Kodak succeeds against local website operator
In the case of Eastman Kodak Company and Kodak Korea Co Ltd v Song Hwa System Technology Co Ltd, 2001 Gahap 5123, the Seoul District Court ruled that the promotion and sale of photography-related products and services on the website 'kodak.co.kr' infringed the trademark rights of the plaintiffs and constituted an act of unfair competition.
The defendant, Song Hwa System Technology, had been operating a website at 'kodak.co.kr' since July 1997. At the time, the defendant had a sales agent contract with Kodak Korea, which limited the use of its trademark and logos solely to "business operations provided for under the sales agent contract and only upon receipt of prior consent from Kodak Korea." The contract was terminated in January 1999.
In July 1999 the website included promotional content related to the plaintiffs' products, such as digital cameras, printers and scanners, and also featured the KODAK trademark. In April 2000 the website featured a page promoting Kodak's products, a page promoting photography-related products of other companies, and a page providing information on 'magic studio' (a service for producing photographs, posters, business cards and image synthesis CD-ROMs). The site also featured a link to www.onlinephoto.co.kr, where the defendant provides online film development services.
Kodak Korea registered the domain name 'kodakkorea.co.kr' in December 1998.
The plaintiffs charged that the defendant's website in July 1999 and April 2000 constituted acts of trademark infringement and unfair competition on the grounds that it included 'Kodak' in the domain name and displayed the plaintiffs' trademark. Moreover, the plaintiffs argued that the defendant's promotion and sale of goods and services that were similar or identical to the goods and services of theirs was likely to cause consumer confusion.
The defendant argued that the display of the plaintiffs' trademark on the website did not constitute trademark infringement because the mark was confined solely to pages where the plaintiffs' goods were being advertised. In addition, the defendant argued that not only did the plaintiffs give their consent to the registration of 'kodak.co.kr', they implicitly approved of its use by not objecting until August 1999.
With respect to the issue of unfair competition, the defendant argued that there was a clear indication on the website that Song Hwa was the proprietor, so as not to confuse the public.
The court agreed with the plaintiffs, holding that the defendant (and others) provided goods on the website that were identical to those of the plaintiffs. The court explained that even though the products were displayed on different pages, the website on the whole infringed the trademark rights of the plaintiffs in that it obstructed the function of the plaintiffs' trademark as a source identifier.
The court also rejected the defendant's argument that not only did the plaintiffs give their consent to the registration of 'kodak.co.kr', they implicitly approved of its use by not objecting until August 1999. The court said that the defendant had merely obtained approval for the establishment of a website - approval which was not sufficient to substantiate the defendant's claim that it received prior consent to use the word 'Kodak' in the domain name. The court further held that the absence of an objection to the website's registration could not be construed as implicit approval.
With respect to the issue of unfair competition, the court ruled that irrespective of the clear indication that Song Hwa was the proprietor of the website, confusion was still likely.
Jay (Young-June) Yang, Kim & Chang, Seoul
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