Bad-faith registrations similar to well-known marks must be invalidated in entirety

South Korea

The Supreme Court has overturned two decisions of the Patent Court in which the latter had only partially invalidated bad-faith registrations that were similar to well-known marks. In both cases, the Patent Court had invalidated the registrations only with regard to the goods/services that were economically related to the goods/services covered by the well-known marks. The registrations thus remained valid for the goods/services that had no economic relationship with the goods/services covered by the well-known marks.

The Supreme Court's decisions in the Barbie Queen case (Case No 2013Hu1986) and the Louis Vuitton case (Case No 2013Hu2484) send a strong signal to lower courts that similar registrations which are found to have been filed with unfair competitive purposes should be invalidated in their entirety, not only for the goods/services that are specifically related to the famous mark.

Under Article 7(1)(xii) of the Korean Trademark Act, it is possible to invalidate a mark which is similar to a mark already known to consumers as another party's identifier on the basis that it was filed with unfair competitive purposes (ie, in bad faith).

When this provision was first introduced into the Trademark Act, the Korean courts evaluating the bad-faith element would take into consideration several factors, including whether the designated goods/services covered by the attacked mark were similar to the goods/services associated with the source identifier. At first, the courts would commonly invalidate marks in their entirety under this provision, even if the compared goods/services were dissimilar and had no economic relationship. However, over time (and particularly in the past few years), the courts have increasingly demanded evidence of an economic relationship between the compared goods/services before invalidating a mark in full.

The Patent Court's recent decisions in the Barbie Queen and Louis Vuitton cases illustrate this new tendency.

In the Barbie Queen case, the Patent Court invalidated the bad-faith registration for the mark shown below (‘Barbie Queen’ in Korean transliteration) as to most of its designated goods and services, based on the mark's similarity to the famous BARBIE mark.

Challenged mark: 바비퀸

However, the Patent Court refused to invalidate the mark for services such as "correspondence courses" and "tattooing, visagists’ services, etc", as the owner of the BARBIE mark had been unable to prove that such services were economically related to the goods and services sold under its brand.

In the Louis Vuitton case, the Patent Court invalidated only partially the mark depicted below as to certain goods based on the fame of Louis Vuitton’s LV mark.

Challenged mark:

Louis Vuitton’s mark:

However, the court confirmed the validity of the challenged mark for "gut for making sausages, goods for pet animals, sticks and harnesses, etc."

The Supreme Court vacated both decisions, indicating that a bad-faith registration that is similar to a well-known mark should be invalidated in its entirety, even if some of the designated goods/services covered by the challenged registration are not economically linked to the goods/services sold under the other party's mark.

Both cases have been remanded to the Patent Court for review based on the Supreme Court's decisions.

Alexandra Bélec and Seok Hyun Kwon, Kim & Chang, Seoul

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