On February 1, 2024, the Intellectual Property High Court (the “IP High Court”) delivered a pivotal ruling stating that using a trademark on a “mobile application providing electronic financial transaction services” constitutes the use of the trademark for “electronic financial transaction services” (the “Decision”).

In the past, when services were provided through mobile applications, there was no clear standard for determining whether displaying a trademark on a mobile application constituted the “use of the trademark for the application” or the “use of the trademark for the underlying service.” This ambiguity complicated the process of applying for trademarks intended for mobile applications, as it was unclear which category they should be registered under.

Additionally, questions arose about the practical implications of trademark use in mobile applications. Concerns included (i) whether there was a risk of trademark cancellation due to non-use if the registered trademark was designated only for services but used in mobile applications, and (ii) whether the owner of such a trademark could assert rights against third parties using similar trademarks on their mobile applications.

The plaintiff in the Decision owns the registered trademark “,” which designates “computer programs” in Class 9. Claiming that the defendant’s use of the mark “” (the “Disputed Mark”) on its electronic financial transaction application and check cards falls within the scope of the plaintiff’s rights in its registered trademark, the plaintiff filed a scope confirmation action against the defendant with the Intellectual Property Trial and Appeal Board (the “IPTAB”).

However, the IPTAB dismissed the plaintiff’s claim, ruling that the defendant’s use of the Disputed Mark constituted the use of its own registered trademark “” for electronic financial transaction services in Class 36. Consequently, the plaintiff filed an appeal with the IP High Court.

The IP High Court ruled that the Disputed Mark “” used by the defendant is substantively identical to its own registered trademark “.” Therefore, the court concluded that defendant’s use of the Disputed Mark on its mobile application and check cards indeed constituted the use of the defendant’s own registered trademark for “electronic financial transaction services” based on the following reasons:
 

Ultimately, the IP High Court upheld the IPTAB’s decision, finding the plaintiff’s claims unsubstantiated, and ruled in favor of the defendant. The plaintiff chose not to appeal the IP High Court’s decision, and the decision became final.

The Decision recognized the use of trademarks in mobile applications as an indication of “trademark use for designated services,” providing valuable legal insight into the meaning and assessment of trademark use in the context of mobile applications.

It is still worth noting that, in this case, the goods designated by the defendant’s registration specifically include the term “electronic” (i.e., electronic transaction services). It is unclear whether the IP High Court would have rendered the same decision had the defendant’s registration simply designated “transaction services.” We will have to wait and see how the IP High Court and/or the Supreme Court will decide on such cases going forward.

[Korean Version]