Resale of disposable cameras infringes FUJIFILM mark

South Korea

In Fuji Film Co Ltd v Noh (Case 2002Do3445), the Supreme Court has ruled that the defendant's act of reloading new film into used Fuji Film disposable cameras, repackaging and then reselling them constituted manufacture of a new product, thereby infringing the plaintiff's rights in its FUJIFILM mark.

Noh, a Korean individual, was collecting the used casings from Fuji Film disposable cameras, reloading them with new film (not produced by Fuji Film) and repackaging them in a wrapping bearing the word 'miracle'. He was then selling the altered cameras as new, even though the used casings were still clearly engraved with the registered FUJIFILM mark. Fuji Film, a Japanese camera manufacturer, issued trademark infringement proceedings against Noh arguing that its engraved mark indicated the source of the goods, not Noh's 'miracle' packaging. It further argued that because of Noh's actions, its rights in the mark had not been exhausted and were still enforceable. The case made its way to the Supreme Court

The Supreme Court ruled that Noh had infringed Fuji Film's trademark rights. It noted that use of a product bearing a registered mark will not usually infringe the mark, provided that it is not used to identify the source of the product. However, in this case the court held that since FUJIFILM was engraved on to the cameras and had not been removed, this was still the source identifier for the goods. It stated that the term 'miracle' on the packaging was indicative of the quality, function or effect of the products and not an indication of their origin.

The court also noted that under Korean law, once a trademark owner transfers or sells goods bearing registered marks, its trademark rights in those goods are exhausted and they cannot be enforced in relation to the future use, transfer, or lending of the goods. However, the court reasoned that if the goods are processed or repaired in a way that changes their original shape, this may constitute manufacture of a new product, and may, therefore, infringe the trademark owner's rights. It stated that the assessment of whether a defendant's actions have changed the original shape of the goods should be judged by the objective quality of the product, along with the use and function of the trademark. In the case at hand, the court held that since Fuji Film's disposable cameras are manufactured with the specific intention that they are to be used only once, Noh's act of reloading them with new film (an essential component of a disposable camera) and repackaging them exceeded the mere act of processing or repair, and was in substance the manufacture of a new product. Thus, as the new product continued to display Fuji Film's mark, its rights were still enforceable against Noh.

Sung-Nam Kim and Sarah Park, Kim & Chang, Seoul

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