법무법인(유한) 율촌 | Yulchon LLC

Yulchon successfully defended Next Entertainment World Co., Ltd. ("NEW") in a trademark invalidation trial involving NEW's trademark "Cine Q" filed by its competitor ("Company T").

In the invalidation trial, Company T claimed a likelihood of confusion between its registered trademark "Cine Cube" and NEW's trademark "Cine Q," as those marks share a similar sound with respect to the first three syllables. Based on the foregoing, Company T argued that NEW's trademark "Cine Q" should be held invalid pursuant to Article 34(1), subparagraphs 7, 9, 12, and 13 of the Korean Trademark Act.

In response, Yulchon asserted that (i) the two marks at issue are clearly different in regard to their sight and meaning and (ii) the term "Cine" is not distinctive particularly considering the designated goods/service, i.e., cinema, concluding that therefore, it would be unreasonable for a single person to have a right to exclude others from using the term "Cine". The Patent Court agreed with all of Yulchon's arguments, including the argument that the two marks are not similar, and dismissed all of Company T's invalidity arguments.

Although Korean courts generally use the "sight, sound and meaning test", evaluating the similarity of the parties' marks from three perspectives, when determining the similarity of two word marks written in a foreign language, Korean courts tend to focus more on the "sound" element with respect to the first few syllables. (e.g., Supreme Court, 2001Hu1198, Nov. 13, 2001). In regard to the foregoing established cases, this case provides further clarification that, even if two trademarks share a similar sound in regard to their first few syllables, additional consideration should be made as to their meaning and the designated goods/services.

Company T decided not to appeal the Patent Court’s decision and, as a result, this decision has been rendered final and non-appealable.