1. Case Overview
A. The Party Represented by Barun Law: Trademark owner A
B. Case Background
Trademark owner A, while serving as the CEO of Company B, permitted Company B to use the trademark in question. The trademark consisted of a combination of English and Korean elements, but Company B only used the English portion of the trademark.
Subsequently, conflicts arose between A and Company C, which had acquired A's shares, leading to A's dismissal as CEO of Company B. After being dismissed, the trademark owner A had no reason to allow Company B to continue using the trademark and filed for an injunction against Company B to stop using the trademark.
In response, Company B claimed it had only used the English portion of the trademark, arguing that this did not constitute use within the same scope, and filed a non-use cancellation trial against trademark owner A.
2. Judgment and Basis: Patent Court Decision 2024Heo11217, dated September 26, 2024
The Patent Court dismissed Company B's request, ruling that Company B, as a non-exclusive licensee, had been using a substantially identical mark (the English portion of the registered trademark). The court found that the Korean element of the trademark was a transliteration of the coined English portion, as evidenced by objective data. Even if trademark owner A had pronounced the Korean and English portions differently after the fact, there was no circumstance suggesting that the Korean portion ceased to be a transliteration of the English portion. Thus, the court held that the English portion of the trademark used by Company B constituted use of a substantially identical trademark.
3. Our Arguments and Role
We demonstrated, based on objective evidence, that the English portion of the trademark was a coined term and that the Korean transliteration uniquely reflected the context of the coined term's creation. We argued that when a trademark displays both English and Korean portions together, the use of only the English portion still constitutes use within the same scope under the law. As a result, it was proven that Company B's use of the English portion of the trademark fell within the scope of the registered trademark.
Through these efforts, trademark owner A's trademark was not canceled for non-use. The trademark owner could assert rightful ownership against Company B.
4. Significance of the Judgment
This ruling reaffirms that even if only the English portion of a trademark with both English and Korean elements is used, such usage still constitutes use of a substantially identical trademark as long as the Korean element is a transliteration of the English portion. It will serve as a legal precedent regarding the use of trademarks with combined English and Korean elements.
- Attorneys involved: Kim Yong-kyun, Lee Eung-se and Kim Tae-sang
