In a recent decision (Case No. 2024Do8174), the Supreme Court of South Korea held that the mark ‘Catalic Narcisse Nudism Holic Matte Lipstick’ used by the defendants on lipstick products was similar to the injured party’s registered trademark ‘Nudism’ for lipstick, among others, thereby infringing the trademark right.
Overview
The issue arose when the defendants began using the mark ‘Catalic Narcisse Nudism Holic Matte Lipstick’ (the Mark in Dispute) on lipstick products around 2020. The injured party filed a criminal complaint alleging that the use of the above mark infringed its registered trademark ‘Nudism’, which had been filed and registered in 2018.
The court of first instance found trademark infringement and rendered a guilty verdict. Upon appeal, the court sided with the defendants, holding that the essential part of the Mark in Dispute was “Catalic”, and denied infringement, acquitting the defendants. However, in the final instance, the Supreme Court determined on November 20 2025 that the use of the Mark in Dispute constituted infringement of the injured party’s trademark right, quashed the acquittal judgment, and remanded the case to the lower court.
The Supreme Court’s ruling
First, the Supreme Court specifically articulated the criteria for determining similarity in composite trademarks as follows:
The similarity of a composite trademark consisting of a combination of two or more words or devices is determined based on the overall appearance, pronunciation, and concept of all the constituent elements. However, to reach an appropriate conclusion through overall observation, it is necessary to first compare and determine similarity based on that essential part.
In determining an essential part, the following factors should be considered comprehensively:
Whether that part is well known or famous;
Whether it gives a strong impression to ordinary consumers;
Whether it occupies a high proportion in the overall trademark;
The relative level of distinctiveness compared with other constituent parts;
The state and degree of combination; and
The relationship with the designated goods and actual trading circumstances, etc.
If there is no such essential part, similarity must be determined by comparing the trademark as a whole in accordance with the principle of overall observation.
Based on such criteria, the Supreme Court found that “Nudism” has a distinctiveness with respect to colour cosmetics such as lipsticks, and that each “Catalic”, “Narcisse”, and “Nudism” gives an impression of the Mark in Dispute to ordinary consumers and independently performs the function of indicating the source of goods, and therefore all constitute essential parts of the Mark in Dispute.
In determining the distinctiveness of “Nudism”, the Supreme Court considered the following:
Unlike the term “nude”, which intuitively evokes “skin tone” in colour cosmetics such as lipsticks and thus has low distinctiveness, the “Nudism” element of the disputed mark is distinguishable from “nude”, not a common expression, and not readily understood by ordinary Korean consumers; and
It cannot be concluded that “Nudism” directly indicates the quality, efficacy, or intended use of a lipstick or other colour cosmetics, nor can it be deemed a commonly used term in the cosmetics industry in actual trade or an indication necessary for transactions of cosmetics.
In determining what portion serves as an essential part, the Supreme Court highlighted the following points:
In addition to the “Nudism” portion, the “Catalic” and “Narcisse” elements of the Mark in Dispute likewise have distinctiveness in relation to the goods used;
Given that the defendant’s advertisement of lipstick products using the Mark in Dispute displayed the mark separated into four rows, showing “Narcisse”, “Nudism Holic”, “Matte Lipstick”, and “Catalic”, it cannot be said that the Mark in Dispute has always been used as a whole; and
Since “pronunciation” is important in determining the similarity of word marks, the mere fact that the “Catalic” is written in uppercase letters does not mean that only the “Catalic” portion gives a strong impression to ordinary consumers, notwithstanding the presence of the “Narcisse” and “Nudism” portions.
In conclusion, the Supreme Court held that when comparing the registered trademark ‘Nudism’ with the “Nudism” element, which constitutes an essential part of the Mark in Dispute, the English spellings are identical, the pronunciations are the same, and the two are therefore similar.
Significance and implications of this ruling
The Supreme Court explicitly stated in this ruling that in composite trademarks, it is not necessarily the case that only one portion is the sole essential part; rather, each portion that gives a strong impression to consumers may constitute an essential part.
From the early 2000s, as Korean make-up trends increasingly emphasised naturalness, trademark applications for cosmetics began incorporating the word “Nude”. Since 1998, over 200 such applications have included “Nude” or similar terms.
The representative of the defendant company also filed several ‘Nudism’ trademarks, including ‘Narcisse Nudism Holic Matte Lipstick’. In the examination process, this mark was not rejected based on the injured party’s ‘Nudism’, but another party’s ‘Narcisse’ mark. Accordingly, the defendant may have believed that attaching its own registered trademark ‘Catalic’ would protect it from legal consequences. Furthermore, the defendant’s products (lipsticks) and their packaging prominently displayed the ‘Catalic’ trademark.
However, the Supreme Court did not overlook that the defendant displayed its mark in four separate rows in the product advertisement, and in such a case, the “Nudism” portion could attract consumers’ attention.
This decision is significant for cases where a party intentionally incorporates another’s famous trademark into its product name or advertising, together with its own distinctive elements, in an effort to evade trademark infringement.
At the same time, when adopting trending or commonly used trade terms in a trademark or in advertising, one must exercise caution, as such terms may fall within another party’s registered trademark and constitute trademark infringement.
