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 …

3 thoughts on “Korean Case Law on Trademark Dilution

  1. Dram_man says:

    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.

    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.

  2. […] Comments Dram_man on Korean Case Law on Trademark D…Korean Case Law on T… on Trademark Dilution in Korea…Dram_man on Trademark Dilution in […]

  3. […] 3. dram_man commented: Hope you will continue, its really half the story. Again, in my experience we are talking very […]

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