The Supreme Court has recently dismissed an appeal in a trademark invalidation action under Article 7(1)(10) of the old Trademark Act (before promulgation of the current Act on February 29, 2016), which provided a relative ground for refusal based on potential consumer confusion with another party’s mark which is already “remarkably recognized” in Korea.

The decision we are discussing (case 2019Hu12179; April 29, 2020) reaffirms the consistently applied criteria for judgement in such cases, that is, whether there is concern that consumers would readily associate a trademark in question with the existing renowned trademark, goods or business of another party, thereby bringing about source confusion. As the judgement relating to similarity of trademarks and overlap in consumers at the Patent Court (earlier instance) differed to that of the Supreme Court, the earlier judgement has been quashed and the matter remanded to the Patent Court.

In the Supreme Court decision, the prior-registered mark “” was considered to be a renowned trademark at the time an application for “ ” (hereafter, “the subject mark”) was filed in class 18, and the “” part of the subject mark — said to be strongly distinctive — was considered to differ from the prior-registered mark only in the addition of the final “C” in terms of sound. Further, it was judged that the designated goods of both marks were similar and the consumer groups substantially overlap, and thus Article 7(1)(10) of the old Trademark Act applies to the subject mark.

Whereas, in the Patent Court, the two marks were considered to be dissimilar, with the court recognizing that the plaintiff had operated with their trade name pronounced as “MICMAC Lab”, in accordance with the lower “” portion of the subject mark, and that consumers also used this name for the business. Further, given that the upper part of the subject mark contains dots between the English letters, it was considered probable that consumers would refer to the lower part of the mark, and thus be more likely to read the mark as “MICMAC” or “MICMAC LAB” rather than the individual letters “M – C – M – C”.

However, the Supreme Court did not readily accept that consumers would widely consider the pronunciation of the subject mark to be “MICMAC” or “MICMAC LAB” based only on the fact the trade name “MICMAC LAB” was used by the defendant (= plaintiff in the earlier instance).

It was also judged in the Patent Court that the overlap in consumers of “bags for snowboards” — which are used under the subject mark — and “bags” (recognized to indicate “fashion bags”) of the prior-registered mark would not be significant, while the Supreme Court conversely found that there is similarity in the designated goods and overlap in consumers of the two marks, and thus consumers would readily associate the subject mark with the prior-registered mark, bringing about source confusion.

The conclusions as to trademark similarity in the two decisions differ depending on whether the subject mark was considered to be pronounced as per the defendant’s trade name in the lower “” part, and in my opinion the reason the Supreme Court did not admit that most consumers would pronounce the subject mark as per the defendant’s trade name is because the assertion that most consumers would be aware of the trade name was not sufficiently and objectively proven.

Further, in the Patent Court, the goods on which the subject mark was actually used (bags for snowboards) — which were not a designated goods description covered by the trademark registration — were used when comparing the overlap in consumers with the prior-registered mark. However, as this case (an invalidation trial) was for determining ineligibility for trademark registration, I believe that it would be fairer to make comparison based on the designated goods listed under the registration of the subject mark, rather than other goods on which the mark is actually used. In such case, as the designated goods were not limited to “bags for snowboards” but did include “bags”, it would be natural to conclude that not only are the goods similar to the prior-registered mark, but there is also overlap in consumers.

(A comparison was actually made considering the designated goods of both marks, but as the other party’s renowned mark was a registered trademark and the designated goods of the prior-registered mark also included “bags”, it did not affect the conclusion.)

In this decision, judgements relating to Articles 7(1)(7) (ineligibility for trademark registration due to similarity with an earlier registered mark) and 7(1)(11)+7(1)(12) (ineligibility for trademark registration due to similarity with an earlier used mark) of the old Trademark Act — which were among the grounds for invalidation of the subject mark — were omitted. Reading between the lines, this can be understood to mean the Supreme Court presupposed that the prior-registered mark is a “renowned trademark” — the highest degree of fame accorded to prior-used trademarks — and as it was judged that the potential for consumer confusion with respect to such a renowned trademark did exist, saw no need to pass separate judgement on these grounds.