Sanrio says goodbye to HELLO KITTY infringer
In Sanrio Co Ltd v Dong-A Pencil Co Ltd (2002Na32648), the Seoul High Court has affirmed a lower court decision finding that Dong-A had registered the trademark KITTY, and the Korean translation thereof, in order to profit from consumer confusion between its marks and Sanrio's famous HELLO KITTY mark.
Sanrio, a Japanese social communications company, has owned the trademark HELLO KITTY and cat logo since 1975. A year later, Dong-A registered in Korea the marks KITTY (in English and in Korean characters) and a cat logo with the word 'cat' in Korean. In 1999 Dong-A began to use signs on its goods that were similar but not identical to its own registered marks. Sanrio petitioned the Seoul District Court for a permanent injunction to prevent Dong-A using the signs on the grounds of trademark infringement and unfair competition.
Dong-A argued that since the signs it had used were very similar to its registered marks, they were also protected under those registrations. Further, it argued that because the signs benefited from this protection, the use did not constitute unfair competition.
The court dismissed Dong-A's arguments and granted the requested injunction. The court reasoned that HELLO KITTY is well known in Korea and is a source identifier protected under the Unfair Competition Protection Act. It stated that the registered marks and the signs actually used by Dong-A were not identical; therefore, the signs could not be protected. The court further held that even use of Dong-A's registered marks would have infringed Sanrio's trademark rights, since Dong-A's marks were likely to cause consumer confusion as to the origin of the relevant goods. Dong-A appealed to the High Court.
The High Court affirmed the lower court's decision noting that Dong-A's trademark registration in 1976 was a misappropriation of Sanrio's trademark rights.
Dong-A has appealed to the Supreme Court.
Sang-Wook Han and Sarah Park, Kim & Chang, South Korea
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