IP Newsletter | Winter 2014/15
	TRADEMARK & DESIGN
	Landmark Decision Puts the Freeze on Copying Ice Cream Shop's Trade Dress
	In the first South Korean court ruling of its kind, the Seoul Central District Court recognized that a shop's general appearance and decorative elements can be protectable trade dress under the Unfair Competition Prevention and Trade Secrets Act ("UCPA"). In this case, Kim & Chang successfully represented the operator of a dessert café chain in its lawsuit against the franchisor of a similar chain for unfair competition on the basis that the latter was copying its signature soft ice cream dessert and the unique appearance of its cafés. The facts: NUPL Co., Ltd. ("Softree") vs. Mcostar Co., Ltd. ("Milkcow") The plaintiff Softree, a high end dessert café franchise in Korea, offers a signature dessert consisting of soft vanilla ice cream topped with real pieces of honeycomb and honey. The defendant Milkcow operates cafés which mimic the plaintiff's café concept and sells the same dessert with a similar presentation. Softree sought an injunction against Milkcow on the grounds that: i) the latter's manufacture and sale of its honeycomb ice cream dessert infringed Softree's rights under the "dead copy" provision of the UCPA (Article 2(1)(ix)), and ii) its adoption of Softree's interior and exterior design components infringed Softree's trade dress under the "catch-all" provision of the same Act (Article 2(1)(x)).
	SOFTREE MILKCOW
	The UCPA's "dead copy" provision generally prohibits selling, renting, displaying, importing, or exporting a product which imitates the appearance of another person's product (i.e., the product's shape, pattern, color, gloss, or a combination of these attributes), with some limitations, such as if the imitation product was manufactured more than three years after the original product was first made, or if the product appearance is common for such goods. The UCPA's "catch-all" provision was only recently introduced on January 31, 2014, and states that a party may not interfere with another person's right to profit by appropriating for one's own business use, without authorization, anything which the other person produced through considerable effort and investment in a manner that contravenes fair commercial trade practice or competition order. This broad provision is the only provision in the UCPA which proscribes general acts of unfair competition, and until this case had never been interpreted by any Korean court. Milkcow characterized Softree's product as merely a piece of honeycomb placed on top of ice cream, and argued that this was not a unique idea in the Korean marketplace. Milkcow also argued that Softree's shop design elements were common designs. However, the Court found in favor of Softree as to its ice cream dessert claim, noting that Milkcow imitated not just the idea of Softree's dessert, but Softree's exact expression of the idea. The Court further found that Milkcow was using exterior signage, menu boards, ice cream cone rings, and a milk cow logo that looked very similar to Softree's, as well as identical displays of ice cream cones, and honeycombs. The Court adjudged that these six components (compared in the following table) amounted to Softree trade dress as they give Softree cafés their unique atmosphere.
	SOFTREE MILKCOW
	The decision The Court granted a permanent injunction against Milkcow's sale of its honeycomb desserts as well as its use in combination of the six Softree shop design components described above, on the basis of the "dead copy" and "catch-all" provisions of the UCPA, respectively. In particular, the Court held that it was unjust for Milkcow to adopt for its business all of the above Softree shop design elements, which were conceived of and developed by Softree through substantial effort and investment. This case is significant as the first court decision in Korea to interpret the "catch-all" provision of the UCPA, and specifically to recognize that that provision protects a store's substantial effort and investment in designing its "look and feel."
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	Yong-Gab KIM ygkim@kimchang.com Young Joo SONG yjsong@ip.kimchang.com Angela KIM angela.kim@ip.kimchang.com
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