Limitations of Advertising to Avoid Cancellation of Trademarks for Non-Use

The use of a trademark in advertisement alone is not sufficient to avoid cancellation for non-use – Patent Court of Korea Case No. 2021 Heo 3192

In a recent case seeking the cancellation of a registered trademark on the grounds of non-use, although evidence of use of the trademark on name cards, stores, a homepage, and some products was submitted, the Patent Court of Korea carefully examined the factual relationships and found that the evidence of use of the trademark had simply been created to avoid the cancellation for non-use, and thus the registered trademark should be cancelled due to non-use.

In this case, the Patent Court of Korea reconfirmed the principle that “Even if it is true that a trademark has been used as an indication on the designated goods, etc., the designated goods have not necessarily been distributed through general transactions in Korea, and if the trademark is indicated on an extremely small amount of goods solely to avoid cancellation for non-use, the use simply corresponds to nominal use, and cannot be considered to correspond to any of the predetermined lawful uses set forth in Article 119(3) of the Trademark Act.”  Most of the submitted materials demonstrating use were executed within 6 months before the due date for filing an appeal after a written notice to desist use of the trademark was sent to the defendant by the holder of the patent right (the plaintiff), and although the defendant asserted via the content-certified mail that the plaintiff’s trademark use results could not be confirmed, the plaintiff did not present any reasonable use results until this lawsuit was lodged.  In addition, no objective evidence demonstrating the actual importation or sale of chairs for office use on which the trademark was asserted to be used by the plaintiff was found.  Further, while the plaintiff submitted pictures indicating products on which the trademark was used, the corresponding product was remarkably different from the products conventionally dealt with by the plaintiff in view of the motif and aesthetic sense.  Also, the trademark was not strongly indicated, and thus seemed to have been easily attachable and removable, and the picture of the corresponding product was taken after the date on which the appeal was lodged.  Further, the buy button indicated in the advertisement on the online shopping mall was not activated.  Accordingly, considering these facts, the use was considered to simply correspond to nominal use.

Examining the subject matter of the decision, the holder of the subject trademark right sought to stop use of the trademark and to claim damage after acknowledging the use by a third-party during non-use, which ultimately resulted in cancellation of the registration of the trademark for non-use.  “Damages” caused by trademark infringement are on the premise that the holder of the trademark right has used the corresponding trademark, and in this case, since the registration of the trademark was cancelled as a result of non-use, damages are highly unlikely to be acknowledged in the act of trademark infringement that occurred prior to the cancellation of the trademark.

This shows that the courts will thoroughly examine the submitted materials and the factual relationships related to the overall circumstances to determine whether a use is nominal or not, and thus holders of trademark rights who have not actually used their trademarks need to be more cautious in exercising this right.