Under the Korean Trademark Act, the registration of a trade mark can be cancelled if it is not used within three years of the date on which an interested party files a cancellation action based on non-use or if it is used in an improper manner by the trade mark owner or its licensee. Articles 73(1)(ii) (improper use by a registrant) and 73(1)(viii) (improper use by a licensee) can be a good weapon for famous mark owners to attack third parties that own a trade mark whose registered form may not be considered similar to the famous mark, but the form actually used is very similar.

On the other hand, if the form actually used is considered equivalent to the registered form of the mark, then a cancellation action based on a trade mark owner's non-use or improper use would not be successful. However, under Article 73(1)(viii), even if the actually used mark and the registered mark are substantially the same, the registered mark can be cancelled if the actually used mark causes confusion with a third party's mark.

In order for Article 73(1)(viii) to apply: the subject mark (the registered mark subject to a cancellation action) is required to be identical and/or similar to the used mark by the licensee; the used mark is required to cause confusion in relation with a third party's mark; and the owner of the subject mark has not taken reasonable care to prevent such confusion.

On July 24 2008, the Patent Court held that: the subject mark is similar to its used mark ; the used mark by the licensee would cause confusion with the third party's (petitioner) famous "" mark; and that the subject mark registrant did not take any action to prevent such confusion (Case no 2000Heo7003). The registrant argued that Article 73(1)(viii) did not apply because the mark used by its licensee was substantially identical to the subject mark. However, the court denied the registrant's arguments and held that the subject mark should be cancelled.

In a related decision, the Supreme Court (Case no 2000Hu408) held that the mark , which is another form of the subject mark's actual use, can be considered as substantially identical to the registered mark and thus, the court rejected the petitioner's cancellation action based on non-use.

Won Seok Huh and Nayoung Kim

Kim & Chang
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Seoul 110-786
Korea
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