Introduction of a precedent for ‘use’ of a registered trademark not being recognized due to modification of the trademark as used in practice
In order to facilitate the use of trademarks, Korean Trademark Law stipulates that anyone can request a registration cancellation trial against a trademark which has not been used for more than 3 years even though the mark is registered with KIPO (Article 119(1)iii of Trademark Act). After such trial is filed, if the owner of the trademark fails to prove use, the registration of the trademark shall be canceled.
According to the Patent Tribunal, requests for cancellation trials against registered trademarks, of which there were 1,676 cases in 2013 and 1,490 cases in 2014, have been steadily increasing, resulting in 2,120 cases in 2016 and 2,124 cases in 2017. Also, the Patent Tribunal canceled numerous trademark registrations, 1,207 cases in 2016 and 2,172 cases in 2017, through decision.
[Status of requests for trial for cancellation of a registered trademark not in use by year (2013~2017)]
[Status of proceedings of trials for cancellation of a registered trademark not in use by year (2013~2017)]
In connection with a trial for cancellation of a registered trademark not in use, in the case of using such a mark by excessively modifying it, the associated trademark right can be cancelled since such use is not recognized as “use of the registered mark”. The following precedents show cases in which, even though a mark was used, the right was cancelled since sameness between the registered mark and the mark being used was not recognized. In light of these precedents, trademark owners should keep in mind that it is desirable to use trademarks as registered.
2. Judgment of the Patent Court (Patent Court Decision or Remanding decision to Patent Court after Dismissal of Appeal by Supreme Court)
2-1. Supreme Court decision 2015HEO3061 judged on January 13, 2015 (Remanding decision to Patent Court after the Dismissal of Appeal by Supreme Court)
The Patent Court noted that “the trademark ‘
’ that was actually displayed on underwear products which were produced and delivered by the trademark owner differs in typeface and pattern type when compared to the registered trademark ‘
’ of this case, and the ‘CooLMaX Wear’ part at the bottom of the mark is omitted. However, the above ‘CooLMaX Wear’ part cannot be assumed to be a part of the trademark of this case, which does not have distinctiveness in relation to the designated goods, and considering that the complainant has filed or received numerous applications and registrations for trademarks in which the above part is omitted, it is difficult to say that the mark displayed on the underwear products in practice is recognized to be the same as the registered mark of this case.”, and did not recognize the use of the mark used in practice as a use of the registered mark.
2-2. Patent Court decision 2015 HEO79 judged on September 24, 2015 (Final judgment)
The Court concluded that “As the registered trademark in this case ‘
’ is a combination of English letters and figures, and the parts thereof function as independent major parts, but the mark ‘
’consists of English letters only and has no figures, both marks cannot be seen to be marks which have sameness and which are seen to be similar”, and did not recognize the use of the mark used in practice as a use of the registered mark.
2-3. Patent Court decision 2016HEO6999 judged on June 2, 2017 (Remanding decision to Patent Court after a Dismissal of Appeal by the Supreme Court)
When comparing the appearance of the registered trademark “
” and the mark “
” which has been used in practice, the patent court found that in the case of the mark which was used in practice, as there is a difference in that the walking directions of the man with a hat are opposite, which can be a characteristic composition of a figure of a mark, and the part of the circular shape is omitted, it cannot be regarded as a mark for which sameness can be recognized in a common business sense.”, and did not recognize the use of the mark used in practice as a use of the registered mark.
3. Discussion and Implications
In principle, the trademark system is a system aiming to simultaneously protect the interests of trademark owners and the trust of consumers regarding choice of goods by granting exclusive rights to the use of a trademark, and thus there is both a public interest aspect and a private aspect. Accordingly, if a trademark has not been used for more than 3 years after registration, anyone can request a trial for cancellation, and while it is important to receive registration, it is also important to maintain a registration. In particular, trademarks do not have separate registration periods such as patents/utility models/designs do, and can be permanently monopolized if renewed every ten years after registration.
Accordingly, if a trademark owner fails to begin using a trademark continuously for more than three years after registration, the trademark owner may consider proactively re-filing an application, and even if the trademark owner has started using the trademark, the trademark owner should be careful so that the use of the trademark registration does not lead to cancellation due to using a modified version which cannot be recognized for having sameness with the registered mark as in the above precedents.
Accordingly, it is preferable that trademark owners use registered trademarks as they are registered, and in the case that it is necessary to use a trademark in a modified manner, it is possible to consider simultaneously using the registered trademark as well as using the modified version. In addition, separately securing trademark registration for the modified trademark may be a good strategy.