Lee International

The Korean Supreme Court held that the use of a registered mark that is identical or confusingly similar to a prior-registered mark constitutes an infringement of the prior registered mark regardless of whether the later registered mark is invalidated (Supreme Court En Banc Decision dated March 18, 2021, Case No. 2018da253444).

The owner of the mark “” (“Prior-Registered Mark”) in Korea, which has used the Prior-Registered Mark for its business relating to the development and distribution of software since July 2013, discovered marks containing “DATA FACTORY” and the Korean transliteration thereof, such as “” (Korean transliteration of “DATA FACTORY” and “Data Recovery Company” in Korean), “” and “” (Korean transliteration of “DATA FACTORY”), which are confusingly similar to the Prior-Registered Mark, and filed a trademark infringement action there against in 2016. 

During the litigation, the accused infringer filed an application for the mark “” (Korean transliteration of “DATA FACTORY” and “Data Recovery Company” in Korean; “Later Registered Mark”).  Even though the owner of the Prior-Registered Mark filed an opposition against the Later Registered Mark based on its Prior-Registered Mark, the Korean Intellectual Property Office (KIPO) granted registration on the basis that the element “DATA FACTORY” and the Korean transliteration thereof lack distinctiveness, and thus the Later Registered Mark is dissimilar to the Prior-Registered Mark in its entirety.  After the Later Registered Mark was granted registration, the accused infringer argued that the use of the Later Registered Mark is not an infringement of the Prior-Registered Mark since such use is a legitimate use based on the registration of the Later Registered Mark, and received a decision of non-infringement.

However, on appeal, the Korean Patent Court determined that that the element “DATA FACTORY” and the Korean transliteration thereof are not descriptive of the nature of the designated goods of the compared marks, and thus possess distinctiveness, and on this basis, the compared marks are confusingly similar.

The Korean Supreme Court affirmed the Korean Patent Court’s decision regarding the similarity of the compared marks.  Furthermore, the Korean Supreme Court determined that since Korea is a “first-to-file” jurisdiction, if there are two conflicting trademarks, the rights to be the earlier registered mark should be protected.  In view of the above, the Supreme Court held that the use of the Later Registered Mark is an infringement of the Prior-Registered Mark even though the Later Registered Mark had not been invalidated.  This overturned prior Supreme Court opinion that the use of a registered mark, which is confusingly similar to an earlier registered mark, is nonetheless a legitimate use of a registered mark, and thus in order for such use to be deemed an infringement of the earlier registered mark, the later registered mark would need to be invalidated.

The recent Supreme Court decision is significant in that a trademark owner can prevent infringement action against a later registered mark without having to file another action to invalidate the later registered mark, which saves time and costs.