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Newsletter | December 2013
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INTELLECTUAL PROPERTY |
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Trademark Use Recognized Despite Partial Use of an English and Korean Combination Word Mark |
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The Korean Supreme Court recently rendered a unanimous decision which expanded the scope of trademark use when defending cancellation actions based on non-use (Case No. 2012 Hu 2463, decided on September 26, 2013).
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According to the Korean Trademark Act (“TMA”), the owner of a trademark has a duty to use its trademark. In other words, unless there was a justifiable reason, a trademark registration may be cancelled if the registrant or its licensee does not use a mark identical to the registered trademark on any one of its designated goods within 3 years of the cancellation petition filing date (TMA Article 73(1)(iii)). Once the registration is cancelled, the registrant is also prohibited from applying for a similar/identical mark for a certain period (TMA Article 73(7)(v)).
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In the past, the Supreme Court viewed the scope of “a mark identical to the registered trademark” quite narrowly in cancellation actions of trademarks based on non-use. For instance, if the subject registration was comprised of an English word and its Korean transliteration, the court held that there was no use of the trademark if the registrant only used the English word portion without the Korean transliteration portion, or vice versa.
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However, the Supreme Court has overruled this existing precedent in its recent decision. In this case, the registrant had registered the mark  , but only used the English word portion,  . Nonetheless, the Court held in favor of the registrant recognizing that there was no cause for cancellation based on non-use. The Court reasoned that in cases of English and Korean combination word marks, trademark use may be acknowledged even if only the English word mark (or Korean transliteration) is used as long as ordinary consumers and traders would pronounce the mark in an identical manner and perceive the used portion as basically the same mark due to common business practices. |
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It is evident by this recent decision that the Supreme Court has taken into consideration current business practices, such as the Korean consumer’s increased exposure to the English language, the characteristic of the product and marketplace, as well as the increasing use of trademarks modified from their registered forms. Therefore, this case is meaningful because the Court has moved away from its mechanical analysis of whether the used mark is identical to the registered mark, and placing more importance on how the trademark is actually being used in the marketplace.
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