Trademark injunction issued based on copyright infringement

There are cases in which a company that owns both the copyright and foreign trademark right in a design is prohibited from using that design in Korea because a third party has already registered the same design as a trademark with the Korean Intellectual Property Office. This is possible because copyrights and trademarks have different criteria for registration and purposes of protection, and fall within two separate legal systems. Thus, a trademark that is identical or similar to a prior copyrighted work can be applied for, and registered by, a person other than the copyright holder. However, Article 53 of the Korean Trademark Act stipulates that:

"a trademark owner may not use his/her registered trademark without the consent of the copyright owner if, depending on such use, the trademark right conflicts with the other party’s copyright which was vested before the filing date of the trademark application."

Therefore, in general, a copyright owner may have the legal ground to request, based on its copyright, that a local trademark owner stop use of its trademark.

Recently, the Seoul High Court issued an injunction preventing the defendant from using its trademark in Korea, finding that such use violated the plaintiff’s copyright. The court reasoned that the plaintiff, a US corporation, had created and published the first design at issue in this case around 1976, and had also created and published a later design around June 1990, while the defendant had used a design identical or similar to the plaintiff's design by registering a domestic trademark for its own business (Decision 2011Na70802, July 25 2012, appeal pending before the Supreme Court).

First, when determining the choice of law between Korean and US law, having regard to the eligibility criteria for copyright protection, the duration of protection and the test for copyright infringement, the Seoul High Court held that, pursuant to the Berne Convention and Korea’s Private International Law, the laws of the Republic of Korea were the governing laws in this case because this was where protection was sought and where the infringement had occurred.

In addition, the court noted that the Korean Copyright Act expressly protects works of applied art, including trademark designs, suggesting that works of applied art are "artistic works that may be copied identically onto an article, and whose originality may be recognised apart from the applied article, which includes designs, etc". Thus, the court held that the precondition for applied art is its physical or conceptual severability from the article, but this does not require the severability of a separate source-identifying function. As such, even if there is an overlap with the source-identifying function, trademark designs can be still recognised as works of applied art.

Generally, in order to prevail in copyright cases, the compared works must be identical or substantially similar, and there must be proof that the infringing work was based on the plaintiff’s copyrighted work. Although there was no direct evidence that the infringing work was based on the plaintiff’s work in this case, the Seoul High Court still held that the defendant had infringed the plaintiff’s copyright in the design of the trademark by relying on circumstantial evidence - that is, the likelihood that the defendant had access to the original copyrighted work and the striking similarity between the two works.

This decision is significant in that it confirms that:

• a copyright owner may prevent a trademark owner from using its trademark based on earlier copyright; and
• a copyright owner may seek to secure its own trademark in the future by using injunctive relief as a stepping stone.

Chang Hwan Shin and Nayoung Kim, Kim & Chang, Seoul