Kim & Chang successfully secured dismissal in preliminary injunction proceedings for the client, a longstanding domestic importer and distributor of foam roller products from a US fitness equipment company. The injunction was initiated by another domestic importer and distributor alleging trademark infringement.

The US company’s “R” foam roller effectively relieves post-exercise muscle tension, and recognized for its performance and quality, has maintained a steady consumer base in Korea for over a decade. One of the importers, who had been importing and distributing the US company’s “R” foam roller exploited the absence of a Korean trademark registration for the mark. This party obtained exclusive licenses under domestically registered “R” (English) and “ㄹ” (Korean) marks owned by individuals and then filed a preliminary injunction against the firm’s client, a direct competitor.

The Korean Trademark Act does not permit registration of a trademark that is identical or similar to one already recognized by domestic or foreign consumers as indicating the goods of a specific person, when used with unfair intent - such as to obtain undue profits or cause harm to that person. This provision prevents so-called “bad-faith trademark squatting,” whereby parties take advantage of another’s lack of domestic registration for an already well-known mark to preemptively secure registration. Trademarks obtained this way are subject to invalidation. 

In this case, the claimant for the preliminary injunction had, like the client, previously imported and distributed the genuine “R” foam roller in Korea and was therefore fully aware of the mark. However, as the claimant was merely an exclusive licensee rather than the actual trademark applicant, proving the actual trademark applicants’ own prior knowledge presented a challenge. Our firm overcame this by comprehensively submitting evidence—such the applicants’ involvement in the fitness equipment industry—demonstrating their awareness of the mark. As a result, the court held that the “R” and “ㄹ” marks had been filed with improper intent and were subject to invalidation.

Moreover, the claimant did not stop at securing exclusive licenses under the improperly registered trademarks. It also affixed a similar mark—a slanted, italicized “R” design—to its own manufactured products for sale. Such use of a mark resembling another’s, likely to mislead consumers on the source or quality of goods and cause confusion, constitutes grounds for cancellation due to deceptive potential. Our firm actively gathered and submitted evidence of this deliberate confusing use, leading the court to affirm cancellation grounds for the slanted “R” mark.

By providing detailed reasoning on the existence of invalidation and cancellation grounds for the marks in question, the court’s decision in this preliminary injunction proceedings serves as valuable evidence in the ongoing invalidation and cancellation trials concerning those marks. Throughout the proceedings, our firm worked closely with the client to extensively collect materials proving that the US “R” foam roller was already well-known among Korean consumers at the time of the domestic trademark applications. Our firm also submitted diverse evidence underscoring the high likelihood that the applicants—active in the fitness equipment industry—had encountered the client’s foam roller mark prior to filing. In addition, our firm systematically gathered, in cooperation with the client, proof of the claimant's deceptive practices, including numerous consumer reviews documenting instances where buyers mistakenly purchased the claimant's self-manufactured products believing them to be genuine US “R” foam rollers.
By securing dismissal at the preliminary injunction stage, our firm enabled the client to continue selling its legitimately imported products without any legal restrictions. This ruling carries significance by affirming that legitimate rights holders must be protected from parties exploiting the lack of domestic trademarks for overseas well-known products to gain improper registrations and deceive consumers through mark use.