Like in the U.S., well-known marks are protected in Korea too. While Lanham Act includes all the relevant statutory provisions relating to well-known marks and registered marks, statutory provisions in Korea to protect well-known marks are found both in the “Trademark Act” and in the “Unfair Competition Prevention and Trade Secret Protection Act.” Section 7 of the Trademark Act of Korea provides that registration is not issued to trademarks which are identical, or similar to, another person`s well-known trademark. Although trademark rights (or statutory remedies) under the Trademark Act are granted only to those who have their own trademarks registered, the owners of well-known marks are allowed to prevent others from applying for registration of marks which are identical or similar to their well-known marks. On the other hand, “Unfair Competition Prevention and Trade Secret Protection Act” grants remedies to all the owners of well-known marks whether they are registered or not. Since well-known marks are well protected under the “Unfair Competition Prevention and Trade Secret Protection Act,” their owners are not forced to apply for registration of their marks. The conflicts between well-known marks and registered marks begin, however, when anybody other than the owner of well-known marks tries and applies for registration of the same or similar marks. In the first step, well-known marks` owners are allowed to oppose the registration to the Korea Industrial Property Office (“KIPO”) which is in charge of trademark registration. Secondly, well-known marks` owners are entitled to petition an invalidation trial at the Patent Tribunal. The question, then, is whether the well-known marks` owners are still allowed and protected to use their own marks even if somebody else has had the same or similar marks registered and they did not oppose the registration by somebody else nor petitioned an invalidation trial. The next question is whether exploitation of registered marks may constitute unfair competition simply because the marks are the same or similar to well-known marks of others. To tackle the conflict, Section 15 of the “Unfair Competition Prevention and Trade Secret Protection Act” provides that in cases of any conflict or inconsistence the Trademark Act applies instead. Section 15 indicates pre-emption of the “Unfair Competition Prevention and Trade Secret Protection Act” by the Trademark Act in favor of registered marks. Supreme Court of Korea has interpreted Section 15 slightly differently from its literal meaning: when registration of well-known marks by somebody other than their owners constitute unfair competition, the registration is regarded as an abuse of trademark registration system and, consequently, the registrant are not allowed to rely on the Trademark Act. The interpretation by the Supreme Court of Korea appears to provide well-known mark owners with strong protection at the expense of registered mark owners. What is the policy goal behind the Supreme Court`s decisions in protecting the reputation of well-known marks on the one hand and disregarding the validity of registered marks on the other? Is the policy goal of the Supreme Court consistent with that of the Trademark Act and the “Unfair Competition Prevention and Trade Secret Protection Act?” If not, the remaining question would be how to solve the inconsistency between the judicial decisions and the statutory frameworks or, to put it differently, how to harmonize the conflicts between the Trademark Act and the “Unfair Competition Prevention and Trade Secret Protection Act.” That is what the author tries and answers in this paper.
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