The Korean Trademark Act (KTA) adopts the first-to-file principle and
recognises exclusive rights only in the case of registered marks.
Unregistered logo or device marks are, in principle, not eligible for
any protection under the KTA. However, there are some exceptions.
First, if an unregistered logo mark is widely recognised in Korea,
the mark may be protected under the Korean Unfair Competition Prevention
and Trade Secret Protection Act (KUCPA) instead of under the KTA.
However, it is very difficult to acquire protection under the KUCPA
because the required fame needs to have been acquired in Korea instead
of in the country of origin, and it takes considerable effort to
successfully demonstrate such fame even if the logo mark has actually
been used in Korea. Additionally, the Korean courts take a conservative
position on the recognition of such fame. Under the KTA, imitations of
other persons' marks that have a certain level of recognition in and
outside of Korea are refused registrations, even if they were the first
to be filed, and the justifiable owners are entitled to invalidation
proceedings against such marks once they are registered.
Second, logo marks are entitled to protection under the Korean
Copyright Act (KCA) even if they are not registered. However, not all
logo marks are entitled to such protection; only those that are
recognised as having originality required for a work are entitled to
such protection. There are no specific guidelines set as to the extent
of the originality required for copyright protection, leaving specific
interpretation of originality reliant on court precedents.
Consequently, the easiest way to acquire protection for a logo mark
in Korea is to register it as a trade mark with the Korean Intellectual
Property Office (KIPO). However, sometimes a third party files to
register a foreign logo mark in its name by taking advantage of the fact
that the mark has yet to be registered in Korea.
If the logo mark is a very famous work overseas, a third party cannot
register it in its name. However, if the work is not so famous, a third
party can easily register the mark in its name. In such a case, the
justifiable owners may face great difficulties in using their logo in
Korea unless the registered mark is invalidated via an invalidation
proceeding. This is particularly so when the mark cannot acquire
copyright protection. In the case of a logo that is protected under the
KCA, the registrant cannot use the registered mark without the consent
of the copyright holder (KTA, Article 53).
Here we will look at some Korean court rulings dealing with
originality as required for protection under the KCA. Also discussed is
the level of recognition abroad required for protection under the KTA,
in relation to an actual case.
In general, a company's logo marks created for commercial use are
simple and distinct so that consumers can easily recognise them as a
source indicator of goods and can easily remember them. Such logo marks
seldom satisfy copyright standards for works of applied art, which are
as follows: a work that is "not a mere copy of another person's work and
carries expressions of thoughts or emotions of the author himself" and
"can be reproduced in the same shape on articles and whose originality
is distinguishable from the articles used" is copyright protected
(Article 3 2(15) of the present KCA).
The ability to be reproduced in the same shape is required for "mass
production," and "the originality that is distinguishable from the
articles used" refers to a logo's ability to be used separately as a
design on various articles or articles of utility. This means that a
logo mark that has minimum originality and is reproducible on various
products for mass production qualifies for protection under the KCA.
Accordingly, an unregistered mark may seek protection under the KCA before receiving protection under the KTA.
However, there is no known case of a logo mark consisting of a device
or a design that has been directly protected by the KCA. The stance of
the Korean courts towards copyright protection of a device or an image
that is mainly used as a trade mark can be inferred from the two cases
At the time of the first case, over the mark above, the defendant was
engaged in the retail of clothing by making unauthorised use of the
plaintiff's mark, having registered it ahead of the plaintiff, a
Japanese apparel company. The petitioner sought protection of its
unregistered device mark and other marks incorporating the device under
the KCA after a failure to prove its fame as required for protection
under the KTA. The court refused copyright protection and found that the
device mark in question, pictured above, should be protected as a trade
mark or a design because it could not be recognised as having
sufficient originality and seemed to have been used as a mark for
distinguishing between goods of different parties.
Going further back in time, Seoul District Court Case No 95 NA 36949
(decided on September 5 1997) was initiated by a plaintiff, the owner of
the unregistered device mark pictured above, upon discovering that the
defendant was using the plaintiff's mark without consent. The plaintiff
sought injunctions against acts of causing confusion with another
person's widely recognised source indicator under the KUCPA and
copyright infringement under the KCA. The court refused protection under
the KCA. They held that, although the device in the concerned mark had
some originality, and in addition to its practical role as part of a
trade mark it contributed to creating a certain aesthetic feel. However,
such aesthetic aspect or originality could not be recognised as being
so independent as to be separated from its original role as a trade mark
and be the subject of perusal by itself. Accordingly, the device did
not warrant copyright protection.
In light of the above two precedents, the Korean courts adopt the
principle of protecting a device that is only used as a trade mark or
that was created for use as a trade mark under the KTA, and take the
most conservative stance towards protection under the KCA and Design
Ultimately, in the case of an unregistered foreign mark that has the
minimal originality to qualify as a work of applied art, dual protection
under the KTA and KCA should be granted. However, considering the
present stance of the Korean courts, the most effective way to acquire
protection for an unregistered logo mark in Korea seems to be through
the KTA, Article 7(1)xii.
Often, third parties, taking advantage of the fact that an easily
recognised foreign mark is yet to be registered in Korea, register
imitations ahead of overseas-based owners and even sell counterfeits
using such marks.
WeSC AB (publ) (WeSC) is a fashion brand established in Sweden in
1999. It has used the logo mark , on clothing, bags, shoes, and
headphones, and such products are currently sold in Sweden and countries
worldwide. WeSC originals bearing the logo mark have been imported and
distributed in Korea since 2001.
A Korean individual registered an identical-looking logo in 2009 and
commenced to manufacture and distribute clothing, bags, shoes and other
fashion products marked with the logo, online. On discovering this, WeSC
filed an invalidation proceeding against the imitation mark. The owner
of the imitation mark responded by filing for a preliminary injunction
for trade mark infringement and a criminal complaint for trade mark
infringement against local distributors of WeSC originals.
WeSC focused its efforts on the invalidation proceeding and proceeded
to file additional invalidation proceedings and oppositions against
other registrants of its logo mark. Regarding the criminal complaint and
preliminary injunction directed against its local distributors, WeSC
filed a lawsuit in a civil court for acts of unfair competition and
compensation for damages as a counter-measure.
To successfully defend WeSC against the criminal complaint and
preliminary injunction in addition to disengaging the infringer from
acts of unfair competition, such as the distribution of imitations,
first the imitation mark had to be invalidated through the invalidation
proceeding being pursued with the Intellectual Property Tribunal (IPT).
The invalidation proceeding was based on KTA, Article 7(1)xii and xi.
KTA, Article 7(1)xi was added to the KTA in 1998 so as to prevent the
registration of an imitation of an easily recognised foreign mark that
had not yet been registered in Korea. It provides that "trade marks that
are identical or similar to a trade mark that consumers inside or
outside the Republic of Korea easily recognise as indicating the goods
of a particular person, and which are used to obtain unjust profits or
to inflict harm on a particular person and so on" should be refused
registration. Accordingly, a foreign mark that is recognised as
indicating goods of a particular person amongst consumers not just in
Korea but in any other countries, qualifies for protection under the
Subparagraph xi of the same article differs from subparagraph xii, in
that it refuses registration of a mark identical or similar to a
prior-used mark that has gained recognition as a source indicator for
goods of a particular person amongst consumers or distributors
specifically in Korea. This is because such a mark is liable to mislead
and confuse consumers as to the source of the goods.
To be successful in the invalidation proceeding, whether through the
reasoning of subparagraph xi or xii of KTA Article 7(1), the recognition
gained by the WeSC logo mark either in Korea or any one country
worldwide needed to be established based on substantial evidence.
To establish the wide recognition gained by the WeSC logo mark
amongst consumers in Korea and worldwide, substantial evidence was
collected, organised and submitted to the IPT. These included, but were
not limited to: total annual sales of products marked with the logo mark
worldwide and in Korea; an overview of trade mark applications and
registrations for the logo mark worldwide; pictures of local and foreign
celebrities wearing goods marked with the WeSC logo mark;
advertisements of goods using the logo mark; and press articles about
Also, a search was conducted which revealed that Korean individuals
who registered identical or confusingly similar logo marks had histories
of having habitually filed to register unregistered foreign marks. Such
search results were submitted as evidence of bad faith.
The above materials were also submitted in the civil action and
criminal complaint directed against the local distributors of the WeSC
originals and were again utilised in the civil action against the
manufacturers and distributors of the imitations.
The IPT admitted all of the arguments and evidence submitted by WeSC
and concluded that the WeSC logo mark had gained such recognition so as
to be recognised as a particular person's mark in Korea, and that in the
case of the use of the imitation mark, there was a likelihood of
misleading consumers as to the sources. The IPT also concluded that the
imitation was filed in bad faith. Accordingly, it was decided that the
registered imitation should be subject to invalidation. The IPT
proceeded straight to the other cases and rendered decisions that
imitation marks registered or filed by other individuals should likewise
be invalidated or rejected using the same reasoning.
An influential decision
The IPT decision on the above invalidation proceeding will likely
have great influence on the outcomes of all the pending civil
proceedings and criminal complaints in WeSC's favour. It will also serve
as a useful reference and guide in similar invalidation proceedings
against imitation marks that may possibly occur in the future.
|Doug Jay Lee|
Doug Jay Lee, a partner of the trade mark team at Yoon & Yang IP
law practice group, joined Kim Shin & Yu, a predecessor law firm of
Yoon & Yang, in 1993. Doug was admitted to the Patent Bar in 1993
and is an arbitrator of the Korea Domain Name Dispute Committee, an
arbitrator of the Asia Domain Name Dispute Committee, a commissioner of
the KIPO Trademark Policy Advisory Committee, a commissioner of the
trade mark committee for the Asian Patent Attorneys Association, and a
commissioner of the Korea Trademark Association. He was previously the
educational director of the Korean Patent Attorneys Association and a
commissioner of the Patent Attorney Qualification Commission with the
Korean Intellectual Property Office. His practice ranges from trade mark
prosecution to trade mark disputes, unfair competition and trade mark
licence negotiation; and he has experience in copyright disputes and
domain name disputes.