Tiffany Makes Successful Trademark Infringement Claim Despite Dissimilarity of Compared Services
28 November 2012
Kim & Chang represented Tiffany & Co, in two cases against a Korean company, Tiffany Consulting, Co Ltd.
The defendant, though not engaged directly in the jewelry business itself, had been conducting real estate leasing services using the mark “Tiffany in Korean transliteration” and the stylized mark “Tiffany” on the outer walls of a commercial building. The defendant rented all the shops located in the building in question to jewelry sellers, and the building was run as a jewelry wholesale shopping center. The defendant also obtained service mark registration for “Tiffany in Korean transliteration” designating shop lease services, shopping mall lease services, etc. Further, it was found that the defendant owned the www.itiffany.co.kr domain name, and in the related website, it used the Tiffany marks above for advertising rental services and for advertising jewelry products sold in the shops located in the building in question.
The plaintiff filed a civil action against the defendant, and the Seoul Central District Court recognized the similarity of the compared services (leasing services for a jewelry wholesale shopping center versus jewelry retail services), after taking into consideration how the service mark was actually used, even though “leasing services” and “jewelry retail services” have been considered different (Case No. 2007Gahap44670; decided on January 29, 2008). Afterwards, in a cancellation action with the Intellectual Property Tribunal (IPT) filed by the plaintiff against the defendant’s registered service mark “Tiffany in Korean transliteration,” the IPT recognized the likelihood of confusion with the compared services based on the same reasoning as the Court, and cancelled the registration based on improper use of the mark (Case No. 2008Dang873; decided on November 12, 2008). The details of the decisions are as follows:
Decision of the Seoul Central District Court
The plaintiff filed a civil action against the defendant with the Seoul Central District Court, arguing that the defendant’s act of using marks such as the stylized mark “Tiffany” and “Tiffany in Korean transliteration“ on the outer walls of a building while engaging in leasing and advertising services for a jewelry wholesale shopping center under the trade name “Tiffany Consulting Co, Ltd” constitutes infringement of the plaintiff’s service mark registrations for “Tiffany” and “Tiffany & Co” covering jewelry sales brokerage services, jewelry sales agency services, jewelry retail services, etc., under the Korean Trademark Act and an unfair competitive act under the Unfair Competition Prevention and Trade Secret Protection Act.
The Seoul Central District Court held that even though the defendant’s business can be differentiated from the plaintiff’s jewelry retail services, the compared services should be considered similar for the following reasons:
(1) The defendant’s business of providing a venue and advertising for brokers or agencies directly selling jewelry has a close economic relationship with the plaintiff’s jewelry retail services;
(2) It is difficult to clearly distinguish between the targeted customers of the defendant’s leasing and advertising services for a jewelry wholesale shopping center, and the targeted customers of the jewelry selling services provided by the lessees of the defendant; and
(3) In the case of a jewelry wholesale shopping center, the identifier used in leasing and advertising services could be perceived by consumers as being a service identifier comprehensively representing the jewelry sellers in the shopping center, rather than that of the lessor/advertiser of the shopping center alone.
Thus, the Seoul Central District Court ruled that the defendant’s act of using the marks at issue constitutes service mark infringement. Also, the Court ruled that the Defendant should de-register its company name as well as the domain name www.itiffany.co.kr.
Decision of the Intellectual Property Tribunal
Under the dual court system, a claim for seeking deregistration of a mark cannot be combined with a civil action seeking enforcement against infringement. Thus, in order to deregister the defendant’s registration for the “Tiffany in Korean transliteration” mark designating shop lease services, shopping mall lease services, etc., the plaintiff filed a separate cancellation action with the IPT based on improper use. Under the Korean Trademark Act, improper use occurs when the trademark owner creates consumer confusion with another party’s mark by using its mark on non-designated goods or by using an altered version of its mark on the designated or non-designated goods.
In the cancellation action, the IPT held that the defendant’s use of the stylized mark “Tiffany,” which is an altered form from its registered form (Tiffany in Korean transliteration), in connection with shop lease services, will likely cause confusion with the plaintiff’s business based on the same reasoning as the court. Thus, the IPT ruled that the defendant’s registration should be cancelled based on improper use.
The decisions of both the Court and the IPT became final and conclusive without appeals, and the defendant has changed its name as a result.
Kim & Chang
9F, Hungkuk Life Insurance Building,
226 Sinmunno 1-ga,
Jongno-gu, Seoul 110-786, Korea
T: +82 2 2122 3900
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E: all@ip.KimChang.com
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