Introduction

Where an application for a trademark which is substantially similar to a prior registered trademark (known as a 'senior mark') is successful, does the use of the later filed trademark (known as a 'junior mark') constitute infringement of the senior mark? This situation is not explicitly addressed by the Trademark Act.

Several existing precedents address this issue. Until recently, the courts have held that this situation does not constitute infringement. However, an 18 March 2021 en banc Supreme Court ruling (2018Da253444) overturned this convention.

Facts

The filing date of the defendant's junior mark was later than the registration date of the plaintiff's senior mark. Details of the marks are shown in the following table.

 

Senior mark

Junior mark

Mark

The text is Korean for 'Data Recovery Specialists' and 'DATA FACTORY', respectively

Application date

5 September 2014

10 August 2016

Registration date

18 December 2014

8 August 2017

Goods or services

Class 9 (computer software)

Class 42 (development of computer programs)

Class 9 (computer software for scanning images and documents)

Class 42 (design and development of computer programs)

On 13 June 2016, before the filing of the junior mark, the senior mark's owner filed a suit against the defendant, claiming damages and seeking an order to prevent the defendant using the DATA FACTORY mark in other forms (eg, Figure 1).

Figure 1: alternative mark form

On 10 August 2016, while this suit was pending, the defendant applied for the registration of the junior mark, which it obtained on 8 August 2017. The defendant argued that its use of the mark after this date should be considered genuine use of a registered trademark and that, therefore, such use could not be infringement.

Precedents

The key issues in this case were:

  • whether the defendant's use of the mark after its registration was secured could be considered genuine use of a registered trademark; and
  • whether such use constituted infringement of the plaintiff's senior mark.

Several previous Supreme Court rulings have held that the use of a junior mark with respect to goods or services that are similar to those designated in its registration does not infringe another party's rights in a senior mark, at least until the registration of the junior mark is formally invalidated (eg, 98Da54434, 23 February 1999).

The courts' reasoning in these cases was that even where applicable grounds to invalidate a registered mark exist, the rights in the registered mark persist until the registration is formally invalidated via a trial procedure. However, such reasoning is limited to cases in which the later registered mark and the mark actually used by the rights holder are substantially identical and does not consider the use of a modified mark.

Decision

As previous rulings relied on different theories and reasoning, the Supreme Court heard this case en banc. Its decision contrasted significantly with the previous rulings.

In reaching its decision, the court considered the following factors:

  • According to Article 35(1) of the Trademark Act, where two or more applications for registration of identical or similar marks for identical or similar goods or services are filed on different days, only the applicant with the earlier filing date may obtain registration. Thus, priority is given to earlier filed marks. Any mark which achieves registration in violation of this principle may be subject to invalidation under Article 117(1)-1 of the Trademark Act.
  • According to Article 92 of the Trademark Act, the owner of a registered mark may not use its mark on any designated goods or services where such use would conflict with another party's earlier filed patent, utility model or design right or earlier created copyright unless consent is granted.
  • As in trademark law, where there are conflicting patent rights, utility model rights or design rights, the earlier filed right is given priority.

Therefore, where a filed and registered junior mark is used with respect to goods or services that are identical or similar to those protected by a filed and registered senior mark, the effect of the junior mark is limited. Thus, the court ruled that this situation constitutes infringement of the senior mark, regardless of whether the junior mark is later invalidated via a trial procedure.

Following this decision, earlier Supreme Court precedents – which enabled the use of junior marks with respect to goods or services that were identical or similar to the designated goods or services of such marks' registration without infringing the rights in another party's similar senior marks, at least until their registration was formally invalidated – no longer apply.

Comment

After selecting a trademark, applicants should file a trademark application as soon as possible. In this case, even though the defendant had applied for and achieved registration of the junior mark after the infringement suit commenced, the use of the junior mark still constituted infringement of the senior mark.

As a first-to-file jurisdiction, simply using a mark first, without registration, provides little meaningful protection in South Korea. Therefore, another party's filing and registration of a similar mark could cause significant issues.

This decision highlights the importance of early filing in South Korea and reflects the court's closer adherence to the first-to-file principle, from which the earlier precedents arguably deviated.