Mattel wins victory over knockoff shoes

In Mattel Inc v Kapa Korea (Case 2007Gahap44939, December 26 2007), the Seoul Central District Court has held that Kapa Korea had violated the Unfair Competition Prevention and Trade Secret Protection Act by importing shoes that were identical in form and substance to Mattel Inc's shoes.

Under the legislation, "the act of assigning, renting, displaying, importing or exporting a product which imitates the appearance of another person's product (ie, the shape, pattern, colour, gloss or a combination of these attributes)" is prohibited if:

• the imitation product is made within a period of three years after the original product was manufactured; and
  
  
• the product shape is not a commonly used form for such products.

This cause of action ('dead copy') differs from other claims under the act in that there is no requirement of fame or that the original product "function as a source identifier". This claim was introduced in 2004 and has been the subject of only a few decisions due to its relatively short history.

In the case at hand, Mattel created and launched the Love-Velcro shoes (Barbie shoes for children) in 2006 and distributed the shoes in Korea through a Korean distributor. Kapa imported similar shoes from China and started to sell them in Korea from January 2007.

The Seoul Central District Court defined the term 'imitating' under the 'dead copy' clause as the act of producing an identical or substantially identical product by relying on the prior product. Furthermore, the court ruled that the totality of the circumstances surrounding the junior product (eg, the substance, effect and difficulty of modification) should be considered when determining whether the junior product is substantially identical to the prior design. According to the court, it is not necessary that the prior product possess originality and be an exact replica of the entire prior product.

In its defence, Kapa argued that several features of its shoes were commonly used. Specifically, Kapa claimed that the pink flower and heart-shaped designs, as well as the lighting function, are commonly used ornamentations on shoes and inline skates. However, the court reasoned that these features were specific to Mattel's Love-Velcro shoes and distinguished them from the shoes of other manufacturers.

Based on the foregoing, the court held that the main features of Kapa's shoes were substantially identical to those of Mattel's Love-Velcro shoes because the two designs share the following features:

• the stylization, location and colour of the flower designs;
  
  
• the colour and design of the three heart-shaped designs (a heart containing a smaller heart);
  
  
• a small bead-shaped bulb in each heart-shaped design; and
  
  
• the colour of the shoes (white and pink).

Therefore, the court concluded that the importation and sale of Kapa's product fell within the 'dead copy' provision of the act. This decision is final and conclusive.

Sung-Nam Kim and Nayoung Kim, Kim & Chang, Seoul