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| IP Newsletter | Spring 2014 |
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TRADEMARK, DESIGN & COPYRIGHT |
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No Goods Left Behind: Invalidating Bad Faith Filings |
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The Supreme Court recently overturned two decisions by the Patent Court, which only partially invalidated bad faith registrations similar to well-known marks. In both cases, the Patent Court invalidated the registrations only as to goods/services economically related to goods/services covered by the well-known marks, while leaving them valid for goods/services that had no such economic relationship. The Supreme Court's decisions in the 바비퀸 ("Barbie Queen" in Korean transliteration) case (Case No. 2013Hu1986 rendered on January 23, 2014) and  case (Case No. 2013Hu2484 rendered on February 27, 2014) send a strong signal to lower level courts that similar registrations which are found to have been filed with unfair competitive purposes should be invalidated in their entirety, not only for goods/services specifically related to the famous mark. |
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Invalidation Ground for Bad Faith Filings |
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Under Article 7(1)(xii) of the Korean Trademark Act ("TMA"), it is possible to invalidate a mark which is similar to a mark already known to consumers as another's identifier on the basis that it was filed with an unfair competitive purpose (i.e., in bad faith). |
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When this provision was first introduced in the TMA, Korean courts evaluating the bad faith element would take into consideration several factors, including whether the designated goods/services of the attacked mark were similar to the goods/services associated with the source identifier. At first, courts would commonly invalidate marks under this provision entirely even if the compared goods/services were dissimilar and had no economic relationship. Over time, and particularly in the last few years, courts have increasingly demanded evidence of an economic relationship between the compared goods/services before invalidating a mark in full. The Patent Court's recent decisions in the 바비퀸 ("Barbie Queen") and cases amply illustrate this new tendency. |
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No More Goods Left Behind |
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In the 바비퀸 ("Barbie Queen") case, the Patent Court invalidated the bad faith 바비퀸 filing as to most of its designated goods and services based on the mark's similarity to the famous BARBIE mark. However, the Patent Court refused to invalidate the 바비퀸 mark for services that the owner of the BARBIE mark had been unable to prove were economically related to the goods and services sold under its brand, such as "Correspondence courses" and "Tattooing, Visagists' services, etc." In the case, the Patent Court only partially invalidated the challenged mark as to certain goods, based on the fame of the Louis Vuitton  mark, but affirmed the validity of the challenged mark for "gut for making sausages, goods for pet animals, sticks, and harness, etc." |
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The Supreme Court vacated both decisions, indicating that a similar registration filed in bad faith should be invalidated in its entirety even if some of the designated goods/services for the challenged registration are not economically linked to the goods/services sold in connection with the other party's source identifier. |
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Both cases have been remanded to the Patent Court for review based on the Supreme Court's decisions. |
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