IP High Court Decision, 2020Na1384 (Case Concerning PUMPING Toothpaste)

The term “PUMPING” in the plaintiff's registered trademark is not distinctive because “PUMPING” is a descriptive mark indicating the method of using the goods in a general way and it is not appropriate to grant exclusive right to a particular person for the sake of public interest. Concerning the plaintiff’s registered trademarks 1 to 5, the essential parts are ‘PERIO,’ ‘PERIO 46cm,’ and ‘PERIOE 46cm,’ while the defendant’s trademarks 1 to 3 feature the essential part of ‘2080.’ Upon comparison, it is evident that the appearance, name, and concept of each mark are not identical. Furthermore, when comparing the plaintiff’s registered trademark 6 to the essential part of the defendant’s mark, ‘2080,’ each mark are not identical in their appearance, name, and concept. As a result, the defendant’s act of using their marks does not constitute infringement of the plaintiff's registered mark.

Since ‘PUMPING’ lacks distinctiveness as a descriptive mark, it cannot be considered widely recognized in the country as an indicator of the source of the plaintiff’s goods. Additionally, there are differences in appearance, name, and concept between the plaintiff’s registered trademarks and the defendant’s marks. Therefore, the defendant’s act of using the marks does not constitute an act of causing confusion under Article 2(1)(a) of the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter “Unfair Competition Prevention Act”).

The ‘PUMPING’ or ‘PUMPING’ brand, the shape of the container, the structure of the pumping toothpaste, and the principle of operation do not constitute outcomes achieved through substantial investment or efforts under Article 2(1)(m) of the Unfair Competition Prevention Act. Consequently, the defendant’s act of using the marks does not constitute an act of using the outcomes without permission under Article 2(1)(m) of the Unfair Competition Prevention Act.