IP High Court Decision, 2021Heo2007 (Case Concerning Born This Way Trademark)

The issue in this case is whether the registered mark at issue constitutes a trademark that is inappropriately used in conjunction with the prior used trademark. In consideration of various aspects, such as duration of use, sales volume, and sales method at the filing date of the registered trademark, the prior used trademark had garnered recognition in the United States, to the extent that it was associated with a product of a particular person among average consumers or traders. The term, ‘born this way,’ is a commonly used idiomatic phrase in English-speaking countries and is also the title of a well-known song by the internationally acclaimed American singer, Lady Gaga. Given these circumstances, it cannot be concluded that the plaintiff filed the trademark application with the intent to make unfair profits by taking advantage of business reputation accumulated in the prior used trademark.