IP High Court Decision, 2021Heo2465 (Case Concerning Supreme Trademark)

The issue in this case is whether the registered trademark at issue is identical or similar to a trademark that is widely recognized by consumers as indicating the source of goods of a particular person and consequently constitutes a trademark used for unfair purposes. When the prior used trademark is used along with another trademark, a goods identifier, a brand, or similar elements (hereinafter “Collaborative Trademark”) via partnerships or collaborations with other companies, the duration of usage of the prior used trademark in combination with Collaborative Trademark (hereinafter “Collaborative Combination Trademark“), the patterns of utilization, the degree of recognition that the prior used trademark and the Collaborative Trademark each had at the time of their usage, and the frequency of such partnerships and collaborations must be considered to determine whether domestic consumers or traders perceive the prior used trademark and the Collaborative Trademark as used in such a manner. If this holds true, the duration, manner, type, and scope of use of the Collaborative Combination Trademark may also be used as criteria to determine the degree to which the prior used trademark is known. It is reasonable to conclude that the registered mark at issue was recognized by domestic consumers to perceive the mark as identifying a particular source, judging in entirety from the length, frequency and continuity of use of the mark, the quantity of production and sales and market share of the good to which the mark is affixed, the method, frequency, content, period of and amount spent for its advertisement and promotion, the quality of the good, the reputation and credit of the users of the mark, and the degree and modality of any competition in using the mark. Moreover, although the registered trademark and the prior used trademark are different in appearance, they are similar in that they have identical name and concept and thus, are likely to cause misunderstanding or confusion among consumers or traders as to the source of the goods. In conclusion, the registered trademark at issue is similar to the prior used trademark that is perceived by domestic consumers as indicating a particular source and constitutes a trademark used for unfair purposes, as to obtain unfair profits or to cause damage to that particular person.