Korean Supreme Court Decision In Trial To Confirm Scope Of Trademark Rights

In August, the Korean Supreme Court decided on case 2018Hu10848, an appeal from the Patent Court in a trial to confirm the scope of trademark rights. The ruling confirmed the scope of comparison permitted in such a trial, and may be interesting to anybody not familiar with such a subject matter.

What is a trial to confirm the scope of rights, and what purpose does it serve?

The Korean Trademark Act provides for a trademark right holder, exclusive licensee or interested party to request a trial to confirm the scope of rights in a registered trademark (hereafter "scope confirmation trial"). This is an inter-partes administrative trial used to determine whether the use of a specific mark on specific goods falls under the scope of — and would thus potentially infringe — a registered trademark. Scope confirmation trials are heard at first instance by the IP Trial & Appeal Board ("IPTAB"), an administrative tribunal organized under the Korean IP Office. The initial IPTAB decision can be appealed to the Patent Court, and subsequently to the Supreme Court.

There are two variations: a positive trial to confirm that specific subject matter infringes a registered trademark (where the trademark owner/licensee is the claimant seeking confirmation), and a negative trial to confirm that specific subject matter does not infringe a registered trademark (filed by an interested party using or planning to use an identical/similar trademark, where the registered trademark owner/licensee is respondent). In addition to the details of the registered trademark, the requesting party must submit a sample of the mark for comparison, as well as a list of goods on which the mark is used.

In the case that the mark for comparison includes any portion against which trademark rights would not have effect, the comparison with the registered trademark should be made on the basis of whether the mark excluding such portion(s) would cause confusion as to the origin of the goods. Portions which would be excluded are those prescribed under Article 90 of the Trademark Act, for example the bona fide use of a personal name, common name/quality/shape etc. of the relevant goods, well-known geographical place names, etc.

An unregistered mark which comes under Article 99 of the Trademark Act (relating to the right of continuous use of an unregistered mark based on fair prior use, where the mark had a source-indicating function at the time the registered trademark was applied for) may not...