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BOOK CHON’s Success Story – 2013 – a U.K. corporation mark
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16-03-24 17:46
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This introduces a case which we, BOOK CHON, proceeded with and succeeded in. The plaintiff was a U.K. corporation and the defendant was a Korean corporation. We, BOOK CHON, represented the plaintiff.
 
The U.K. corporation filed a lawsuit for trademark infringement against the Korean corporation. Both Seoul Central District Court in the first instance, and Seoul High Court in the second instance, did not accept the claims of the U.K. corporation. However, the Supreme Court in the final instance, did accept the U.K. corporation's claims and judged that the Korean corporation infringed the U.K. corporation's trademark right. (The Supreme Court rendered March 28, 2013; Case No. 2010 DA 58261)
 
The summary of the decision of the Supreme Court is as follows:
 
(A) Conclusion: The marks (or patterns) which the plaintiff used on their pottery was not used as designs but as trademarks. Furthermore, the marks of the plaintiff are well-known to the domestic traders and consumers of the pottery.
 
a) Legal principles
 
The use of a design consisting of a shape or a pattern can be regarded as the use of a trademark where the design is used to perform the function of the trademark of indicating the origin of the products. And whether the design is used as a trademark should be determined by the relation of the products, the situation of the use of the trademark (position, size, etc. of the trademark on the products), the fame of the trademark, the user intention and the background of the use of the trademark, etc.
 
b) Facts of this subject
 
The plaintiff has the Korean trademark rights of the following marks (hereinafter "Plaintiff Marks"):
 
1.jpg2.jpg, 3.jpg
The plaintiff located the marks 1.jpgand 2.jpgat the center of their pottery, and located the mark 3.jpgat the brim of the pottery. Therefore, the pottery of the plaintiff appeared like 4.jpg .
 
The defendant is selling the pottery domestically by using the following marks (hereinafter "Defendant Marks"): 
 
무제-5 복사.jpg
6.jpg
7.jpg
8.jpg

 
 
 
 
 
c) Judgement under the above legal principles
 
In consideration of various kinds of situation, Plaintiff Marks were not mere designs of pottery, and it is determined that they were used as trademarks. In particular, the patterns of the plaintiff's pottery which leaves band is used as the brim and the patterns of flowers and butterflies are located at the center of the pottery like plaintiff's registered trademark 3.jpgand 4.jpg are well-known to the domestic traders and consumers of the pottery.
 
In view of the various kinds of situation, it is determined that the patterns used on the defendant's pottery were used as trademarks because they were used for the source of goods.
 
(B) Conclusion: The leave band pattern for the brim of the pottery among the Defendant Marks are very similar to the plaintiff's leaves band pattern registered trademark. Therefore, the defendant infringed the trademark right of the plaintiff.
 
a) Legal principles
 
A combined trademark consisting of more than two designs can be divided into each design part unless the designs are combined inseparably. And if one design part of the combined trademark is similar to the other trademark and thus there is a concern that the consumer misleads or confuses the origin of the products between the two trademarks, the combined trademark can be regarded as similar to the other trademark.
 
b) Facts of this subject
 
From the Defendant Marks, the leaves band pattern can be separated and magnified like: 9.jpg.
 
Also, from the Plaintiff Marks, the leaves band pattern can be separated and
magnified like: 10.jpg.
 
 
c) Judgement under the above legal principles
The above pattern of the defendant 9.jpgis very similar to that of the plaintiff 10.jpg
 
 
 in terms of appearance. Therefore, the leaves band pattern trademark of the defendant is similar to the plaintiff's registered trademark
3.jpg

 
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