Victoria’s Secret Victorious in Invalidation Case
10 September 2012
Victoria’s Secret Stores Brand Management, a global apparel company, registered its trademarks “Victoria’s Secret” and “Victoria’s Secret Pink” in Korea, but was at risk of losing them, according to a statement released by Yulchon. The trademarks had been invalidated on the grounds that they are similar to trademarks that were registered earlier or the trademarks had not been used in Korea for the past three years. Victoria’s Secret eventually became a party to eight suits seeking to set aside the invalidation ruling.
After initially providing advice on the case including analysis of the ruling and assisting the firm that had been representing Victoria’s Secret during the appeal, Yulchon’s intellectual property group became directly involved in the case by being appointed co-counsel, the firm said.
In cooperation with co-counsel, the IP group argued that the trademarks should be deemed as used if a Korean customer orders products with the trademarks attached thereto from the Victoria’s Secret website and receives the ordered products even though the website is operated in a foreign country and submitted evidence of use of the trademarks by trademark and type of use to clarify use of the trademarks.
As a result, the firm won six out of eight cases for cancellation of the invalidation ruling and maintained the registration of most of the trademarks necessary for Victoria’s Secret’s continuance and expansion of business in Korea. Partner Young Hill Liew and associate Yong Min Lee from the IP group handled the case for Yulchon.
