IP Newsletter | Winter 2014/15
	TRADEMARK & DESIGN
	High Court Says Mark Non-Distinctive at Registration Cannot Be Enforced
	Earlier this spring, the Supreme Court issued its en banc decision in New Balance vs. Unistar, which held that the scope of protection of a registered mark includes any non-distinctive portions of the mark that have acquired secondary meaning (for more details on this decision please see our Spring 2014 newsletter here). The Seoul High Court recently rendered a decision in a civil infringement action filed by New Balance on the same mark (2011Hu3698), which highlights the practical limits of the earlier Supreme Court decision. The facts: New Balance (& its Korean Distributor) vs. Unistar New Balance and its Korean distributor filed a civil action against Unistar seeking injunctive relief and compensation for damages. The action included a trademark infringement claim, in which New Balance argued that the portion of Unistar's mark was similar to New Balance's registered device mark. However, the High Court rejected the trademark infringement claim on the basis that New Balance's registration for its device mark was invalid. The High Court, consistent with the Supreme Court's decision in the HI WOOD case (please see our Fall 2012 newsletter here for more details), first reviewed the validity of the alleged infringed registered mark before proceeding to any substantive infringement issues. As did the Supreme Court in the earlier New Balance vs. Unistar case, the High Court found that New Balance's registered mark was not distinctive at the time of registration, on the basis that the portion was merely the shape of a shoe, and the portion was not itself sufficiently distinctive in and of itself to be granted registration. Because the High Court determined that New Balance's device mark was entirely non-distinctive at the time of registration, it held that the mark should not have been granted registration, and therefore was invalid, without any need to review infringement. Enforceable scope? As noted above, the Supreme Court effectively determined in the earlier New Balance vs. Unistar scope confirmation trial that, although New Balance's registration was not distinctive at the time of registration, due to the extensive use by New Balance of the portion on its products, the portion of the mark had acquired secondary meaning beginning in 2009. The Supreme Court had thus concluded that the use of the portion by Unistar fell within the scope of protection of New Balance's registration. While this may appear to contradict the recent High Court case, this may be explained by the fact that a scope confirmation trial is an administrative action at the Korean Intellectual Property Office ("KIPO") in which validity issues simply are not addressed, whereas a court hearing an infringement action may take into account validity issues when enforcing an IP right. Thus, while the Supreme Court confirmed in the earlier scope confirmation action that the enforceable scope of a mark is determined at the time of the alleged infringement, the recent High Court case (which did not even reach the infringement issues) is a reminder that the validity of a mark is determined with reference to the time of registration, and may render the infringement question moot. The High Court decision is currently under appeal before the Supreme Court, which may wish to further clarify the relationship between these two decisions.
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