The Intellectual Property Trial and Appeal Board (IPTAB) of the Korean Intellectual Property Office has recently acknowledged that the mark “(Supreme + device)” owned by Chapter 4 Corp. (“Chapter 4’s Mark”) is broadly known as a source indicator of a specific person among general consumers in Korea or is at least recognized as a distinctive mark indicating a specific source indicator among a certain group of consumers, although Chapter 4’s Mark is not registered in Korea yet. The IPTAB also concluded that ten (10) Korean trademark registrations including the mark “” (“Cancelled Marks”), which imitated Chapter 4’s Mark, should be cancelled on the basis that the licensee of the Cancelled Marks causes misunderstanding as to the quality of goods or confusion with Chapter 4’s Mark by using the mark ”” (“Similar Mark”), which is similar to the Cancelled Marks (Please refer to the table below). In this case, Lee International represented Chapter 4 Corp., the owner of the American street fashion brand “Supreme,” and prevailed in cancellation actions against the Cancelled Marks.
Supreme filed cancellation actions against the Cancelled Marks on the basis that the marks were not used during the three (3)-year period preceding the filing date of the actions. In response, the registrant submitted evidence of use to defend against the cancellation actions. According to the evidence of use, however, it was found that the licensee used the Similar Mark on the front of T-shirts and pants.
On the foregoing basis, Lee International added a new assertion in the cancellation actions that the licensee is causing confusion with Chapter 4’s Mark, which is recognized as a specific source indicator in Korea, by using the Similar Mark. In this regard, to prove that Chapter 4’s Mark is recognized as a specific source indicator, Lee International organized and submitted evidence of use for the peirod of about 26 years since 1994. Furthermore, to prove the fame and recognition of Chapter 4’s Mark in Korea, wherein Chapter 4 Corp. has no official store, Lee International conducted a survey on Korean consumers’ recognition of Chapter 4’s Mark and submitted the results of the survey as evidence of use in Korea.
The IPTAB concluded that although Chapter 4’s Mark is not registered in Korea, it is broadly known as a source indicator of a specific person among general consumers in Korean or at least is recognized as a distinctive mark indicating a specific source indicator among a certain group of consumers based on domestic and foreign news articles about the brand value of Chapter 4’s Mark, numerous counterfeit goods imitating Chapter 4’s Mark in the relevant industry, dozens of oppositions and invalidation actions filed by Chapter 4 Corp. and pending against imitation marks in Korea (which are represented by Lee International), and the consumer survey results demonstrating the recognition of Chapter 4’s Mark. On this basis, the IPTAB concluded that the licensee’s use of the Similar Mark caused confusion or misunderstanding as to the source of the goods in connection with Chapter 4’s Mark.
Since fierce arguments were made and the great deal of materials were submitted by both parties, the cancellation actions were deemed by the IPTAB to be a matter of grave concern, and thus, were examined by a panel of five trial judges, instead of a normal panel of three trial judges.
The IPTAB decisions in these cases are considered very critical since it ruled that even a mark not registered in Korea and lack of distinctiveness can be deemed a specific source indicator, if there is enough evidence of use, and thus can be cited in a cancellation action based on false use.