Trade Mark or Design? Pottery case from the Korean Supreme Court

This Kat likes to cover Intellectual Property decisions from outside Europe and the USA but does not often receive word of cases that seem of interest to the IPKat readership.  On the other hand, he usually goes for patent decisions more than trade mark ones.  As an exception to the second point, but illustrating the first, he was very taken with news of a decision from the Korean Supreme Court.

Mr K.J. Park (park@bookchon.co.kr) of the firm of  BOOK CHON; Seoul, Korea sent your correspondent this interesting account, which this Kat is pleased to reproduce below.  The plaintiff was a U.K. corporation and the defendant was a Korean corporation. BOOK CHON represented the plaintiff.  The account received by the IPKat does not name either party, but Merpel has a pretty good idea who the plaintiff may be.  Over to Mr Park:

The U.K. corporation filed a lawsuit for trademark infringement against the Korean corporation. Both Seoul Central District Court in the first instance, and Seoul High Court in the second instance, did not accept the claims of the U.K. corporation. However, the Supreme Court in the final instance, did accept the U.K. corporation's claims and judged that the Korean corporation infringed the U.K. corporation's trade mark right. (The Supreme Court rendered March 28, 2013; Case No. 2010 DA 58261)
The summary of the decision of the Supreme Court is as follows:
(A) Conclusion: The marks (or patterns) which the plaintiff used on their pottery was not used as designs but as trade marks. Furthermore, the marks of the plaintiff are well-known to the domestic traders and consumers of the pottery.

a) Legal principles
The use of a design consisting of a shape or a pattern can be regarded as the use of a trade mark where the design is used to perform the function of the trade mark of indicating the origin of the products. And whether the design is used as a trade mark should be determined by the relation of the products, the situation of the use of the trade mark (position, size, etc. of the trade mark on the products), the fame of the trademark, the user intention and the background of the use of the trade mark, etc.
b) Facts of this subject

The plaintiff has the Korean trade mark rights of the following marks (hereinafter "Plaintiff Marks"):






The plaintiff located the first two marks at the center of their pottery, and located the third mark at the brim of the pottery. Therefore, the pottery of the plaintiff appeared like:





The defendant is selling the pottery domestically by using the following marks (hereinafter "Defendant Marks"): 









c) Judgement under the above legal principles
In consideration of various kinds of situation, Plaintiff Marks were not mere designs of pottery, and it is determined that they were used as trade marks. In particular, the patterns of the plaintiff's pottery which leaves band is used as the brim and the patterns of flowers and butterflies are located at the center of the pottery like plaintiff's registered trade marks (as depicted above) are well-known to the domestic traders and consumers of the pottery.

In view of the various kinds of situation, it is determined that the patterns used on the defendant's pottery were used as trade marks because they were used for the source of goods.

(B) Conclusion: The leave band pattern for the brim of the pottery among the Defendant Marks are very similar to the plaintiff's leaves band pattern registered trade mark. Therefore, the defendant infringed the trade mark right of the plaintiff.
a) Legal principles
A combined trade mark consisting of more than two designs can be divided into each design part unless the designs are combined inseparably. And if one design part of the combined trademark is similar to the other trade mark and thus there is a concern that the consumer misleads or confuses the origin of the products between the two trade marks, the combined trade mark can be regarded as similar to the other trade mark.
b) Facts of this subject
From the Defendant Marks, the leaves band pattern can be separated and magnified like: 




Also, from the Plaintiff Marks, the leaves band pattern can be separated and magnified like: 




c) Judgement under the above legal principles

The above leaf band pattern of the defendant is very similar to that of the plaintiff in terms of appearance. Therefore, the leaves band pattern trademark of the defendant is similar to the plaintiff's registered trade mark. 

The IPKat apologises that the limitations of inserting images into blogposts do not permit the illustrations to be incorporated in the text in the ideal way, but hopes that the facts and arguments are nevertheless clear from the above account.  The interesting question for his readers to ponder is - where does decoration end and trade mark protection begin?  As usual, over to you...