Client Comment - ACM
First of all, we offer UNIS Patent Office a congratulation for opening the website. We would like to introduce our experiences with UNIS regarding the trademark right and its related case, and we hope that this story would be a help to choose UNIS as your successful business partner.
We were facing with the difficult situation on doing our business in Korea, because the licensee in Korea has conversely executed their trademark right to us which was illegally registered.
This situation was continued from several years ago, however we were not aware of Korean trademark law at all, and just confronted negatively against the trials which were raised by the other party through our agent. But UNIS which was acquainted by chance was different with them.
The patent lawyer in UNIS explained us about the general matters of the case with analyzing it logically and the detailed plans to solve this problem. So we could grasp the point of matters and could find out the ways to take actions to recover our rights. Then we proceeded the plans one by one with UNIS’s suggested ways, finally we could secure the trademark in Korea.
Those processes were required considerable time and efforts. However, UNIS handled our case sincerely with consistent attitude and this gave us the trust and reliability on UNIS. If you choose UNIS for your patent attorneys, you will get a satisfiable result from their professional and outstanding resolving capacities for the difficult cases.
ACM’s trademark trial case
1. [ACM case] Background:
ACM, the company which is manufacturing and selling the water purifier and Pie Water related goods in Japan, had made a licensing contract with A (Licensee) company of Korea in 1991, the contract was terminated, then ACM Japan tried to have a business directly in Korea, however they have found the fact that A company (licensee) has registered the trademark of ACM in Korea without any agreement or authorization of ACM Japan after the termination of contract.
Furthermore, A company claimed on ACM Japan the injunction of infringement of the trademark right which was raised from their unauthorized trademark registration.
So ACM Japan requested UNIS to retrieve their rights on the trademark with invalidating the A company’s unjust trademark which was achieved unjustly from them.
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2. Strategy of UNIS
UNIS has approached the case as follows
First, as ACM Japan is the famous company with “Water Purifier, Pie Water related products”, the consumers in Japan are well aware of the trademark of “ACM”,
Second, the licensee had concluded exclusive agency contract with ACM in Japan, and conducted business till the contract terminated in the latter half of 1991. When they knew that ACM Japan had not registered their trademark in Korea, they copied the trademark and then registered it. When ACM Japan was trying to do business in Korea, they asserted that ACM Japan were infringing their trademark right, and filed the provisional disposition for the prohibition of trademark application. With doing above obstruction of AMC’s business, they are damaging AMC Japan, furthermore, they are thought to be registered the copied trademark to get the unjust profits with taking advantage of AMC’s renowned brand names.
Therefore, UNIS inferred that the licensee’s registered trademark was the identical or similar trademark which was well known to the Japanese consumers as the specific company’s source of products and he registered this trademark with unjust purposes, this registration was violating the article 7.1.12 of trademark law. [Art. 7.1.12 of trademark act: “trademarks that are identical or similar to a trademark (excluding geographical indication) that consumers inside or outside of Republic of Korea easily recognize as indicating the goods of particular person, and which are use to obtain unjust profits or to inflict harm on a particular person and so on,” ]
According to the above conclusion, UNIS has collected and submitted various information to support the fact that ACM Japan was well known and famous company in Japan and ‘ACM’ is the famous trademark in Japan, and also submitted evidence and explanation of the circumstances to support the assertion of that the other’s trademark application was registered with the unjust purposes.
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3. Result
In the 3 times of legal procedures of the Patent Tribunal, Patent Court, and the Supreme Court, all of them decided with admitting the assertion of UNIS as follows.
“Registered trademark was applied with copying of the ACM Japan’s famous trademark, so it is the trademark which is easily recognized as indicating the goods of particular person in Japan. The licensee is regarded as he registered trademarks to obtain unjust profits or to inflict harm on ACM Japan with copying ‘ACM’ trademark which is easily recognized in overseas. Furthermore, the application, which was applied at the time of 12 years passed from the date of termination of contract, cannot be said that there were no unjust purposes. Therefore, the registered trademark of the licensee should be invalidated with violating the art 7.1.12 of trademarks law.
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