows:

i) The Supreme Court accepted the KIPT’s first reason for refuting B’s argument.

ii) With respect to the similarity between the Registered Mark and the Prior Used Mark, the Supreme Court held that the Registered Mark is different from the Prior Mark in terms of appearance. 

iii) With respect to the business connection between A and B’s respective designated goods, the Supreme Court held that the connection was weak.  In addition, the court found that “bags” were not similar to “table tennis goods.”

Based on these reasons, the Supreme Court concluded that by using the Registered Mark on its bags, B was not misleading or deceiving consumers concerning the source of the goods.

5. Our Comments

In Korea, it is difficult to invalidate a registered trademark based on the argument that the mark is similar to another person’s trademark and is being registered in an attempt to take advantage of the other trademark’s fame.

Instead, we recommend that a trademark owner who possesses a well-recognized trademark files and register their trademark on designated goods that may be susceptible to registration by another person seeking to imitate and take advantage of the original trademark’s fame.  This approach is more effective and inexpensive approach.

Copyright ⓒ BOOK CHON, 2017