Alteration of playing cards does not amount to trademark infringement

The Supreme Court has held that the alteration and sale of trademarked playing cards did not amount to trademark infringement (Case 2009doh3929, October 15 2009).
 
The defendants purchased genuine playing cards bearing another party's trademark, and then used invisible dye to write the suits and numbers on the back of the cards. Only players wearing special contact lenses can read the details of the cards. The defendants then sold the cards to consumers. The lower court held that the alteration and sale of the cards amounted to trademark infringement.
 
On appeal, the Supreme Court reasoned that the first sale doctrine applied as long as the defendants' acts did not alter the original shape of the goods. Further, the court found that there was no likelihood of consumer confusion, considering that:

  • the dye cannot be seen with the naked eye and, therefore, the cards can still be used for their original purpose;
  • the buyers of the defendants' cards are aware of the alterations and would not be confused as to the source of the goods; and
  • even if the buyers were unaware of the alterations, they would believe that the cards originated from the trademark owner and use them for their original purpose. 
Consequently, the court held that the changes made by the defendants:

  • were insufficient to alter the original shape of the goods; and
  • did not affect the function of the trademark as a source identifier. 
The Supreme Court thus reversed the decision of the lower court and remanded the case for further consideration.
 
Sung-Nam Kim and Nayoung Kim, Kim & Chang, Seoul

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