Sporting goods companies will often enter into contracts with famous athletes to promote their products and use their names for this purpose.  ASICS is one such company which entered into a contract with the world-renowned tennis player Novak Djokovic, and used his first name “NOVAK” as part of their product names, as well as using his name and image in its advertisements. 
 

However, in Korea, a claim for damages based on trademark infringement was filed against ASICS in August 2019 by a Korean individual who obtained a trademark registration for the “” mark.  ASICS appointed Kim & Chang as its counsel, and we obtained favorable decisions in both the first instance proceeding at the Seoul Central District Court as well as in the appeal of the decision filed by the registrant to the Patent Court.

The District Court and Patent Court both held that the “NOVAK” mark used by ASICS was not used as a trademark/source identifier, so there could be no infringement of trademark rights.  In reaching their decisions, the courts took into consideration the following factors: 

• Novak Djokovic is a prominent tennis player, and for many years the rights to his likeness have been granted to various companies in different industries including sports, fashion, watch/jewelry and automobiles.  ASICS entered into a collaboration or partnership contract with Novak Djokovic that granted it the right to use his name. 

• ASICS used NOVAK and Djokovic’s photo together, so that general consumers could recognize that the “NOVAK” term used was Novak Djokovic’s name and that ASICS was promoting its products using his name. 

• Furthermore, in the ASICS product information, there is an explanation that “this is a limited edition product based on the collaboration with the world-class tennis player Novak Djokovic,” which also explains that “NOVAK” represents Novak Djokovic. 

• Citing the fact that ASICS also used its own trademark, the use of “NOVAK” by ASICS seemed to be only a part of a common marketing strategy where famous sports players allow the use of their names through collaboration agreements with sporting goods companies, etc.  However, the use of NOVAK was not intended to indicate the source of ASICS products.

There was no precedent in Korea regarding whether the use of a famous person’s name as part of a collaboration contract was trademark use.  By showing (i) the fame of Novak Djokovic, (ii) that Novak Djokovic signed collaboration contracts with several companies, and that other companies have used the “NOVAK” mark as an explanatory phrase just like ASICS, and (iii) ASICS used a photo of Novak Djokovic while advertising products marked with “NOVAK,” we successfully argued that the term “NOVAK” was not used as a trademark/source identifier.