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09 December 2013
Reversing a long-held position, on September 26 2013 the Supreme Court en banc ruled that the use of only the English portion (or equally, only the Korean transliteration portion) of a registered English-Korean transliteration combination mark constituted use of the mark as registered.
The Korean courts had previously cancelled English-Korean combination marks for non-use if the registrant could prove use of only one of the two portions of the mark. For example, in two decisions from 1992 and 2004(1) the Supreme Court ruled that the marks as used were not recognised as constituting valid use of the marks as registered. The registered marks were ultimately cancelled. The marks, as registered and used, were as follows.
|Decision||Mark (as registered)||Mark (as used)|
TIFFANY and Korean transliteration
TIFFANY in Korean transliteration
HEALTH MATE and Korean transliteration
HEALTH MATE in English
However, reversing its previous stance, the Supreme Court recently held(2) that although the registration for a mark covering rubber V-belts had not been used in its bilingual registered form (ie, CONTINENTAL with its Korean transliteration), the use of the English portion only on the designated goods was sufficient to save the registration from cancellation. The marks, as registered and used, were as follows.
|Mark (as registered)||Mark (as used)|
CONTINENTAL and Korean transliteration
CONTINENTAL in English
The court justified its decision on the basis that Korean consumers today are more accustomed to English words and can easily understand that the Korean portion of such combination marks are in fact a mere transliteration of the English portion, with the same meaning and pronunciation.
The court argued that as long as the two portions of a registered combination mark have the same meaning and pronunciation, cancelling a registration simply because only one portion was used would ultimately be a disservice to consumers who understand that the mark as used or as registered refers to the same source.
For further information on this topic please contact Alexandra Bélec or Su Yeon Chun at Kim & Chang by telephone (+822 3703 1114), fax (+822 737 9091 3) or email (firstname.lastname@example.org or email@example.com). The Kim & Chang website can be accessed at www.kimchang.com.
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