Introduction

The Seoul Central District Court recently granted a preliminary injunction against Daee Food Inc for the sale of a product that copied the appearance of plaintiff Binggrae Co Ltd's well-known banana-flavoured milk beverage. While Daee's product – a banana-flavoured jelly snack – did not infringe any of Binggrae's registered trademarks, Binggrae could claim on a dilution theory under Korea's unfair competition law.

The two products are shown below.

Binggrae's banana-flavoured milk product Daee's banana-flavoured jelly product
   

Facts

Article 2(1)(c) of the Unfair Competition Prevention and Trade Secret Protection Act refers to dilution as the act of causing harm to a famous mark or source identifier by using a similar mark or source identifier to sell or distribute another party's goods. Generally, a key issue is whether the original mark or source identifier is considered to be sufficiently famous in Korea to warrant protection from this type of unfair competition.

In this case, Binggrae's product packaging had already been determined to be a well-known source identifier in a 2005 preliminary injunction action against Haitai Dairy Co Ltd's sale of a competing banana-flavoured milk beverage.

Decision

Consequently, the Seoul Central District Court found that:

  • the appearance of Binggrae's packaging was a well-known source identifier;
  • the packaging and appearance of Daee's product were highly similar to those of Binggrae's product; and
  • the sale of Daee's product was likely to harm the selling power and reputation of Binggrae's famous trademark.

The court therefore granted a preliminary injunction.

Further, the court confirmed that Binggrae had rights to the appearance of its banana-flavoured milk even for non-milk products – despite the fact that Binggrae's trademarks were registered for dairy products only – because it determined that the appearance of the packaging was an intrinsic asset of Binggrae and the same packaging had been used on other Binggrae products.

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For further information on this topic please contact Seong-Soo Park, Angela Kim or Won-Joong Kim at Kim & Chang by telephone (+822 3703 1114) or email (seongsoo.park@kimchang.com, angela.kim@kimchang.com or wjkim2@kimchang.com). The Kim & Chang website can be accessed at www.kimchang.com.