Court refers to auto industry practice in assessing likelihood of confusion

The Supreme Court has held that Audi AG's mark AUDI A6 was dissimilar to Netision.com’s A6 marks for clothing.

The petitioner, Netision.com, conducts a sizable apparel business in Korea under the A6 brand. In connection with its business, Netision.com registered the following marks designating clothing:

Respondent Audi AG, the famous German automobile manufacturer, uses the letter ‘A’ in connection with its ‘A’ series models (A1, A3, A4, etc). Audi's AUDI A6 mark covers a particular model within the ‘A’ series, but is also registered in Class 25 for clothing:

On November 6 2008 the petitioner filed an action with the Intellectual Property Tribunal for the invalidation of the AUDI A6 mark based on its similarity to the A6 marks. The Intellectual Property Tribunal dismissed the petition, finding that the compared marks were dissimilar. On a further appeal, the Patent Court upheld the Intellectual Property Tribunal’s decision. The petitioner then filed another appeal to the Supreme Court.

The Supreme Court agreed with the lower court’s ruling, finding that the AUDI A6 mark and the petitioner's A6 marks were dissimilar. The court recognised that the AUDI mark was well known as a source identifier for the respondent’s cars at the time the AUDI A6 mark was applied for (April 2007). The court took into consideration current automobile industry practice whereby the ‘A6’ portion of Audi’s AUDI A6 mark would be regarded as the name of a particular model of Audi car, even if Audi’s mark was used on clothing; therefore, consumers would always perceive the mark as a whole or as its essential distinctive part ‘Audi’, and not as ‘A6’. As such, the Supreme Court found no legal error in the lower court’s finding that the parties’ marks were dissimilar visually, aurally and conceptually, and that there was no likelihood of confusion between them.

Under Korean trademark practice, industry practice is usually taken into consideration when determining whether two marks are similar. However, this case is significant in that the court referred to the industry practice with regard to the well-known part of a mark, without considering the market of the goods at issue.

Eun Kyung Koo and Nayoung Kim, Kim & Chang, Seoul