IP High Court Decision, 2021Heo3215 (Case Concerning Van Cleef & Arpels)

The registered service mark at issue was widely known to domestic consumers and traders of the designated goods, namely jewelry and jewelry accessories, as indicating the source of particular goods at the time of the decision in this case. The mark in question forms the overall decorative shape of necklace pendants, earrings, and bracelets, which is highly visible to consumers and often recognized as identifiers that distinguish the goods from those of others. The defendant’s necklaces are immediately recognized by consumers as the plaintiff’s Alhambra collection or the registered service mark at issue. In light of these circumstances, the design in question is used as a trademark.

When compared to the registered service mark based on the flat shape of the design in question, which is more identifiable than other parts of the design, the two marks have the identical or similar overall appearance and designated (used) goods, and thus the design in question falls within the scope of rights of the registered service mark.