2012 APAA Trademark Committee Special Topics

Transcription

1 2012 APAA Trademark Committee Special Topics "Protection of well-known marks from different perspectives" ISSUE 1: Finding of recognition of well-known marks Is there any possibility of finding a mark well-known in your jurisdiction in the case where the mark is not used in your jurisdiction but is well known in other countries? [Note] There would be a case where a mark is not used in your jurisdiction but the mark is well known in your jurisdiction through TV news, magazines and newspapers. For example, a restaurant s name or very delicious food name would apply to this case. Yes. There is a possibility that even a mark which is widely known in other countries but is rarely used in our jurisdiction can be recognized as a well-known mark in our jurisdiction, if it is proven that the mark is widely known in our jurisdiction through media coverage such as TV news, Internet, and advertisement in magazines. However, there are only few case precedents that recognized the well-known status of such a mark. Practically speaking, it is considered difficult for such a mark to be recognized as having well-known status. However, according to Article 7(1)(xii) of the Korean Trademark Act, even a mark recognized in foreign countries to a degree as a mark of a particular person should be protected. Thus, a mark which is not well- known in our jurisdiction but is known to a certain degree in foreign countries can be protected under the Korean Trademark Act. ISSUE 2: Scope of geographic area where a mark needs to be found well-known In order for a mark to be found well known, will the mark have to be well known all over your jurisdiction or have only to be well known in part of your jurisdiction? Does the standard of finding such 1

2 well-known mark vary depending on the case of excluding a third party s trademark registration or the case of excluding a third party s trademark use [Note] Sometimes a mark would be well known throughout your jurisdiction and sometimes a mark would be well-known only in part of your jurisdiction. Is it sufficient for a mark to be well known only in part of a jurisdiction in order for that mark to be protected as a well-known trademark? There are two phases of finding whether a mark is well-known. One is the phase where excluding a third party s trademark registration and the other is the phase where excluding a third party s trademark use. Are the standards of finding a well-known mark depending on these two phases, for example, in terms of the level of the well-known status? Yes. In order for a mark to be recognized as a well-known mark, it is not necessary to be known throughout the jurisdiction, and it suffices to be famous just in a specific part of the jurisdiction. First of all, in order to exclude a third party s trademark registration, it suffices to prove well-known status in a specific part of the jurisdiction (in this connection, some provisions on the grounds for refusal and the grounds for invalidation require well-known status throughout the jurisdiction. However, there are provisions based upon which a mark may be rejected or invalidated for the well-known status just in part of a jurisdiction). On the other hand, in order to exclude a third party s trademark use, the well-known status in a jurisdiction under the Unfair Competition Prevention Act ( UCPA ) is required. However, the level of well-known status required under the UCPA is high. Thus, in some cases, it may be required to prove the well-known status in a broader part of jurisdiction than in the case of excluding a third party s trademark registration. However, it is the basic position of precedents that the well-known status in jurisdiction under the UCPA is not required to be throughout the jurisdiction. ISSUE 3: Action against use by a third party who registered the well-known mark In the case where a third party has registered your well-known 2

3 trademark earlier than you, can you exclude the third party (trademark registrant) from using the registered mark on the designated goods/services? [Note] There could be a case where a third party has applied for your well-known mark earlier than you and registered the same. It is believed that an owner of the well-known mark may invalidate the third party s trademark registration. However, can you exclude the third party (trademark registrant) from using the registered trademark on the designated goods or services even before invalidating the trademark registration? Yes. In case where a third party has registered your well-known trademark earlier than you, basically, you need to invalidate the third party s trademark registration, and further, need to obtain the trademark right in order to exclude the third party from using the same mark. However, Korean courts settle this issue by adopting the principle of abuse of a right under the UCPA. Pursuant to precedents of the Korean Supreme Court, the third party shall be prohibited from not only executing his trademark right but also using the registered trademark as long as it is regarded as an act of unfair competition. In the above cases, the Korean Supreme Court judged that in case where a trademark identical with or similar to another person s well-known and widely used mark is formally registered in order not to distinguish goods from others, but to make profits by causing likelihood of confusion as to the source of goods among general consumers, the act of filing the trademark application itself shall be regarded as an act of unfair competition. Thus, even though the execution of a trademark right meets formal requirements under the Trademark Act, it shall not be accepted as justifiable and lawful execution of a trademark right since it misuses or abuses the Trademark Act. (Supreme Court in Case No. 2002Da18252, decided on November 11, 2004, etc.) In this regard, you can exclude the third party from using the trademark registered earlier than your well-known trademark even though it is not clearly prescribed in the Korean Trademark Act. ISSUE 4: Well-known Trademarks List 3

4 Is there any Well-known Trademarks List prepared by the Trademark Office or some other association in your jurisdiction? [Note] In some countries, Well-known Trademarks List is available for the purpose of easy and quick finding of well-known marks. In order to make the Well-known Trademarks List, an application system for having the well-known trademarks listed is sometimes available. Is there such a list in your region? In Korea, there is no list of famous trademarks published annually, such as a list of famous trademarks in Japan or in China, or a related database on famous trademarks. However, KIPO publishes a booklet, "Most Commonly Counterfeited Domestic and Foreign Trademarks" which is similar to the above. It organizes and records domestic and foreign trademarks that are most commonly counterfeited in Korea, which KIPO publishes in order to eliminate counterfeits effectively based upon enforcement actions taken by the prosecution, police, customs office and KIPO in the preceding year. Currently, upon KIPO s request, Korea Trademark & Design Association (KOTA) is reviewing the preparation of a list of famous trademarks. ISSUE 5: Well-known mark and Domain name Can the owner of a well-known mark exclude third parties from registering and using a domain name which is identical or similar to the well-known mark? [Note] It could happen that a third party has registered a domain name which is identical or similar to your well-known trademark. In such case, is there any way of canceling the registration of the domain name? YES. In the case that a cybersqutter who registered a domain name that is identical or confusingly similar to a well-known mark is Korean, you can file a request for the transfer or cancellation of the registration and a panelist s decision thereon will be issued within 2~3 months. In the case of.kr domain names, a request may be filed with the (Korea) Internet 4

5 address Dispute Resolution Committee ( IDRC ), and in the case of.com(gtld) domain names, a request may be filed with the Asian Domain Name Dispute Resolution Centre (Seoul Office). If the cybersquatter does not challenge the decision with the court of competent jurisdiction within 10 days from the date of the decision, the concerned domain name will be either transferred to you or cancelled. You have the option of requesting the transfer or cancellation of the registration with a civil court, but using IDRC or ADNDRC (Seoul Office) is a faster and more affordable option. Issue 6: Standards for Being Acknowledged as Well-Known When it becomes necessary to determine whether a certain mark is well-known or not, what are the generally recognized standards in your jurisdiction for determining such well-known status? (Please indicate your prioritization in the Special Topics Chart.) Example of answer---adcbe a. the sales figures or market share figures of the products bearing the trademark, b. market survey results, c. listing in a famous trademark directory, d. advertisements, evidence showing media exposure, e. foreign registration certificates f. others [Note] There can be many phases (examination, opposition, invalidation, etc.) where your trademark office or courts have to determine whether a certain mark is well-known. Normally, as trademark practitioners, we try to obtain and submit all available materials ranging from the sales figures or market share figures of the products bearing the trademark, market survey results, listing in a famous trademark directory, advertisements, evidence showing media exposure, foreign registration certificates, etc. In most cases, all the above factors would be considered in their totality but, is there a certain type of evidence that can be more powerful and persuasive than others in your jurisdiction? You may wish to prioritize the above-enumerated examples in the order of the most effective to the least effective. 5

6 We believe that the priority of standards exemplified above would be adcbe. In addition to the above, search frequencies/number of hits on Internet, the number of agencies/stores, and ranking in the relevant industry, etc. may be considered. We believed that those are more important factors than e. Issue 7: Registration of Well-Known Trademarks before the Trademark Office Has your IP office ever reviewed the possibility of adopting a system where you can apply for registration of well-known marks? If not, what is your opinion about having this system in your jurisdiction? [Note] There are countries such as China which have a system for filing and registering well-known marks, when they meet certain very high criteria of requirements. Has there ever been any discussion about adopting a system similar thereto in your jurisdiction, and if yes, please share the pros and cons of such discussion with us. If not, please let us have your personal opinion on having such a system. Assuming that you have such a system, what would be the advantages and disadvantages? What degree of special treatment do you believe should be given to those marks registered as well-known marks. For instance, should the effect of registered well-known marks extend to dissimilar goods? Is it justifiable to allow stronger civil and criminal remedies for those marks? Yes. KIPO is conducting a study for the amendment of the Korean Trademark Act. In the process, the KIPO is examining a system for registering well-known marks (reviewing a defensive mark system under Japanese Trademark Act and China s system for recognizing well-known marks). However, it is known that defensive mark systems were repealed in New Zealand, Taiwan, etc. We understand that even China has not adopted a system of registering well-known marks in advance, but rather, uses a system where the well-known status of marks will be recognized on a case by case basis from oppositions, actions filed with the IP office, and/or actions filed with the courts. We believe that once a system of registering well-known marks is adopted, the scope of the trademark rights of 6

7 well-known marks becomes clear, and thus, there is the advantage that disputes may be prevented or settled at an early stage. However, the well-known status of a mark changes depending on the use of the mark, and confusion with a well-known mark and dilution are issues to be dealt with in individual cases. Thus, we believe that there is a problem in protecting well-known marks uniformly through a system of registering well-known marks, and recognizing those marks to receive stronger protection in civil and criminal actions. As we responded under Issue 4, KIPO prepares and distributes a booklet titled "Most Commonly Counterfeited Domestic and Foreign Trademarks every year. However, it is just a reference material, and if a mark is listed in such a booklet, it is not because the mark is recognized as a well-known mark. We believe that it is necessary to collect the cases where a mark is recognized by KIPO, Intellectual Property Tribunal and courts as a well-known mark, and to provide in the future a booklet incorporating the list, as well as providing the list online. Thus, during the process of amending the Korean Trademark Act, research is being conducted to prepare for the provisions based on the collection of precedent cases on well-known marks. Issue 8: Scope of Protection of Well-Known Registered Marks When a well-known mark is also registered, what should be the scope of protection of those well-known registered marks? Should it be broader or narrower than the trademarks that are registered but not very much known to the public? [Note] There can be two conflicting views on this question. Do you believe that the well-known status of a registered mark would be more likely or less likely to cause confusion? If a registered mark acquires well-known status, we believe that the mark is normally expected to receive broader protection, compared to a registered mark without well-known status. The reasons are as follows: 1) In relation to goods, while the scope of protection for a general registered mark has the effect of excluding a third party s mark from being registered on goods similar to the registered designated goods thereof only, a well-known 7

8 registered mark can have the effect of excluding a third party s mark from being registered even on different kinds of goods that can easily remind a consumer of any relation or association with the well-known mark, in addition to the goods similar to the designated goods of the well-known registered mark; and 2) even in relation to a mark, there is a case that a well-known mark can have the effect of excluding even a third party s mark, which can be easily reminded of the well-known mark, from being registered. On the other hand, in general, in relation to a likelihood of confusion, it can be acknowledged that a well-known registered mark is more likely to cause confusion with the marks similar thereto. However, a registered mark that is too famous or well-known deems to be less likely to cause confusion with other marks and thus, confusion could be denied. In this case, it seems that a well-known mark receives narrower protection than a mark that is not well-known. In such a case, it is possible to cope with the above by arguing that the distinctiveness of the well-known mark may be diluted, even though there is no confusion. [END] 8

9 2012 APAA Trademark Committee Special Topics Chart "Protection of well-known marks from different perspectives." October29, (1) (2) Australia Bangladesh Hong Kong India Indonesia Japan Korea Y Y N Y Y Y a, d, c, b, e, f Y broader New Zealand Pakistan Philippines Singapore Sri Lanka Taiwan Thailand Vietnam [Note]: 1) Y means YES 2) N means NO 3) M means YES and NO 4) N/A means Not Applicable 9