Successful Case: Acquittal in an Appeal of a Trademark Infringement Case
Our main Attorney Jae-kwon Jung of Hwaum Law Firm successfully defended a client in an appeal involving an alleged violation of the Trademark Act, resulting in an acquittal and dismissal of the prosecution's appeal.
Background of the Case
The defendant had been using a trademark combining the trade name “청년간판” (Cheongnyeon Ganpan), the English wording “YOUNGMAN SIGN,” and an illustration of a young man's face in Naver search advertisements and on the defendant's website. A third party who subsequently registered a similar trademark filed a criminal complaint alleging trademark infringement.
The trial court acquitted the defendant, finding that the defendant had the right of prior use under Article 99(2) and Article 99(1)(1) of the Trademark Act. The court recognized that the defendant had continuously used the trademark as a means of identifying the defendant's trade name and personal identity in accordance with customary business practices, and therefore had the right to continue using the mark in connection with the relevant goods.
The prosecution appealed, arguing that the defendant's use of the English wording “YOUNGMAN SIGN” alongside “청년간판,” together with an illustration of a young man's face hanging from a sign, did not constitute use of the defendant's trade name as a trademark in accordance with customary business practices. The prosecution also argued that the defendant had acted with an intent to compete unfairly and therefore could not claim the right of prior use.
Decision of the Appellate Court
The appellate court accepted our attorney's arguments and dismissed the prosecution's appeal, finding that the trial court's decision was correct. The appellate court further made important findings regarding the scope of customary use of a trade name.
Although the defendant used the English wording “YOUNGMAN SIGN,” the court found that it was simply the English expression of “청년간판.” The court noted that using Korean and English together when identifying oneself in commercial transactions is common business practice.
The court also considered the illustration of a person's face hanging like a sign. The court found that the illustration was a graphic representation of the defendant's own face and that incorporating an image of a business operator's face into a trademark, as seen in businesses such as Paik's Coffee, is not uncommon.
Accordingly, the appellate court concluded that the defendant had used the trade name and other identifying elements of the defendant's personal identity in accordance with customary business practices, and therefore was entitled to the protection of the prior-use right.
Significance of the Decision
This decision is significant in that it reflects changes in society and commercial practices in determining whether a trade name or personal name has been used in accordance with customary business practices.
Compared with earlier cases in which courts tended to require a trade name or personal name to be used substantially as-is in order to recognize customary commercial use, this decision reflects evolving business practices. In particular, the decision provides meaningful guidance that using a trade name together with its English equivalent, as well as incorporating an image of the business operator's face, may constitute customary use of a trade name in commercial transactions.
The decision may therefore be regarded as a leading case recognizing the changing nature of commercial branding practices in the context of the trademark right of prior use.
Author: Attorney Jae-kwon Jung, Hwaum Law Firm