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| IP Newsletter | Winter 2013/14 |
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TRADEMARK & DOMAIN NAME |
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trademark -  - 트레이드마크 |
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Reversing a long-held position, the Supreme Court of Korea en banc recently ruled that the use of only the English portion (or equally, only the Korean transliteration portion) of a registered English/Korean transliteration combination mark constituted use of the mark as registered (Case No. 2012Hu2463, rendered on September 26, 2013). |
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Prior Strict Standard |
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Until now, Korean courts cancelled English/Korean combination mark for non-use, if the registrant was only able to prove use of only one of the two portions of the mark. |
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The below are two examples of past Supreme Court decisions (Case No. 2003Hu1437, August 20, 2004 and Case No. 92Hu698, December 22, 1992) in which the marks as used were not recognized as constituting a valid use of the marks as registered. The registered marks were ultimately cancelled. |
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| Mark as registered |
Mark as used |
(HEALTH MATE with its Korean transliteration) |
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(TIFFANY with its Korean transliteration) |
(TIFFANY in Korean transliteration) |
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New position of the Supreme Court (September 2013) |
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Reversing its previous firm stance, the Supreme Court ruled that, although the attacked registration for the  mark (CONTINENTAL with its Korean transliteration), covering rubber V-belts, had not been used in its bilingual registered form, the use of the CONTINENTAL portion only on the designated goods, as shown below, was sufficient to save the registration from cancellation. |
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The Supreme Court justified its decision on the basis that Korean consumers are nowadays more accustomed to English words and can easily understand that the Korean portion of such combination marks are in fact a mere transliteration of the English portion, having the same meaning and pronunciation. |
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Thus, as long as the two portions of a registered combination mark have the same meaning and pronunciation, cancelling a registration simply because only one portion was used, ultimately would be a disservice to consumers who understand that the mark as used or as registered refers to the same source. |
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