With Kim & Chang’s support, The Procter & Gamble Company (“P&G”) recently secured a Patent Court decision finding that P&G’s “PITERA” mark is famous in Korea, and successfully invalidated a third party’s similar mark “PITERA LASER (in Korean transliteration)” registered for services unrelated to cosmetics.

The adverse mark “PITERA LASER” was registered in Class 44 designating various medical services such as medical clinic services, physical examination services, dermatology, cosmetic and plastic surgery clinic services, etc.  P&G manufactures and sells skincare products under the globally renowned brand “SK-II,” and “PITERA” is used as a trademark as well as the name of the main ingredient in connection with SK-II products.  Therefore, P&G filed an invalidation action against the adverse mark before the Intellectual Property Trial and Appeal Board (the “IPTAB”).

The IPTAB recognized that the compared marks were similar to each other, and thus held that the dermatology and plastic surgery related services may overlap with cosmetics, which is the designated goods of the senior registered PITERA mark, and should be invalidated.  However, the IPTAB refused to invalidate the remaining unrelated services, such as medical clinic services and physical examination services, etc., because the mark PITERA was not famous to be accorded a scope of protection broad enough to cover all the designated services.  The IPTAB noted that there were no objective materials specified for PITERA only, such as advertisements or marketing expenditures.

P&G filed an appeal to the Patent Court where we argued that PITERA is often used with SK-II, and successfully persuaded the court to accept the evidence submitted showing the use of “SK-II PITERA” for purposes of determining the fame of PITERA.  We also offered compelling arguments regarding the economic relationship between the compared products and services by pointing out that the consumers of PITERA overlap with consumers that use general medical services and that some clinics also engage in cosmetic procedures. 

As a result, the Patent Court acknowledged the fame of the mark PITERA, and invalidated the remaining services designated under the adverse mark based on the risk of consumer confusion and the registrant’s bad faith intent.  As the registrant did not appeal, this decision became final.

P&G has now managed to secure a court ruling that its mark PITERA alone, and separate from SK-II, has substantial value.  Going forward, P&G can utilize this decision against other marks that imitate PITERA without the SK-II portion.