Lee International

[Background of the Case]

The Defendant filed an application to register the Subject Mark with respect to the services “model recruitment, advertising and marketing,” etc. in Class 35 on February 24, 2016 and obtained registration on July 25, 2017. INSTAGRAM, LLC, subsequently filed an invalidation action against the Subject Mark with the Intellectual Property Trial and Appeal Board (IPTAB) based on its prior-used marks “” and “,” which was dismissed based on the dissimilarity of the compared marks.   INSTAGRAM, however, filed an appeal against the IPTAB decision with the Patent Court and received a favorable decision invalidating the registration of the Subject Mark (Patent Court Decision No. 2020 heo 4464: Final and Conclusive) as summarized below.   

[Summary of Patent Court Decision]

The Patent Court determined that the Prior Marks were already substantially known to general consumers in or outside of Korea as specific source indicators of social network services at the time the application for the Subject Mark was filed, especially based on the materials acquired through the Internet.

In determining whether the Subject Mark is similar to the Prior Marks, the Patent Court stated that the Prior Marks would be abbreviated as “INSTA” for the following reasons: (i) general consumers could not easily pronounce the Prior Marks in their entirety, i.e. /in-seu-ta-geu-rem/ in five syllables; (ii) general consumers tend to perceive or pronounce marks by their leading part “INSTA;” (iii) when performing a search using the key words “INSTA” and specifying the dates from October 6, 2010 and February 24, 2016, there are numerous Korean Internet portal site webpages wherein the services offered by INSTAGRAM are referred to as “INSTA,” and (iv) there is a variety of new terms that incorporate “INSTA,” such as “Insta Hotple,” “Insta Star,” “Insta Market,” etc. mentioned in web postings and press releases. 

Furthermore, the Patent Court determined that the word “MODEL” lacks distinctiveness with regard to "model recruitment services," and the remaining portion "INSTA" is confusingly similar to the Prior Marks.

With regard to the issue of bad faith, the Patent Court determined that (i) the application for the Subject Mark was filed in bad faith to take a free ride on the fame of the Prior Marks on the basis that the compared services are similar or commercially-related; and (ii) the Defendant was clearly aware of the fame of the Prior Marks and used the Subject Mark to refer to "a model in INSTAGRAM."

[Significance of Patent Court Decision]

This decision is significant in that the Patent Court taught that the similarity of the marks is determined in consideration of how the general consumers perceive the Prior Marks.  Specifically, the Court recognized that “INSTA” is perceived by the Korean consumers that it is an abbreviation of and refers to “INSTAGRAM,” and acknowledged the possibility of the substantial and practical confusion between the Subject Mark and the Prior Marks.