Stylized mark banned on grounds of unfair competition

In Migliore Co Ltd v Lee (2002La203), the Seoul High Court has issued an injunction banning the defendant from using its trademark MIGLSAMO in a stylized form that differs from the registered mark. The court found that although the stylized form does not infringe the plaintiff's registered mark MIGLIORE, its use constituted unfair competition because of its similarity with the stylized form of the plaintiff's mark.

Migliore Co Ltd, a famous South Korean shopping centre chain, is the owner of the trademark MIGLIORE. Since 1995 Migliore has used a stylized form of this mark on carrier bags and catalogues. In August 2001 Yoon Ho Lee started using under licence the mark MIGLSAMO on carrier bags in a stylized form strikingly similar to Migliore's stylized mark. Migliore petitioned for a preliminary injunction on the grounds of trademark infringement and unfair competition.

The court rejected the trademark infringement claim, finding that:

• it could not consider the unregistered stylized form of Migliore's mark because trademark infringement is decided on the basis of the registered form only;
  
  
• the MIGLSAMO registered mark is clearly dissimilar to Migliore's registered mark in appearance and pronunciation; and
  
  
• the marks' meanings are impossible to compare because both are coined words.

However, the court ruled that Lee's use of the stylized MIGLSAMO mark constituted unfair competition under the Unfair Competition Prevention and Trade Secret Protection Act. The decision was based on, among other things, the fact that (i) the stylized marks are similar in appearance, and (ii) both parties' carrier bags are used in the same locations.

As Lee has filed an objection to this decision, the case is still pending before the High Court.

Jay Young-June Yang, Kim & Chang, Seoul