1. Overview of the case
On November 11, 2019, Company W applied for a trademark
with the restaurant franchise business as a designated service business (the "Trademark"). On January 19, 2021, it received registration for the Trademark. Meanwhile, Company J, without any awareness of the existence of the Trademark, opened its first franchise store using the trademark "Woori Halmae Tteokbokki" (the "Client's Trademark") in January 2020. Afterwards, Company J had approximately 350 franchisees as of 2023. In this situation, Company W filed a lawsuit against Company J in 2023, seeking a ban on the use of the Client’s Trademark and a large amount of compensation for damages on the grounds of infringement of its right to the Trademark.
The main issue is whether Company J infringed upon Company W's Trademark.
Representing Company J, we proved from various angles that there was no infringement of the Trademark. Specifically, we argued and substantiated: (1) the Client’s Trademark is not "similar" to the Trademark; (2) the exercise of the Trademark is an abuse of rights because there are grounds for invalidity of the Trademark; and (3) the Trademark does not have any effect on the Client’s Trademark. It was proven that Company J did not infringe on the Trademark in any way. In particular, we focused our efforts on explaining the dissimilarity between the Client’s Trademark and the Trademark, being based on a variety of arguments.
Whether or not trademarks are similar is a major issue in most trademark infringement lawsuits, and the legal principles on the issue are sufficiently accumulated. However, making a judgment on the issue in individual cases is never easy. In reality, there are different judgment on whether two identical comparative trademarks are similar. This demonstrates that it is difficult to determine the similarity of trademarks. In this case, Company W asserted similarity between the Client’s Trademark and the Trademark, using its own theory. However, Barun Law, which has experience successfully handling multiple trademark cases, proved that the two trademarks were not similar from a variety of perspectives.
On January 19, 2024, the Seoul Central District Court accepted our argument and ruled that the Client’s Trademark was not similar to the Trademark for various reasons, and dismissed all the claims made by Company (Seoul Central District Court Decision 2023Gahap47495, dated January 19, 2024).
