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.

2 thoughts on “Korean Case Law on Trademark Dilution (3)

  1. Dram_man says:

    Re: Coke, with apology to Fred Allen and/or Foghorn Legghorn, “Hyperbole my boy, hyperbole.”

    You are rubbing up against my main point. There is no sort of legal standard to reliably tell what consists of a “eminent”, “famous”, “Well known”, or what ever word you want to translate the concept to. The Court uses one unknown standard for Unfair Comp and Trademark cases, while KIPO uses another unknown one administratively for oppositions and such. Right now the system seems entirely arbitrary. There is no way to determine what a particular judge or examiner is going to say about fame on any particular day.

    The Viagra case is not any guide, it’s a circular argument. What is “well-known” is eminent, and what is “eminent” is well-known. Sounds to me like the KSC tried to punt, and missed the high snap.

    As far as proving “damage”, I think the two most notable assets to Pfizer were the fame of the mark and the use specifically, a country level domain clearly indicating a registered trademark of the company. What the case really boils down to is a cyber-squatter and his defense.

    I do wonder though how the court would rule if…

    1. the site in question was “vigra.co.kr”, “viaygra.co.kr” or even “biagra.co.kr”, since it could be more easily argued as dissimilar from VIAGRA.

    2. the site in question was “herbalviagra.co.kr” or “viagrasubstiute.co.kr”, prior rulings could be used justfy an argumen that these are merly indicative of the use or function of the product and does not dilute the mark.

    3. the site in question used a mark not so, to use the court’s opaque justification, “eminent”. I wonder if the same latitude would be given for “cialis.co.kr” or “prozac.co.kr” that do have their share of fame, but are not so “hit you on the head” as obvious.

  2. smartphone says:

    Looking on it as a smart phone user, the main things that need to be kept in mind is that an app needs to be free or cheap, easy to use and useful. The only way an app becomes a hit is by word of mouth, and it is important to make a good first impression.

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