Can so-called search advertising on web portals (such as Naver in Korea, Google in the US, Baidu in China) be viewed as the use of a trade mark under the Korean Trade Mark Act (KTA)?
Search advertising is a method of online advertising wherein input of a search term shows a certain website in search engine results. Search advertising enhances advertising effectiveness by providing more purchase options to consumers, giving an impression that the targeted advertisement is highly related to what the consumers have searched.
The Patent Court recently held that such search advertising is recognised as a use of a registered trade mark under the Korean Trade Mark Act (Patent Court decision 2016Heo5439 dated November 18 2016).
The trade mark registrant is a medical doctor who operates a dermatology and plastic surgery clinic named Skinique and runs the website Skinique.net. The plaintiff also owns a trade mark (Filltox and its Korean equivalent) for the designated goods "hospitals, dermatology, plastic surgery, etc" in class 44.
The petitioner/defendant initiated a non-use cancellation trial at the Intellectual Property Trial and Appeal Board (IPTAB), against the registered trade mark arguing that the trade mark registration should be cancelled according to the KTA because it had not been used for the designated goods for more than three consecutive years before the filing date of a cancellation trial. In this regard, the IPTAB ruled that the registered trade mark in dispute should be cancelled with respect to the designated goods in class 44 because the use of this trade mark had not been proved.
The plaintiff then brought an appeal before the Patent Court, insisting that he used the registered mark as a keyword to conduct search advertising. That is, when an online user enters the keyword "필톡스" (Korean equivalent of Filltox) in the search bar of a web portal (such as Naver), the clinic name "Skinique clinic" and the domain name and address of the plaintiff's website (www.skinique.net) appear on the search result screen as shown in the picture below. If an online user clicks on the domain name, it redirects him to the plaintiff's website.
In addition, the plaintiff's trade name Skinique can be seen on the upper left of the website, and the Filltox procedure is introduced there. (According to the plaintiff's allegation, Filltox is the name of a plastic surgery procedure that combines Filler and Botox.)
The Patent Court decision
It is well established in a Supreme Court decision that advertising, which is a kind of use of a trade mark, includes the provision of information on goods not only through newspapers, magazines, catalogues, signboards and TV, but also as visual information through a search result screen on a search engine to the general consumer (Supreme Court decision 2010Hu3073).
Therefore, search advertising may be viewed as an act of selling or providing a designated product on the plaintiff's website, which is accessible from the web address displayed on the search result screen.
Considering this, the Patent Court concluded that the plaintiff's search advertising could be regarded as an advertisement of the registered trade mark for the designated goods, and thus, should be recognised as the use of a registered trade mark under the KTA.
This Patent Court decision has broadened the definition of the use of a trade mark in the KTA. In other words, the use of a trade mark is not only an act of directly using the mark on a website related to designated goods, but also an act of indirectly using the mark as a keyword through search advertising on a search engine. Therefore, even if a registered trade mark is used only as a keyword in search advertising, a trade mark registrant can secure the trade mark registration proving that the mark is used as a keyword through search advertising if a non-use cancellation against the registered trade mark is filed by a third party.
Furthermore, as search advertising is often used for business purposes, users of search advertising may consider filing a trade mark application for search keywords to secure an exclusive trade mark right.
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