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IP Newsletter | Summer/Fall 2016
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TRADEMARK, DESIGN & UNFAIR COMPETITION
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"Improper Use" Is Improper No Matter When It Starts
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In Korea, one ground for cancellation of a registered trademark is for "improper use" of the trademark by the registrant or its licensee in a manner causing consumer confusion. One form of improper use can occur when one registers a mark, but then subsequently uses a different but similar mark to sell goods that also happens to be similar to another party's registered mark, thereby causing confusion with the other party's mark. Depending on the relative similarity of the utilized mark to each of the registered marks, it can be tricky to prove that the registrant intended to cause confusion and therefore cause the cancellation of the registered mark. In a recent Korean case involving Discovery Communication's ("Discovery's") DISCOVERY and DISCOVERY EXPEDITION marks, the infringer went a step further by using multiple marks similar to the DISCOVERY marks to sell goods, while selectively registering only the least similar mark, in the hope that this would effectively insulate his use of all of the marks.
Beginning in August 2012, the DISCOVERY marks were licensed by a Korean company and used to sell the "Discovery Expedition" brand of clothes in Korea, which immediately became quite popular:
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In 2013, an individual named Youn-houk Choi filed a trademark application for the  mark, which was directed to clothing and services related to sales of clothing and shoes. At the same time, Mr. Choi was using several other similar marks such as  ,  , and  to sell clothes on the market, such as the following:
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Mr. Choi made only nominal use of the mark itself, however.
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While Discovery opposed the registration of the mark at the Korean Intellectual Property Office ("KIPO") in view of its own registered DISCOVERY marks, KIPO rejected Discovery's opposition and allowed the registration to Mr. Choi, finding the mark sufficiently distinctive compared to the DISCOVERY marks. Discovery subsequently filed an "improper use" cancellation action against the mark at the Intellectual Property Trial and Appeal Board ("IPTAB"), on the basis of the confusion caused by Mr. Choi's use of the various marks similar to but different from his registered mark. The IPTAB agreed that this use amounted to "improper use" and cancelled the registration.
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On appeal, Mr. Choi tried to argue that the IPTAB decision was improper because he had been using all of the marks including the mark at the same time, before the mark had even been registered (so his use could not constitute "improper use" of a registered mark). He also pointed out that both KIPO and the IPTAB had agreed that the mark itself was dissimilar to Discovery's DISCOVERY marks, and thus that it was improper to cancel the mark based on alleged confusion with the DISCOVERY marks.
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However, both the Patent Court and the Supreme Court affirmed the cancellation decision. The Supreme Court specifically clarified that an "improper use" cancellation action applies where a party uses multiple similar marks but subsequently registers only one or a few, if the unregistered marks are causing consumer confusion (Supreme Court Case No. 2016Hu663). The Supreme Court thus rejected Mr. Choi's attempt to parse a legal loophole out of the "improper use" statute, and has now provided additional protection to registered trademark holders from intentional abuses of other registrations for the purpose of causing confusion.
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Back to Main Page
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If you have any questions regarding this article, please contact:
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For more information, please visit our website: www.ip.kimchang.com
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