In Coach Leatherware Inc. (CLI) v. Mr. Sang-Kyu Choi, the former filed an application on September 12, 1989 to register the COACH in Lozenge Design mark for bags, which was refused on October 30, 1990, on the ground that it was confusingly similar to a registration on the trademark COACH LEATHERWARE registered on August 12, 1990 by the latter for similar goods.

In 1990, CLI filed a cancellation action against the registration for the COACH LEATHERWARE mark before the Trial Board of the Korea Industrial Property Office (KIPO) on the ground that their COACH trademark was well-known, but lost at the first two trial levels of that action. Instead of filing an Appeal before the Supreme Court, CLI filed another cancellation action on May 20, 1994, against the COACH LEATHERWARE registration on the ground that it violated Article 7 of the Trademark Act which provides that a trademark can be cancelled if it is similar to another mark that is either well-known to the public or perceived by consumers as belonging to a specific company. CLI argued that the defendant had registered the COACH LEATHERWARE mark intending to manufacture imitation goods and benefit from the reputation of their well-known COACH mark. It was also pointed out that the defendant had a history of registering famous foreign trademarks which indicated his bad faith in registering the COACH LEATHERWARE mark. CLI submitted 618 advertisements featuring goods bearing their COACH trademark which appeared in foreign publications with a circulation in Korea and they also provided evidence of 18 instances of actual consumer confusion.

The Trial Board of the KIPO recognized that the advertisements of COACH products in foreign publications constituted use of the mark, accepted the argument that consumers may be confused as to the quality and origin of COACH LEATHERWARE products which were similar to the genuine COACH products and ruled that the COACH LEATHERWARE registration should be cancelled.

This is an important decision as it is the first time the Trial Board of the KIPO has cancelled a registration on the ground that it was registered in bad faith with the intention of taking advantage of an internationally-known mark that was not registered in Korea. Previously, only applications for trademarks similar to well-known marks have been rejected. This decision has been appealed to the Appellate Trial Board of the KIPO and the appeal is still pending.

In February 1996, CLI instituted legal proceedings, seeking a permanent injunction against Mr. Myung-Bae Kim, the assignee of the COACH LEATHERWARE mark, and sellers in Itaewon, a major retail market for tourists, on the grounds of consumer confusion and confusion as to the source of the product under the Unfair Competition Prevention Law. This case is also still pending.