Newsletter | December 2013
	Fame of COSTCO mark for large discount stores recognized in Korea
	Price Costco International Inc.  (“Costco”) operates large discount wholesale stores all over the world, and is the owner of registrations for the marks and , etc.  in Korea.  Kim & Chang recently represented Costco in a successful preliminary injunction action to enjoin third parties’ use of marks similar to COSTCO within Korea.
	Respondents had applied for the mark , and other similar marks (collectively “Subject Marks”), in anticipation of starting a large discount warehouse store, similar to Costco’s, in Korea.  Costco then filed a preliminary injunction action against the respondents arguing that respondents’ intended use of the Subject Marks amounted to trademark infringement and an act of unfair competition in violation of the unfair competition laws.
	Costco submitted extensive evidence establishing customer recognition of its COSTCO related marks within Korea, and strongly argued the bad faith intent of the respondents.  As a result, the Seoul Central District Court held in favor of Costco and issued a preliminary injunction.  However, the District Court specified that only the mark was widely recognized within Korea and somewhat limited the scope of the injunction.  Costco appealed this decision to the High Court requesting that the injunction be expanded to include other services and other marks belonging to the respondents.
	The High Court finally held that both the and marks are well-known in Korea in connection with the operation of large discount stores, and also expanded the scope of the injunction to include more marks which the respondents were expected to use (Seoul High Court Case No.  2012La1491, decided on April 23, 2013).
	This is a promising case for foreign companies doing business in Korea, as the court issued an injunction based on the opponent’s bad faith intent.  Rather than focusing on the fact that the compared marks had different pronunciations, the court recognized that the overall composition and color scheme of the mark was similar to Costco’s and was created with a bad faith intent to free ride off Costco’s goodwill.
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