MASAI WALKING held to be distinctive in connection with shoes
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The Seoul Central District Court has held that the registered trademark MASAI WALKING is distinctive in connection with shoes (Case 2007Gahap92570, April 16 2008).
Masai Marketing & Trading AG is the owner of the registered trademark MASAI WALKING (in Korean characters) for various shoes. RYN Korea manufactures and sells functional shoes. It uses the marks MASAI WALKING, MASAI WALKING SHOES, MASAI WALKING CENTER, MASAI WALKING CENTER RYN, MASAI TRIBE WALKING SHOES, MASAI TRIBE WALKING CENTER, MASAI WALKING SHOES RYN and MASAI TRIBE WALKING SHOES in newspapers, pamphlets and manuals, as well as on its website and on signboards.
RYN filed suit against Masai Marketing before the Intellectual Property Tribunal (IPT), arguing that:
- the registered trademark MASAI WALKING is generic or descriptive; and
- RYN's use of the mark MASAI WALKING SHOES RYN does not infringe Masai Marketing's rights in the mark MASAI WALKING.
RYN also filed an invalidation action against the trademark MASAI WALKING before the IPT, arguing that the mark is generic or descriptive. The IPT dismissed both actions. RYN appealed to the Patent Court, which dismissed both appeals. RYN appealed to the Supreme Court, which held that both appeals were groundless.
Masai Marketing subsequently filed an action for infringement against RYN before the Seoul Central District Court.
The court rejected RYN’s assertion that Masai Marketing’s registered trademark is generic or descriptive of "shoes without heels, the sole of which is in a curved form". The court stated that based on RYN’s exhibits, it could not conclude that Masai Marketing’s mark is recognized as generic by consumers and traders.
In considering whether MASAI WALKING is generic, the court relied on the following elements:
- The trademark MASAI WALKING was first used by Karl Müller, a Swiss engineer who invented shoes inspired by the Masai tribe’s manner of walking.
- Karl Müller’s invention (based on the 'Masai barefoot technology') was granted a patent.
- The trademark MASAI WALKING is registered in several countries (eg, Switzerland, New Zealand, Canada, China, Japan and the United States).
- The trademarks MBT by SWISS MASAI, SWISS MASAI and MASAI WALKING are registered in Korea.
- The phrase 'Masai walking' has been used in books, newspapers, magazines and television broadcasts in Korea by MBT Korea, Masai Marketing’s Korean subsidiary (established in July 2003).
The court concluded that MASAI WALKING is distinctive in relation to the designated goods. The court also found that RYN's marks were similar to Masai Marketing’s mark and that the goods covered by both marks were similar. Therefore, use of RYN's marks was likely to cause confusion among consumers as to the origin of the goods.
In light of the foregoing, the court concluded that RYN’s actions amounted to infringement of Masai Marketing’s registered trademark. RYN's appeal is pending before the High Court.
Joo-Young Moon, Sung-Nam Kim and Nayoung Kim, Kim & Chang, Seoul
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