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Korean Court Case Report - 2010 - Trademark Law
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관리자
15-11-05 15:21
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Korean Court’s Decision on Trademark – The mark "The Magic
School Bus" is different from the mark "School Bus".
We have a decision of Korean court on the trademark infringement. The plaintiff was a Korean company while the defendant was a American one. Although the court is a district one (The Seoul Central District Court rendered November 26, 2010; Case No. 2009 GAHAP 138319), the decision has a significant meaning. This is why we introduce the decision.
A. Reason that a plaintiff filed a trademark infringement lawsuit against a
The Seoul Central District Court (hereinafter "Court") rejected a lawsuit for trademark infringement (Case No. 2009 GAHAP 138319) raised by a Korean company, DAE GYO CO., LTD. (hereinafter "Plaintiff") against a American company, SCHOLASTIC INC. and a Korean company, BIRYONGSO CO., LTD (hereinafter "Defendant") on November 26, 2010. The reason of the rejection is that the Defendant did not infringe the trademark right of the Plaintiff.
The background of the lawsuit for trademark infringement filed by the Plaintiff against the Defendant is as follows:
An American company, SCHOLASTIC INC. sold its book "The Magic School Bus", a series of scientific picture books for children, in Korea through a Korean company, BIRYONGSO CO., LTD., a exclusive distributor of SCHOLASTIC INC. A korean company, DAE GYO CO., LTD. filed a lawsuit against SCHOLASTIC INC. and BIRYONGSO CO., LTD. with the Seoul District Court on December 7, 2009. The grounds for the suit were that the title of SCHOLASTIC INC.' book, "The Magic School Bus" used by SCHOLASTIC INC. and BIRYONGSO CO., LTD. infringed the right for its registered trademark "School Bus", as the title of its book.
B. Details of decision of the Seoul District Court
(A) The Court acknowledged that the trademark "The Magic School Bus" of SCHOLASTIC INC. is also well-known in Korea.
The major reason the Court rejected the demand of the Plaintiff was that SCHOLASTIC INC.'s scientific picture book series for children, "The Magic School Bus" was already well-known worldwide.
The materials which the Court accepted for the fact that "The Magic School Bus" of SCHOLASTIC INC. was already well-known in Korea as well as in other foreign countries are as follows:
- On the year basis of 2007, "The Magic School Bus" of SCHOLASTIC INC. was sold approximately 53,000,000 copies worldwide since it was published.
- "The Magic School Bus" of SCHOLASTIC INC. was awarded various prizes in the areas of TV, publication and CD-ROM such as the 10 best books for children by PARENTING and the book of year for 2006 by Booklinks.
- "The Magic School Bus" was registered as a trademark outside of Korea in many countries including the United States.
- "The Magic School Bus" was broadcasted as animations by several broadcasting companies in Korea since it was broadcasted by EBS in Korea in 1997.
- According to the domestic papers, "The Magic School Bus" was reported as a million seller for the 21st century alongside the "Harry Potter" series.
Based on the above materials, the Court determined that the Defendant's "The Magic School Bus" was well-known among consumers in both foreign countries and Korea. It determined, therefore, that the Defendant's "The Magic School Bus", as a whole, shall be compared with the Plaintiff's "School Bus" as to the similarity each other, and the part "School Bus" of "The Magic School Bus" shall not be separated for the comparison with that of the Plaintiff.
(B) Plaintiff's "School Bus" is not similar to Defendant's "The Magic School Bus" in terms of appearance, pronunciation and meaning.
The Court determined the similarity of trademarks between the two parties as a whole. The Court stated that the two trademarks were different in terms of appearance and pronunciation because the trademarks contained a different number of syllables. The Court also stated that the trademarks were different in terms of meaning because the Defendant's "The Magic School Bus" had the intention of stimulating the interests of children by explanation of the principles of science while moving to body, past and universe in the bus whereas the Plaintiff's "School Bus" had a meaning of a school bus.
In conclusion, the Court made a decision: the Defendant's "The Magic School Bus" which was well-known in Korea should be compared with the Plaintiff's "School Bus" as a whole. As such, the two trademarks were not similar to each other in terms of appearance, pronunciation and meaning. Therefore, the Defendant's "The Magic School Bus" did not infringe the trademark right of he Plaintiff's "School Bus".
(C) The Plaintiff's registered trademark "School Bus" as a title of book does not effect its right to the Defendant's "The Magic School Bus" as a title of book.
The Court stated an additional reason for rejecting the demand of the Plaintiff's lawsuit. It stated that the title of the book could be used freely in principle by anyone even though the title was registered as a trademark. Therefore, the trademark right of the Plaintiff's "School Bus" as a title of book does not effect the Defendant's "The Magic School Bus" as a title of book. As a result, the Defendant's "The Magic School Bus" did not infringe the trademark right of the Plaintiff's "School Bus".
The above decision showed: 1) Although any trademark is a foreign one, its discrimination shall be acknowledged if it is well-known in Korea. In that case, the trademark shall be compared with other trademarks as a whole as used for determining the similarity; 2) The trademark right for the title of the book does not effect in principle the other party's title of book.
We have heard that the Plaintiff appealed the case to the Seoul High Court. However, we do not think the above decision would not be cancelled.
The Plaintiff’s appeal to the Seoul High Court was rejected on August 17, 2011 (Case No. 2011 NA 5204), and then further appeal to the Supreme Court was also rejected finally on January 24, 2013 (Case No. 2011 DA 76778).
* The above contents are protected by relevant Korean copyright law. Any part of the contents may not be reproduced or used commercially without prior written permission by the copyright holder. Thank you. *
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