On behalf of its client, the owner of the American street fashion brand "
" ("Client's Mark"), Lee International prevailed in ten (10) cancellations actions against marks that are imitations of "Client's Mark" in June 2020. Following this victory, Lee International prevailed in four (4) invalidation actions against the marks "
," "
," "
" and "
" in March 2021. Although the Korean trademark application for the mark "
" is currently pending before the Korean Intellectual Property Office (KIPO) due to the issue of acquired distinctiveness, the Intellectual Property Trial and Appeal Board (IPTAB) acknowledged in the invalidation action decisions that Client's Mark and the word "Supreme" therein are widely known or at least recognized as specific source indicators among consumers, and thus the registered marks, which are imitations of Client's Mark, should be invalidated.
During the invalidation proceedings, Lee International submitted evidence of use for an extensive period of about 26 years since 1994. Furthermore, to prove the fame and recognition of Client's Mark in Korea despite not having an official store in Korea, Lee International conducted a survey on Korean consumers' recognition of Client's Mark and submitted the survey results as evidence that Client's Mark is widely known to Korean consumers, as well as numerous Korean newspaper and magazine articles reporting the fame of Client's Mark. To additionally prove that Client's Mark has been pirated in Korea, Lee International cited the numerous oppositions and invalidation actions filed against third party marks that are imitations of Client's Mark.
In response, the registrants asserted that the client has never operated a store in Korea, and that the supporting materials showing the use of Client's Mark outside of Korea are insufficient to prove that Client's Mark is widely known to general consumers in Korea.
The IPTAB, however, concluded that even if there is no official Supreme store in Korea, general consumers could purchase the goods through an online or select shop and there are numerous Korean newspaper articles reporting the popularity and fame of Client's Mark. On this basis, the IPTAB determined that Client's Mark is widely known or at least recognized as a specific source indictor among consumers in and outside of Korea in connection with "clothing, bags, footwear, etc."
The IPTAB decisions are significant in that the IPTAB acknowledged that not only the mark "
," but also the word element "Supreme" is widely known or functions as a specific source indicator among general consumers in and outside of Korea. Accordingly, it is expected that Client's Mark, which is currently pending before the KIPO, will be granted registration.
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