231204 글로벌 기업과 법적환경

Difference between generic and descriptive mark: Generic cannot be protected and
descriptive can be protected as long it has acquired a secondary meaning

Third type of trade mark

Suggestive Mark: Do not need a secondary meaning to get protection, you need imagination
to relate the trademark with a specific characteristic of the trademark. (Ex. Chicken of the sea,
Caesar’s palace, Wonder bread

Arbitrary Mark vs Fanciful: Arbitrary means that there is a word of description and the latter
is something totally new created by the author, like google

Arbitrary is not newly creating the trademark, it was there but now the company is using it for a
totally different purpose, like Apple, and the computer has nothing to do with apple. When a
publishing company uses Penguin as a trademark it is arbitrary. A fanciful or arbitrary mark
has more chance to get protection from the government.

The burden to prove secondary meaning of descriptive marks are on them. Unless they
satisfy the criteria, they will not be protected.

Arbitrary, fanciful and suggestive marks are inherently distinctive, which means that they
do not need to prove anything because the government will protect them. However, in the case
of descriptive marks it will not be protected unless there is proof of secondary meaning.
Generic marks will have no protection under whatever circumstances.

Arbitrary may have more protection but they have to spend huge amounts of money in
marketing and promotion to plant the trademark in the heads of people. In the case of
descriptive or generic, there is no need to spend huge amounts of money for the marketing
but it is weak, people from competition can easily copy it.

You have to choose whether to use a strong or weak mark and evaluate in the terms of costs
and expenses.

Interesting aspect of Generic: If the Coca Cola’s drink name is Coke and the promotion and
marketing is too successful so people starts to use it to indicate the cola product in
general, in this case the trademark of Coke has become a generic mark. So there is the
conflict between the marketing team and the legal team.

Using a certain trademark to indicate the general category of product can be a big
problem for the company. So the company is very cautious not to make it a generic mark. If the
competition can prove that it is a generic mark, the company cannot use it exclusively

Trademark distinguishes the product and service from the competition. It is important in
the mind of consumers. If you are successful with trademark/brand, then you don’t have to start
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from the beginning next time. It is an important tool to convey the quality and information
about the product to the buyer.

A good trademark should be short and simple(easy to read, pronounce), and be a strong
mark(arbitrary, fanciful etc rather than descriptive or generic). The latter marks can take
advantage of popularity. But strong marks take a lot of time for the consumer to understand the
meaning of the trademark. Also, a trademark should not be confusingly similar to the
existing trademark used on related goods (likelihood of confusion and the court will not allow
the registration).

When registering your trademark to the federal government

1. Inherently distinctive (either it is different from other existing trademarks or have
secondary meaning if descriptive)
2. Generic marks cannot be protected (no exception)
3. Even it is the same trademark, if it is registered to a different category it is fine
4. How long is it effective if you register? Lasts for 10 years in almost all countries, and
you can renew every ten years then it is forever
5. If you register you do not have to warn people about infringement because it is
assumed.
6. Nationwide protection, can file criminal lawsuit against infringer

There is the federal registration, and the protection under the common law, which is called
common law rights. If you get registration, you get protection under federal law, if not, you
will get protection from common law. If you are protected under common law, the protectable
area will be the vicinity. Outside your geographic region, you will not have protection.
To get protection under federal law you have to register a trademark.
However you cannot register under some circumstances. Immoral, deceptive, scandalous,
disparaging, names of other people will not get protection.

Left side can be used without registration (Check ppt)

Use of trademark can be terminated if the third party can prove that you have abandoned
the trademark. Non use of the trademark.
™ is Trademark, SM is Servicemark. Copyright mark.

Stopping the use of the trademark(Non use) will cancel registration, so the trademark owner
should show the court that the trademark is still in use.

If the defendant used the mark for private uses, not commercial uses, there will be no case.
Also, using the trademark for other things except goods and services will not be a subject matter
of the trademark law.
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If the defendants used the mark in a matter likely to confuse the customers then it is
infringement (Abercrombie test)

Three elements of infringement test

1. Sight
2. Sound
3. Meaning

Measures you can take against the infringer

1. Injunction
2. Disgorgement of the defendant’s profits
3. Treble damages for past infringement
4. Destruction of all material goods with the illegal trademarks
5. In rare cases, the court may allow the recovery of reasonable attorney’s fee of the
plaintiff

Blue cut and Blue club: Supreme court of Korea ruled that there is no confusion because
consumers can distinguish

China has been accused for infringement of the trademarks of the west, they are making
progress and has established rules and laws in its regulation system. However, they are still
well behind the guidelines. (Apple’s Ipad: Apple tried to register the trademark in China,
someone had already registered and they had to pay a lot of money to get it back)

Polaroid standard: Standard to judge infringement in trademark. No one factor is determinative

and you have to consider all 8 elements.
1. Strength of the plaintiff mark
2. Degree of similarity between the marks
a. Doctrine of foreign equivalent: Even if the sounds are different, if they meaning is
same then there is a similarity.
3. Competitive proximity of products and services
4. Likelihood of the senior using bridging the gap between the two products even they
are in a different market
5. Evidence of actual confusion
6. Good faith in adopting the senior user’s mark(intent)
7. Quality between senior and second user
8. Sophistication of the customers (Are they likely to be confused?)

Secondary liability
If you buy an item from Coupang and it is fake, can you file a lawsuit against Coupang?
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1. Contributory infringement: Does Coupang actually had the knowledge that something
wrong was being taken place? Willfully turned blind eyes to reality and failed to take any
measure to prevent the misbehavior
2. Vicarious Infringement: Not about knowledge but about control. If the seller sold a
fake but was employed by the department the department should be liable for any
wrongdoing as a boss. Did the defendant control the conduct?

If an infringement happens the defendant’s defense?

1. Registration is wrong
2. Trademark was abandoned (Non use)
3. Cancellation
4. Failure to renew by the plaintiff

As a trademark holder, you have to keep eyes on the use of the trademark and use it properly.
Like distinguishing from surrounding texts with quotation marks or bold.

You have to use two Nokia phones instead of two Nokias or Kleenex tissues instead of Kleenex.
Never use your trademark as a verb. Do not make it generic

Confusion Theory: Name, packaging etc. If the packaging is similar in the same product
category it can be confusing. You need a disclaimer

Parody is a good defense under the fair use doctrine of copyright but in trademark it is
not good

Dilution theory: As long as the mark is famous any other person who uses this mark for their
own profit in different products can be liable. This protects the trademark more than the
confusion theory.

Theories of dilution theory

1. Punishment: Value of the trademark is being degraded because of use (hierarchial
status)
2. Blurring: Quality and reputation is not degraded but people are confused because in
the old days the trademark only indicated one product. (equal status)
When we talk about the status of being famous, it indicates the global market. If it is famous
in one country then it is not famous in global stage) and differs from country to country. Also
famous means that it is without secondary meaning, it is inherently distinctive

Non commercial use of trademark is okay

Punishment actually diminishes the value and reputation of the product and service. In the
dilution theory, if you use Codek on a motorcycle it would not create any confusion but in
blurring it may be a problem
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There are many case showing the conflicts of the law between trademark law and traditional
freedom of expression.