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Korea (South) - Patent Court Upholds Cancellation Action Based on Trademark Neither Famous Nor Registered in Korea

Goldwin Co., Ltd., a Japanese company, filed petitions for invalidation with the Board of Trials against four registrations for the trademark ENNERRE & Device in the name of Masun Co., Ltd., a Korean company. The Japanese company were the owners of essentially the same mark for the same goods and submitted evidence to show that its mark was well-known in Japan and European countries. Although the mark had not been featured in advertisements in Korea, Goldwin claimed that athletes and persons in the clothing industry in Korea were well aware of the mark. In view of the restrictive position of the Supreme Court in other cases and, after considering the evidence submitted, the Board of Trials rejected the invalidation petitions filed under, inter alia, Article 7(1) (iv) of the Korean Trademark Act.

On appeal by the Japanese company, the Patent Court overruled the decision of the Board of Trials and invalidated the four ENNERRE & Device registrations. Although the mark owned by the Japanese company was not registered or proven to be famous in Korea, the Patent Court held that the concept of "public order" within the meaning of Article 7(1)(iv) should be interpreted as including "public interest, fairness and justice in the international as well as domestic commercial trades". The Patent Court ruled that the registration and use of the mark by the Korean Company would result in "an unfair free ride on the goodwill" of the Japanese company's mark.


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