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Korean Court Case Report – 2013 - Trademark
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관리자
15-12-28 17:47
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BOOK CHON introduces herewith a recent important trademark decision made by the Korean Supreme Court briefly as follows. We hope this information would be helpful for your trademark cases in Korea and/or for your understanding the Korean Intellectual Property laws.
September 2013, the Korean Supreme Court rendered a very important decision on the trademark matter. (September 26, 2013 rendered; Case No. 2012 HU 2463) The gist is that the trademark in use which can be considered as the identical trademark with the registered trademark by the traders or consumers shall be also regarded, under trademark law, as the identical trademark with the registered trademark.
This case was on the cancellation of a trademark registration. This case was opened when a foreign corporation ("A" corporation) initiates a cancellation action based on non-use of a registered trademark against a domestic corporation ("B" corporation).
The "B" corporation had a registered trademark "CONTINENTAL, Korean transliteration of CONTINENTAL". However, it used the registered trademark like "CONTINENTAL, CONTINENTAL" on the designated goods. The "A" corporation filed a non-use cancellation trial with the Trial Board in the Korean Intellectual Property Office (KIPO) on the grounds that the "B" corporation did not use its registered trademark "CONTINENTAL, Korean transliteration of CONTINENTAL" for three years because the "CONTINENTAL, CONTINENTAL" mark was not an identical trademark with the registered trademark "CONTINENTAL, Korean transliteration of CONTINENTAL".
(C) Decisions by the Trial Board and the Korean Patent Court
The Trial Board of the KIPO and the Korean Patent Court (The "B" corporation filed an appeal before the Korean Patent Court against the unfavorable decision by the Trail Board.) made decision in favor of the "A" corporation because of the past decisions of the Korean Supreme Court. The decisions were that where anyone who had a trademark registration comprised of English and the Korean transliteration of the English part used any one of the two parts, he could not be considered as being used his registered trademark itself.
"B" corporation file an appeal against the unfavorable decision of the Korean Patent Court (It was rendered; Case Number was 2012 HEO 115) before the Korean Supreme Court.
(D) Final Judgment by the Korean Supreme Court
The gist of the Korean Supreme decision which accepted an appeal of "B" corporation and returned the case to the Korean Patent Court a the original court is as follows:
These days this is often case that anyone who had a trademark registration comprised of English and the Korean transliteration of the English part uses any one of the two parts in actual commerce. In this recent situation, if the identity between the trademark registration comprised of English and the Korean transliteration of the English part and the trademark in use comprised of any one of the two parts, it could cause any confusion to the belief of consumers or traders. Therefore, the identical trademark includes the trademark which can be considered as the identical trademark with the registered trademark as well as the registered trademark itself. (By this judgment, the previous judgments were all changed.)
This case fall under the case that the use of any part of the trademark comprised of English and the Korean transliteration of the English part can be regarded as the identical trademark with the trademark registration comprised of English and the Korean transliteration of the English part. The consumers or traders who saw the "CONTINENTAL, CONTINENTAL" mark could feel the same sound and meaning with those form "CONTINENTAL, Korean transliteration of CONTINENTAL". Hence, the use of the "CONTINENTAL, CONTINENTAL" mark by "B" corporation shall be regarded as the use of the registered trademark "CONTINENTAL, Korean transliteration of CONTINENTAL" by the "B" corporation.
This decision of the Korean Supreme Court has a very important significance. This time the Korean Supreme Court settled, by the decision, the confusion and dispute of the identity between the trademark registration comprised of English and the Korean transliteration of the English part and the trademark in use of any part of the trademark comprised of English and the Korean transliteration of the English part. Therefore, in the future, there is no worry for cancelling your registered trademark on the basis of non-use although you use any one of English part or the Korean transliteration of the English part instead of the registered trademark comprised of English and the Korean transliteration of the English part.
* 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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