Violation of the Trademark Act | Company Representative Who Violated the Unfair Competition Prevention and Trade Secret Protection Act and the Trademark Act Receives a "Non-Prosecution" Decision

The attorney specializing in corporate matters first closely reviewed whether the advertising keywords used by the client were marks that constituted subject matter protected under the Trademark Act.

Article 33, Paragraph 1 of the Trademark Act provides that a trademark consisting solely of the common name of the goods, a conspicuous geographical name, an abbreviation thereof, or a map cannot, in principle, be registered as a trademark.

In this matter, the keyword at issue corresponded to a conspicuous geographical name, namely the name of a particular city within the Republic of Korea, and the business sector name combined after it was no more than a common name found in the Korean dictionary.

Accordingly, the attorney specializing in corporate matters actively argued that the keyword used by the client could hardly be regarded as a trademark or business mark for which exclusive use is permitted, and that the client had no intent to violate the Trademark Act and no possibility of awareness of such a violation.

The attorney specializing in corporate matters presented Supreme Court Decision 99Hu1645 as the core legal principle.

That precedent holds that even if a trade name or business mark composed of a combination of letters, numbers, geographical names, and the like that have no or weak distinctiveness has come to be widely recognized within the country as a result of its use, because granting rights to a mark that originally cannot be monopolized is at issue, the standard for the determination must be interpreted and applied strictly.

It also states that this legal principle must be applied in the same way even where, in determining the similarity of combined business marks, similarity is recognized by treating part of the constituent elements as the essential part.

Accordingly, the attorney specializing in corporate matters demonstrated that the keyword used by the client could hardly be regarded as the mark of a particular company widely recognized within the country, and that, even if a general consumer encountered the keyword, the possibility of intuitively associating it with the complainant company or mistaking it as having the same source was extremely low.

Under the Unfair Competition Prevention and Trade Secret Protection Act, in order for an act of unfair competition to be established, certain requirements must be satisfied, such as the likelihood of confusion with another party's business mark, damage to its reputation, and impairment of its distinctiveness.

However, the advertising keyword in this matter was no more than a combination of a common name and a geographical name, there was no fact of directly imitating the complainant company's trademark or business mark, and there was also no objective material showing that actual consumer confusion or transactional damage had occurred after the advertising was run.

In addition, the client promptly carried out subsequent measures, such as stopping and deleting the advertising as soon as the problem was recognized, and neither an intent to obtain an unfair business benefit nor an intent to harm the order of competition was confirmed.

Taking these points together, the attorney specializing in corporate matters substantiated at the investigation stage that the client's conduct did not satisfy the constituent requirements of an act of unfair competition under the Unfair Competition Prevention and Trade Secret Protection Act.

The Unfair Competition Prevention and Trade Secret Protection Act is a law intended to regulate conduct that unfairly uses another party's achievements, reputation, or business interests, or that harms the order of fair competition.

The Trademark Act, in turn, aims to identify the source of goods or services through trademarks and to promote security in transactions by granting an exclusive right of use over registered trademarks.

A trademark refers to a mark, consisting of letters, figures, symbols, colors, three-dimensional shapes, or a combination thereof, that is used to distinguish one's own goods or services from those of others and that has the function of indicating the source in the trading community.

A registered trademark means a trademark that has been registered with the Korean Intellectual Property Office under the Trademark Act and for which the trademark holder is granted an exclusive and exclusionary right of use with respect to the designated goods or designated services, and if a third party uses an identical or similar trademark without authorization, an issue of trademark infringement may arise.

In the course of advertising, marketing, and the selection of online search keywords, a company must exercise particular caution, because even a general name or geographical name can lead to a criminal or civil dispute if the likelihood of confusion, distinctiveness, and the relationship with an existing business mark are not sufficiently reviewed.

Daeryun Law Firm, centered on attorneys specializing in corporate matters, attorneys specializing in intellectual property, and attorneys specializing in fair trade, provides one-stop assistance with criminal and civil cases related to the Unfair Competition Prevention and Trade Secret Protection Act and the Trademark Act, from the initial response through the investigation stage to the trial stage.

Disputes that can arise in the course of advertising and marketing, even if they appear minor, can expand into criminal liability, so professional legal review and response are essential.

If you need legal assistance in a related matter, we recommend that you proceed with 🔗scheduling a legal consultation.