BKIP Limited

COPYRIGHT BKIP 2019
Supreme Court ruling; Bullsone’s trademark mimics Red Bull’s trademark Oct 2019

Supreme Court’s ruled that the above trademarks of Bullsone and Red Bull is similar. Bullsone is Korean company selling automotive goods and Red Bull is global company selling energy drinks and also related in auto racing. The Supreme Court sent the case back to the Korean Intellectual Property Tribunal breaking the ruling of the Korean Intellectual Property Tribunal.
In September 2014, Red Bull filed a invalidation trial against Bullsone with the Intellectual Property Trial and Appeal Board on the basis of the old Korean Trademark Act Article 7(1)(12), claiming that the red bull image in Bullsone’s trademark registered in Korea in February 2014 is similar to the red bull image in Red Bull’s trademark which obtained international registration in April 2008.
The old Korean Trademark Act Article 7(1)(12) prescribes that any trademark which is identical or similar to a trademark (excluding any geographical indication) recognized as indicating the goods of a particular person by consumers inside or outside of the Republic of Korea, and which is used for unjustifiable purpose, such as obtaining unfair profits or inflicting harms on the particular person shall not be registered.
However, the Intellectual Property Trial and Appeal Board ruled in favor of the Bullsone, saying the two trademarks are different in appearance that leaves a dominant impression on ordinary consumers and therefore are not similar.
Red Bull filed a lawsuit at the Korean Intellectual Property Tribunal for invalidating Bulls' trademark registration after they failed in the invalidation trial filed at the Intellectual Property Trial and Appeal Board. However, the Korean Intellectual Property Tribunal also declined the Redbull’s arguments ruling that “The Red Bull’s trademark attached to racing cars and racing clothes has been used as sports marketing to advertise Red Bull’s energy drinks and thus, the use of the mark is subordinate. It is difficult to view that the Red Bull’s trademark was recognized among consumers that it indicates the services of its use (consulting services relating to car racing and sports event services) and it is also difficult to see that Bullsone had a bad faith” The Supreme Court ruled that “The Red Bull’s trademark has been used as a trademark for Red Bull racing team for Formula 1 racing tournament since around 2005. Accordingly, it has been recognized by foreign consumers as a service mark of a certain party regarding consulting services relating to car racing and sports event services. Red Bull’s racing team joined the Formula 1 racing tournament in Korea in 2010 with a racing car with its trademark attached to it and Bullsone developed its red bull trademark after 2010. Accordingly, it is reasonable to conclude that Bullsone had a bad faith.”
From Red Bull’s point of view, they won a victory after five years of dispute from the invalidation trial filed in September 2014 to the Supreme Court’s ruling dated August 2019. If Red Bull actively and timely took the procedures such as filing information brief or opposition at the Korean Intellectual Property Office before Bullsone’s trademark was published or allowed for registration by the Korean Intellectual Property Office, they might have been able to avoid this long and expensive journey to protect their trademark rights. It is important to act quickly against counterfeiting trademarks since it is advantageous in terms of cost and effectiveness. Therefore, if a counterfeiting trademark is detected, we should respond quickly and actively with assistance of trademark experts rather than waiting for the results of the examination.