Supreme Court KITSON decision: demonstrating fame may just have become easier

South Korea

The Supreme Court has issued a significant decision in an invalidation action, recognising the well-known status of a mark in a foreign country based essentially on elements other than financial data.

Foreign companies which have filed similar actions in Korea are aware that it used to be close to impossible to obtain a successful result based on the reputation of their mark, if such reputation was not also demonstrated by significant sales volumes, advertising figures and a significant market share detailed in objective documents.

In the present case, in 2006 MainOne Co Ltd filed for the registration of the KITSON mark, which is identical to the trade name of a fashion boutique located on the west coast of the United States operated by A-List Inc, and is widely known as the trademark of A-List in that country. MainOne subsequently obtained registration of the mark in Korea.

Upon becoming aware of the registration, A-List filed an action for invalidation of the mark. Initially, the Intellectual Property Tribunal recognised the reputation of the KITSON mark in the United States and issued a decision invalidating MainOne’s registration. However, the Patent Court, following a well-established practice, concluded that the reputation of the KITSON mark in the United States had not been demonstrated due to a lack of specific evidentiary materials showing the market share of the KITSON mark and A-List’s advertisement expenditure. 

Seized with this case, the Supreme Court, after carefully reviewing all the elements concerning the reputation of the mark, noted that, although only sales volumes had been submitted, it was apparent from the evidentiary materials before the court that the KITSON mark had been used since 2000 as the trade name of a fashion store on Rodeo Drive, the famous shopping street in Los Angeles, and as a trademark in connection with clothing, shoes, bags and hats, among other things. Further, the Supreme Court considered the newspapers, magazines and television shows (published or broadcasted around 2005-2006) submitted by A-List in which the KITSON mark was identified as one of the favourite brands of Hollywood stars, and consequently, as a very popular brand among fans of those celebrities in the United States. The court concluded that these documents demonstrated the well-known status of the mark. 

This decision is significant because it is not always easy for companies to demonstrate the reputation of their marks based on financial data, especially when the relevant period goes back several years. It is hoped that this decision will mark the beginning of a new trend among Korean courts, opening the way for alternative modes of demonstrating the reputation of foreign marks.

Min Kyoung Jee and Alex Hyon Cho,  Kim & Chang, Seoul

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