DEFENSES TO TRADEMARK INFRINGEMENT CLAIM

(1) An action for invalidation

​

An individual who wishes to challenge the validity of any trademark can bring an invalidation action to the Intellectual Property Trial and Appeal Board. Most contested grounds of invalidation in this process are: (1) the trademark lacks the distinctiveness, and (2) the trademark is identical or confusingly similar with the prior registered mark.

​

(2) An argument on the scope of the trademark protection

Under limited circumstances, an owner of a registered trademark may not be able to assert his trademark rights because of public interest or other reasons. A party defending against a trademark infringement allegation may challenge that the right of trademark cannot be asserted against him/her, if any of the following categories applies to the mark he/she uses:

1. A mark using one's own name, title or trade name, in accordance with fair business practices;
     Example: Using an individual’s name for the company name, in common font without combining it with a symbol or shape.

2. A mark using a common name for goods, identical or similar to the designated goods, or indicating quality, efficacy, usages, quantity, methods of use etc. in a common manner. 
     Example: Using the name "California Apples" for apples produced in California.

3. A mark using a well-known geographical indication etc.
     Example: Using the name "Seoul Garden" for a barbeque restaurant.

4. A mark using a shape or color etc. which is integral to the function of the designated goods of the registered trademark.
    Example: Using a "six-sided shape" for a packaging of snacks.