Procter & Gamble successfully invalidates cosmetics trademark

The petitioner, Procter & Gamble Co, is the owner of the famous SK-II line of skincare and beauty-related products. The petitioner registered the mark SK-II in Korea on July 19 2000 for various cosmetic products in Class 3 of the Nice Classification.

The respondent is involved in scientific research for skin treatments, and used the term ‘(Super Protein)-II’ in connection with one of its experiments. The respondent registered the mark SP-II in connection with cosmetics-related goods in Class 3 on October 30 2009.

On April 2 2010 the petitioner filed an action with the Intellectual Property Tribunal for the invalidation of the SP-II mark based on:

• the similarity of the trademarks SP-II and SK-II;
• the reputation of its SK-II mark; and
• the respondent’s bad faith.

The Intellectual Property Tribunal dismissed the petition, finding that the letters ‘P’ and ‘K’ are easily distinguishable because the pronunciation of the letter ‘S’ is audibly stronger, and that the compared marks are different in appearance due to the presence of the letters ‘P’ and ‘K’. Therefore, the mark SP-II was not similar to SK-II. The tribunal did not address the remaining claims (reputation and bad faith). The petitioner filed an appeal to the Patent Court.

The Patent Court reversed the tribunal’s decision, ruling that the marks SK-II and SP-II were confusingly similar. Specifically, the court held that most of the composite elements of the marks, the first letter ‘S’, the middle hyphen and Roman numeral II were the same and, therefore, the compared marks were very similar in appearance. The court also pointed out that the first and last sounds of the marks were identical; the letters ‘P’ and ‘K’ - the only difference between the marks - would be pronounced weakly because they are located in the middle. Therefore, both marks would sound similar overall when pronounced by ordinary consumers.

Lastly, given that both marks covered cosmetics-related goods, the court found that the compared goods were similar. As a result, the court reversed the tribunal’s decision, and held that the mark SP-II should be invalidated due to its similarity to the earlier registered trademark SK-II. The court did not address the other issues (reputation and bad faith).

Following an appeal to the Supreme Court by the respondent, the Supreme Court ruled in favour of the petitioner and found that there was no legal error in the Patent Court’s decision.

Ann Nam-Yeon Kwon and Nayoung Kim, Kim & Chang, Seoul