Monthly Archives: March 2008

Korean Case Law on Trademark Dilution (3)

Continuing from Korean Case Law on Trademark Dilution (2),

Point 1. The meaning of ‘widely known in Korea’ is different depending on under which provision the phrase is used, Art. 2(1)(a) (well known mark for goods), Art. 2(1)(b) (well known service mark), or Art. 2(1)(c) (trademark dilution).

Point 2. The level of standard for being ‘widely known in Korea’ for purposes of trademark dilution is quite high because a mark should be beyond being well known to reach the level of being eminent.  Establishing a prima facie case for trademark dilution in Korea doesn’t seem easy.  We still don’t know how famous is eminent.  At least we know that Viagra was eminent in Korea in 2001.

Point 3. dram_man commented:

Hope you will continue, its really half the story. Again, in my experience we are talking very conservative rulings. For example when the court means “eminent” as you translate, in my experience they might as well write, if you can excuse the hyperbole, “slightly more famous than Coca-cola”. I will say however, the Court is slightly less strict than the Korean Intellectual Property Office in determining what is “well known”. Not enough to risk your business on in my opinion, but worth noting.

  • Viagra was found ’eminent.’  I don’t know if Viagra is more famous than Coca-cola.
  • I believe in dram_man, but I need more clarification on what dram_man meant by the Korean Intellectual Property Office’s (KIPO’s) determination of “well known.”  The KIPO does not get to determine on what is well known under the Unfair Competition Act.  It does have quasi-legislative power on the Unfair Competition Act but it does not have the power to interpret the Act.  The only literature on the Unfair Competition Act published by KIPO that I could obtain was a 400 page manual on the Act.

As far as “damage”, I personally would add that the mere “possibility” of confusion is not enough. If you wanted to pursue dilution in court by using this provision, particularly solely by this provision, I would not be hopeful with evidence of bad-faith on the part of the dilutor, or evidence that consumers have indeed been confused by the usage.

  • Court reports don’t explain in detail how it has reached a certain factual finding.  The legal standard for proving “damaging the distinctiveness” isn’t clear.
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Korean Case Law on Trademark Dilution (2)

continuing from Korean Case Law on Trademark Dilution.

(1) At what time should we look at?

The factual finding by the lower court on whether the mark ‘Viagra’ was a widely known mark in Korea was affirmative.  Note that the court said the time we should look at for determining on this issue was the date when the arguments for factual finding was concluded, which was November 13, 2001 in this case.  (The case was filed on November 18, 1999.)

“부정경쟁방지및영업비밀보호에관한법률 … 제2조제1호(가)목 소정의 … 표지가 국내에 널리 인식되었는지 여부는 사실심변론종결시를 기준으로 판단하여야 하며 … 이는 제2조제1호(다)목의 경우에도 마찬가지라고 할 것…”

“Whether a mark is widely known in Korea under Art. 2(1)(a) should be determined with reference to the date on which arguments for factual finding were concluded.  The same applies to ‘widely known’ under Art. 2(1)(c) (dilution provision) …”

(2) Whether ‘Viagra’ was ‘widely known’ in Korea for dilution purpose

On the issue of whether ‘Vigra’ was ‘widely known’ in Korea, the Supreme Court seems to affirm the lower court’s finding.  The Supreme Court does not discuss lower court’s finding but only refers to ‘Viagra’ and other marks as ‘the plaintiffs’ eminent marks.’   This is a little bit odd to me because the Supreme Court interpreted the then-recently-amended provision on dilution as:

“위 규정에서 사용하고 있는 ‘국내에 널리 인식된’ 이라는 용어는 ‘주지의 정도를 넘어 저명 정도에 이른 것’을 … 의미하는 것으로 해석함이 상당[하다].

“The phrase “widely known in the Republic of Korea” can be interpreted to mean ‘beyond the level of being well-known to reach the level of being eminent.'” (case at hand) (translation by Kai)

, and simply quotes lower court’s finding on the issue.

This case is interesting in that the dilution provision was amended to the current provision while the Viagra case was still being tried at the lower court.  I can’t find any record on whether the court changed the ‘widely known’ standard on appellate review.  The lower court did not elaborate on the meaning of ‘widely known’ after all.

The lower court (Seoul High Court) found:

“살피건대, 원고 화이자 프로덕츠 인크의 위 각 등록상표 및 원고들의 상호가 상품표지 및 영업표지로서 국내에 널리 알려져 있는 사실…은 앞에서 인정한 바와 같다.” (99나66719)
“The fact that the registered trademarks of the plaintiff Pfizer Products, Inc. and its trade names are widely known in Korea as marks for good and service marks … are acknowledged as earlier.” (99 Na 66719) (translation by Kai)

(3) Whether the mark ‘Viagra’ was diluted.

Applying its interpretation of the dilution provision in the Unfair Competition Prevention and Trade Secret Protection Act, the court affirms the lower court’s decision:

“피고들이 이 사건 상표들을 상품표지로 사용하였다고 볼 수 없음은 앞서 본 바와 같으므로, 원심이 피고들이 이 사건 상표들을 자신들의 상품표지로 사용함으로써 이 사건 상표들의 식별력을 손상하였다고 판단한 것은 잘못이나, …”

“Since, as seen earlier, the defendant cannot be said to have used the trademark s (Viagra and others) as marks for goods, the lower court’s decision finding that the defendants damaged the distinctiveness of the marks by using them as marks for goods …” (translation by Kai)

“기록에 의하면, 피고들이 이 사건 도메인 이름으로 개설한 웹사이트에서  생칡즙, 재첩국,건강보조식품 등을 인터넷상으로 판매하는 행위를 한 것은, 원고들의 저명상표와 유사한 표지를 영업표지로 사용한 것에 해당하고, …”

“according to records, the act of selling arrowroot juice, corbicula soup and other health supplementary ingredients on the internet site registered as http://www.viagra.co.kr/ corresponds to using the plaintiffs’ eminent marks and similar marks as service marks …”

“이처럼 피고들이 위 상표들을 영업표지로 사용함에 의하여 위 상표들의 상품표지로서의 출처표시기능을 손상하였다고 할 것이며, 원심 또한 피고들이 이 사건 도메인 이름을 사용하여 생칡즙 판매 등의 영업을 한 것을 식별력 손상행위 중의 하나로 들고 있으므로, …”

“the defendants are found to have damaged the function of source identification of the aforesaid marks for goods by using them as service marks.  The plaintiffs are also alleging that the defendants’ sales activity for arrowroot juice and other products is one of the acts of damaging the distinctiveness …”

“피고들의 행위가 위 법률 제2조 제1호 (다)목의 부정경쟁행위에 해당한다고 본 원심은 그 결론에 있어 정당하[다].”

The lower court’s finding that the defendants’ acts fall under the unfair competition act as provided by Art. 2(1)(c) of the aforesaid Act is justified.

Korean Case Law on Trademark Dilution

Dram_man commented on Trademark Dilution in Korea:

You might want to add that Korean courts tend to be very conservative in applying this part of the Unfair Competition Act. Normally a plaintiff needs to show actual confusion in the marketplace. And damages? Fuggitaboutit!

Dram_man said the burden of proof for trademark dilution in Korean courts is very high. I agree.

The Viagra case (Supreme Court, 2004. 5. 14, 2002 Da 13782, 대법원2004.5.14. 선고 2002다13782 판결) interprets the meaning of two phrases in the trademark dilution provision of the Unfair Competition Prevention and Trade Secret Act. The first phrase is “widely known in the Republic of Korea” (“국내에 널리 인식된”), the second is “damaging the distinctiveness.” (“식별력의 손상”)

1. Widely Known in the Republic of Korea (국내에 널리 인식된)

There are a number of preceding cases defining the phrase “widely known in the Republic of Korea” in the context of well-known mark protection under Article 2(1)(a) and (b) of the Unfair Competition Prevention and Trade Secret Protection. The dilution provision of the Unfair Competition Act (Article 2(1)(c)) uses the same phrase as in Article 2(1)(a) and (b), but the phrase ‘widely known in the Republic of Korea’ is interpreted differently depending on whether it is read in the context of Art. 2(1)(a), (b) or (c). therefore the court repeats the previous cases in defining the meaning of “widely known in the Republic of Korea.”

Under Art. 2(1)(a) and (b) (well-known mark for goods and service):

“… ‘국내에 널리 인식된’의 의미는 국내 전역에 걸쳐 모든 사람에게 주지되어 있음을 요하지 않고, 국내의 일정한 지역 범위 안에서 거래자 또는 수요자들 사이에 알려진 정도로써 족하며, 널리 알려진 표지인지 여부는 그 사용기간, 방법, 태양, 사용량, 거래범위 등과 거래의 실정 및 사회통념에 비추어 객관적으로 널리 알려졌느냐의 여부가 판단의 기준이 된다.” (2005나35938)

“…’being widely known in Korea’ does not require that a mark is well known to everybody in all region of Korea, but it is sufficient that the mark is known among traders or customers in a specific regional area in Korea. Whether the mark is well known is determined based on various factors such as the length of term, method, mode, amount and scope of trade in the mark and in light on the actual manner of trade and socially accepted idea.” (2005 Na 35938) (translation by Kai)

Under Art. 2(1)(c) (dilution):

“위 규정에서 사용하고 있는 ‘국내에 널리 인식된’ 이라는 용어는 ‘주지의 정도를 넘어 저명 정도에 이른 것’을 … 의미하는 것으로 해석함이 상당[하다].

“The phrase “widely known in the Republic of Korea” can be interpreted to mean ‘beyond the level of being well-known to reach the level of being eminent.'” (case at hand) (translation by Kai)

2. Damaging the Distinctiveness (식별력의 손상)

This phrase only appears in dilution provision (Article 2(1)(c)), so the case can be considered the leading case in trademark dilution.

The court said:

“‘식별력의 손상’은 ‘특정한 표지가 상품표지나 영업표지로서의 출처표시 기능이 손상되는 것’을 의미하는 것으로 해석함이 상당하며, 이러한 식별력의 손상은 저명한 상품표지가 다른 사람에 의하여 영업표지로 사용되는 경우에도 생긴다.”

“‘”damaging the distinctiveness” can be interpreted to mean “a certain mark’s (for goods or service) function of source indication is being damaged,” and this type of “damaging the distinctiveness” may occur when an ’eminent’ mark for goods is used as service mark by another person.” (translation by Kai)

Will continue on this later …

Trademark Dilution in Korea

Dilution in the U.S. is regulated by the Trademark Act (as revised by the Trademark Dilution Revision Act of 2006).

In Korea, the Unfair Competition Prevention and Trade Secret Protection Act (the “Unfair Competition Act”) does the role. The Act was amended in 2001 to add a provision on dilution. Article 2(1)(a)-(c) provide:

1. The term “unfair competitive act” means the act falling under any of the following items:

(a) An act of creating confusion between one’s own goods and any other person’s goods, by using any one identical with or similar to a name, trade name, trademark, container or package of goods of the other person, or a mark indicating the other person’s goods, which is known to the public in Korea, or by selling, distributing, importing or exporting goods using any of the above enumerated manners;

(b) An act of creating confusion with any other person’s business facilities or activities by using any one identical with or similar to the other person’s name, trade name, or emblem, or other mark indicating the other person’s business which is known to the public in Korea;

(c) Other than the acts of creating confusion under items (a) and (b), an act of damaging the distinctiveness or reputation attached to another person’s sign, identity of mark or the fame of any other person, by using any one identical with or similar to a name, trade name, trademark, or container and package of goods of the other person, or other mark indicating the other person’s goods or business, which is widely known in the Republic of Korea, known to the public in Korea, without any justifiable grounds as prescribed by the Presidential Decree such as non-commercial uses, or by selling, distributing, importing or exporting goods using any of the above enumerated manners;

Article 2(1)(c) does not specifically state the word “dilution,” but it contains phrases definitive of blurring (“damaging the identity of mark”) and tarnishment (“damaging the fame of any other person”).

Compare Article 2(1)(c) of the Unfair Competition Act of Korea with the definitions of ‘dilution by blurring’ and ‘dilution by tarnishment’ under the Trademark Dilution Revision Act of 2006 of the U.S..

`dilution by blurring’ is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.

dilution by tarnishment’ is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

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Back on blogging

I’ve had several changes since last November, such as, I moved to a new team, got a new job responsibility (of course), got busier, etc.  Excuse moi for not blogging for a while.  Will be back on blogging mode pretty soon.