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IP Newsletter | Spring/Summer 2017
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TRADEMARK, DESIGN & UNFAIR COMPETITION
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Copycat Packaging Enjoined for Unfair Competition on Dilution Grounds
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Kim & Chang successfully obtained a preliminary injunction recently at the Seoul Central District Court on behalf of its client, Binggrae Co., Ltd. ("Binggrae"), against Daee Food Inc. ("Daee") for selling a product that copied the appearance of Binggrae's well-known banana flavored milk beverage. Significantly, while Daee's product (a banana-flavored jelly snack) technically did not infringe any of Binggrae's registered trademarks, Binggrae was ultimately able to prevail on a dilution theory under Korea's unfair competition law. The two products are shown below.
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| Binggrae's banana flavored milk product |
Daee's banana flavored jelly product |
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Dilution under Article 2, Paragraph (1), Item (c) of the Unfair Competition Prevention and Trade Secret Protection Act refers to the act of causing harm to a famous mark or source identifier by using a similar mark or source identifier to sell or distribute another party's goods. A key issue generally is whether the original mark or source identifier is considered to be sufficiently famous in Korea to warrant protection from this type of unfair competition.
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In this case, Binggrae's product packaging had previously been determined to be a well-known source identifier, in a 2005 preliminary injunction action against Haitai Dairy Co., Ltd.'s sales of a rival banana flavored milk beverage.
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Consequently, the court found that (i) the appearance of Binggrae's packaging was a well-known source identifier; (ii) the defendant's packaging and product appearance were highly similar to Binggrae's; and (iii) sales of the defendant's product was likely to harm the selling power and reputation of Binggrae's famous trademark, and granted a preliminary injunction.
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The court further confirmed that Binggrae had rights to the appearance of its banana milk product even for non-milk products (despite the fact that Binggrae's trademarks on the packaging are only registered for dairy products), because it determined that the appearance of the packaging itself was an intrinsic asset of Binggrae, and because Binggrae itself had used the same packaging on other types of products.
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If you have any questions regarding this article, please contact:
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For more information, please visit our website: www.ip.kimchang.com
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