Supreme Court Overturns Appellate Acquittal and Orders Retrial
The Supreme Court has ruled that if a specific expression used for products within the same category creates a particular impression regarding a trademark, it may constitute trademark infringement due to the risk of consumer confusion or misunderstanding.
On the 22nd, the Supreme Court’s Third Division (Presiding Justice Lee Heungku) announced that it had overturned the lower court’s acquittal of Mr. A, the CEO of a cosmetics manufacturing and sales company, who had been indicted for violating the Trademark Act, and remanded the case to the Seoul Central District Court.
Mr. A was put on trial on charges of selling lipsticks with a product name similar to a trademark registered by cosmetics manufacturer B between February and March 2020. Mr. A’s product was named “CATALIC Narcisse Nudism Holic Matte Lipstick.” Previously, Company B had registered and used the trademark “NUDISM” for lipsticks, mascaras, and other products.
The first trial court ruled that the term “Nudism” identifies the source of the product and constitutes the “essential part of the product,” which is a core element of a trademark or design that leaves a strong impression on general consumers. The court fined both Mr. A and his company 1 million won each.
However, the appellate court found Mr. A not guilty, stating that the essential part was not “Nudism” but “Catalic.” The court reasoned that the expression “Nudism” had no distinctive features, and since “Catalic” appeared at the very beginning of Mr. A’s product name in uppercase letters, it should be considered the essential part.
The Supreme Court, however, reached a different conclusion. It held that not only “Catalic” but also the disputed term “Nudism” should be considered essential parts of the trademark. The Court stated, “When determining the essential part of a trademark, one must comprehensively assess whether it leaves a strong impression on consumers, occupies a prominent position in the overall trademark, and possesses a high degree of distinctiveness.”
The Court further explained, “Both ‘Catalic’ and ‘Nudism’ independently serve to indicate the source of the product by creating an impression on general consumers regarding the trademark.”
The Supreme Court added, “In determining the similarity of word marks, pronunciation is important. Simply because ‘Catalic’ is written in uppercase does not make it the sole essential part. Furthermore, since the other essential part, ‘Nudism,’ is identical in spelling and pronunciation to the infringed trademark, this constitutes trademark infringement.”
The Court also noted, “Since the products are identical or similar, and the packaging of the disputed trademark is similar to the registered trademark, using this trademark for lipsticks could cause general consumers to be misled or confused about the source of the product.”
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