Kim & Chang prevailed in a trademark invalidation action on behalf of CUBE Kabushiki Kaisha (“CUBE”), a Japanese golf apparel brand, against a mark similar to CUBE’s skull-inspired mark (the “CUBE Mark”).
 

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(Left) CUBE Mark and (Right) Similar mark used by CHUCUCHU
 

Golf enthusiasts might have seen the CUBE Mark, which comprises of a skull and golf clubs positioned in an X-shaped position. Since the creation of the CUBE Mark back in 2006, CUBE has been using it in relation to golf-related products such as golf clothing, golf bags and golf gloves. As a result of CUBE’s wide use of the CUBE Mark in conjunction with a rather provocative catchphrase, “Golf or Die,” the CUBE Mark became widely known as the source identifier of the golf brand, not only in Japan but also in Korea.

Recently, a Korean golf apparel brand named CHUCUCHU Co., Ltd. (the “Registrant”) obtained a registration for a mark comprising of a skull and golf clubs in an X-shaped position (the “Registrant’s Mark”), which is similar to the CUBE Mark, designating “clothing, wholesale and retail of apparel, etc.” CUBE subsequently filed an invalidation action against the Registrant’s Mark.

On behalf of CUBE, Kim & Chang argued that, as of 2006, when CUBE first created the CUBE Mark, the use of a mark comprising of the specific combination of a skull and X-shaped golf clubs was unprecedented in the relevant industry. Concurrently, our firm emphasized that, as a result of being widely known as CUBE’s source identifier for golf-related products, the CUBE Mark has a strong distinctiveness. In defense, the Registrant contended that the motif involving a skeleton and X-shaped golf clubs has no distinctiveness, as such a combination has been commonly used in the industry. Following a legal debate between the involved parties, the Intellectual Property High Court of Korea (the “IP High Court”) ultimately confirmed CUBE’s final victory.

Specifically, during the dispute, the Registrant cited (i) 146 skull-containing marks registered under third parties’ names, and (ii) four cases entailing the use of similar marks (with respect to golf-related products) as examples. Based on such examples, the Registrant argued that the motif consisting of a skeleton and X-shaped golf clubs lacks distinctiveness as a trademark, and that the Registrant’s Mark is dissimilar to the CUBE Mark in terms of its appearance and pronunciation. In response, our firm conducted an in-depth analysis on the examples cited by the Registrant and rebutted that (i) only five of the registered marks are capable of raising actual issues, and (ii) in the four example cases cited, it is uncertain whether the similar marks have been in use since before the creation of the CUBE Mark. Further, our firm conducted an extensive investigation to consolidate materials and precedents that support the strong distinctiveness of the CUBE Mark, as well as the similarity between the CUBE Mark and the Registrant’s Mark. Based on such materials, our firm successfully persuaded the Court that the CUBE Mark sufficiently serves as a source identifier and that the two marks at issue are similar in their common use of the skull-inspired motif.

The IP High Court recognized that the CUBE Mark, which comprises of a skull shape and two golf clubs that are diagonally placed in an X-shape, was already widely known as a trademark indicating a particular entity’s products. In addition, given that “most of the 146 registrations cited by the Registrant were filed after CUBE started using the CUBE Mark, and the timing of sale and sales volume of some of the use examples cited are unknown,” the motif involving a skull and golf clubs placed in an X-shape must have a distinctiveness as a source identifier.

Ultimately, the IP High Court held that the Registrant’s Mark is invalid on the ground that it is similar to the CUBE Mark in its overall composition and dominant impression, and thus the Registrant had a bad faith intent in filing an application for the Registrant’s Mark.

This decision once again confirmed the well-known status of CUBE’s skull-inspired trademark in and out of Korea. Importantly, it has become possible to prevent unauthorized registrations/uses of marks involving the motif of a skull and X-shaped golf clubs as a unique and distinctive part.