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| IP Newsletter | Spring 2014 |
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TRADEMARK, DESIGN & COPYRIGHT |
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ANDROID Dessert Trademark Violates Google's Rights, Patent Court Holds |
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Google, Inc. names each major version of its Android operating system after a dessert (such as Cupcake, Donut, Éclair, Froyo, etc.). Now, in a recent decision involving the invalidation of an adverse registration for the Korean transliteration of the "Android" mark, the Patent Court has recognized Google's practice as a basis for acknowledging an economic relationship between the Android operating system and desserts/beverages in Classes 30 and 32. |
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On April 1, 2010, Neowiz Games Corporation ("Neowiz") filed a trademark application for "안드로이드," the Korean transliteration of "Android," in relation to stationery goods in Class 16, toys in Class 28, desserts in Class 30 and beverages in Class 32. Neowiz obtained a registration for the mark in Classes 16, 30 and 32 in August 2011. |
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Google subsequently filed a petition to invalidate Neowiz's registration, based on the fame of its "Android" mark and Neowiz's bad faith intent. However, the Intellectual Property Tribunal ("IPT") dismissed the petition, finding that the designated goods under Classes 16, 30 and 32 lacked a close economic relationship with the goods where Google has used its "Android" mark, and that Neowiz's bad faith intent therefore could not be established. |
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Google appealed the IPT decision to the Patent Court, which reversed the IPT decision and invalidated the "안드로이드" mark (Case No. 2013huh8307, decided on February 6, 2014). |
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The Patent Court concluded that Google's "Android" mark was already famous at the time Neowiz filed for the "안드로이드" mark, by considering the development of the Android operating system, Android's market share, continuous media exposure regarding Android, as well as the existence of the Google Store, which sells stationery-related goods. The Patent Court further ruled that the compared marks are identical in pronunciation, and that even though the mark "Android" is not a coined mark, there is no example of its use as a source identifier except in connection with Google. The Patent Court went on to rule that an economic relationship for trademark purposes exists not only between Android and stationery (due to sales of stationery bearing "Android" at the Google Store), but also for desserts and beverages, on the basis of Google's dessert naming convention for Android versions. |
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As a result, the court recognized the fame of Google's mark "Android" and ruled that Neowiz had a bad faith intent to free-ride off the goodwill of the mark, and held that the subject registration should be invalidated. |
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