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| IP Newsletter | Winter 2013/14 |
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TRADEMARK & DOMAIN NAME |
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New Hurdle for Trademark Infringers |
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In a surprising decision, the Supreme Court, upholding the Daegu High Court's ruling, recognized for the first time the existence of a presumption of negligence on the part of the infringer in cases of trademark infringement (Case No. 2013Dah21666, rendered on July 25, 2013), making it easier for plaintiffs to recover damages for infringement. While the Patent Act, Utility Model Act, and Design Protection Act all explicitly provide for such a presumption, the Korean Trademark Act does not (although it does provide for a presumption of willfulness in certain cases). |
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The Supreme Court reasoned that trademark registrations are public and that knowledge thereof should be available to any person exercising ordinary care. Therefore, the Court held that it is not unfair to impose upon businesses a duty of care to avoid infringing registered marks when using a mark in the course of their trade. |
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In order to rebut the presumption of negligence, a defendant must either provide a justifiable reason for being unaware of the registered mark, or a justifiable reason for believing the mark it was using did not fall under the scope of protection of the registered mark. Notably, in the specific case reviewed by the Supreme Court, the defendant actually had obtained a registration for its infringing mark, but the fact that the infringing mark had been registered was not recognized as a justifiable reason sufficient to rebut the presumption since the infringing mark was later retroactively invalidated. |
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It remains to be seen how this decision will be interpreted by future courts, particularly with respect to what constitutes a justifiable reason sufficient to rebut the presumption of negligence in trademark infringement cases. |
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