Dan Harris cast strong doubt on the impartiality of the Korean Patent Court (a special court for patent and trademark disputes) regarding the recent ruling on Starbuck v Starpreya.
I first concurred with Dan Harris because it seemed clear to me too that Starpreya is a knockout. Today, I took time to look at the opinion of the Court because I wanted to think about whether a claim based on trade dress might be possible on the same case. This is a confession that my concurrence was not based on first hand knowledge of the case.
The opinion told a very different story from what most of the readers of Dan Harris’ blog might have thought the case would have been. I can’t blame Dan Harris or other people (including myself) for misunderstanding the case because the misunderstanding came from the news report bearing green circle symbols of Starbucks and Starpreya. The case was not about the likelihood of confusion between the greeen circle symbol of Starbucks and that of Starpreya. It was about the likelihood of confusion between the word “STARBUCKS” and “STARPREYA.”
The court opinion lists the two trademarks at issue, one being “STARBUCKS” with registration number 415373, the other being “STARPREYA” with registration number 629689.
The court looked at the meaning, shape, and sound of the words in deciding distinctiveness.
Looking at the words without the common component word “star” which does not render distinctiveness, the court found “bucks” and “preya” did not render distinct meaning either.
But the court found the two words are distinct enough because the shapes and sounds are distinct.
I can’t really say whether the decision was right or wrong. It’s just a judgement call. Remind you Korean courts do not have the jury system and judges find facts.
As far as the case was about likelihood of confusion between two words, I don’t think the decision was biased or nationalistic.
Questions still remains why the plaintiff’s lawyer (KCL law firm) did not raise likelihood of confusion between symbol marks or a claim based on trade dress.