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15 Nov 2018

Yulchon Represented Kumkang Shoes Co., Ltd. against Regal Corporation and Successfully Dismissed all Claims, Relating to Trademark, Unfair Competition, and Copyright

Yulchon successfully represented Kumkang Shoes Co., Ltd. (“Kumkang”), a top shoe maker in Korea, in a lawsuit filed by Regal Corporation (“Regal,” represented by Kim & Chang), a leading Japanese leather shoemaker. In particular, Yulchon successfully dismissed all claims, relating to trademark, unfair competition, and copyright, asserted by Regal before both the court of first instance and the court of appeals.


Kumkang has sold its leather shoes, under the brand name “REGAL” since 1969. Since then, Kumkang and its “REGAL” brand have been known for high-quality leather shoes. Despite its long legacy of leading and influencing the shoe making industry in Korea, in January 2017, Kumkang faced lawsuits filed by Regal, seeking damages and injunctive relief, in connection with Kumkang’s use of the “REGAL” mark.


Regal particularly claimed that (i) Kumkang had copied Regal’s trademark, “REGAL,” thereby committing unfair competitive acts prohibited under Article 2(1)(k) (“Paragraph K” – formerly Paragraph J) of the Unfair Competition Act; and (ii) Kumkang infringed Regal’s copyright and committed unfair competition acts prohibited under Paragraph K by using the repair mark within Kumkang’s stores.


When the court of first instance dismissed all of Regal’s claims against Kumkang (also represented by Yulchon), Regal appealed the lower court’s decision to the court of appeals (i.e., Seoul High Court).


Before the appellate court, Yulchon defended Kumkang against Regal’s various arguments, and successfully persuaded the appellate court to hold that Regal does not have a legitimate legal interest and title in the “REGAL” mark to assert any claims against Kumkang. In particular, Yulchon pointed out the following: (i) a limited scope of trademark assignment between Regal and Brown Group Inc. excluded the right to use the “REGAL” mark in Korea; (ii) Kumkang has lawfully and validly registered the “REGAL” mark in 1972; and (iii) the repair mark is not protected under copyright law, as it is a functional work, which does not exhibit even a minimal amount of creativity. 


As a result of Yulchon’s airtight arguments and effective representation, the appellate court upheld the lower court’s decision and dismissed all of Regal’s claims against Kumkang.


Kumkang is a domestic company that has specialized only in shoes since its former entity “Kumkang Shoemaking Industries” was founded in 1954. “REGAL” has been an important brand for Kumkang, as it is a renowned brand for men’s shoes in Korea. Thus, the outcome of the case has a significant impact in the footwear manufacturing industry in both Korea and Japan, and Yulchon is thankful for the opportunity to successfully protect a key brand name and representative logo for Kumkang.


In addition to successfully protecting the key brand name, Yulchon also helped Kumkang in protecting its corporate image and public opinion over its brand and goods. In fact, it was crucial for Kumkang to dismiss all the claims, as losing on even one claim could have had a lasting negative impact on Kumkang’s overall business through media manipulation.


Furthermore, considering that Paragraph K is relatively new and there are only a handful of case precedent on a Paragraph K claim, this case also has the following legal significance: this case has provided important guidelines in interpreting Paragraph K in relation to the claims arising from the fashion industry, in addition to Hermès v. PLAYNOMORE, Seoul High Court 2016Na2035091. In fact, in Hermès v. PLAYNOMORE, Yulchon represented PLAYNOMORE in successfully overturning at the Seoul High Court a lower court decision of unfair competition claims under Paragraph K asserted by global brand Hermès International.


Kumkang’s significant victory in this case clearly demonstrates (i) Yulchon’s profound expertise in the relevant legal fields, including trademark, copyright, and unfair competition; (ii) Yulchon’s capability of showing such expertise in large-scale litigation between a top Korean shoe maker and a leading Japanese shoe maker; and (iii) the client’s trust earned as a result of Yulchon’s expertise, capability, and commitment, Yulchon has shown through its legal representation.


Dong Soo Han, Jeong Hoon Hwang, Jung Hyun Kim, Hae Ju Kim, and Jin Son of the Intellectual Property Group handled the matter.  

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