Cancellation of Registration for Internet Domain Name including famous Trademark

The Seoul District Court decided on October 5, 1999 that registration of domain name known as "chanel.co.kr" registered and used by a Mr. Kim be cancelled.

When Mr. Kim registered the Internet address of "chanel.co.kr" with Korea Internet Information Center and opened a home page on the Net as "Chanel International" to run a mail-order business of adults articles such as condoms, pheromone perfumes, lingeries and the like, Chanel, renowned cosmetics and apparels company, filed a trademark infringement suit against Mr. Kim on May 1999, claiming that trademark rights of Chanel have been infringed.

The Seoul District Court ruled that registration of domain name with regard to the plaintiff's behavior of business operation in marketing perfumes, lingerie and the like by way of the firm name "chanel", could be regarded as a unfair competition, thereby giving rise to consumers being confused in operations identity.

Although the defendant maintained that registration of his domain name is a lawful behavior according to First-to-File principle of the Korea Internet Information Center, the Court emphasized that this principle is only a guideline or a policy thereof and cannot be applied to violation of lawful order governing such Acts as the Unfair Competition Prevention Act and the like.

The present case is the first decision by a Court regarding a prior registration of Internet address imitating a name of a well-known company to therefore be expected to act as a criteria base in the similar disputes in the future.

KIPO starting operations as International Searching Authority and International Preliminary Examining Authority as of Dec. 1999

The Korea Industrial Property Office (KIPO) was admitted as an International Searching Authority and as an International Preliminary Examining Authority in terms of the Patent Cooperation Treaty (PCT) at the PCT Conference in September, 1997. The Korean Patent Act has provided necessary legal provisions for the KIPO to be completely prepared for performance of these functions, whereby the KIPO starts operations from December 1, 1999 as world's 10th International Searching Authority and world's 9th International Preliminary Examining Authority. PCT applications can be submitted in the Korean language, which will expectably increase PCT filings by Korean nationals.

STATISTICS BY KOREA PATENT COURT

According to statistics compiled by the KIPO and Patent Court, decisions made by trial examiners in the Industrial Property Tribunal (IPT) of KIPO have fallen a little bit in accuracy thereof compared with those of last year.

Statistics upto September 30, 1999, decisions by the trial examiners at the IPT reversed by the Patent Court averaged 27.9% in inter parte cases such as invalidation, revocation and claim confirmation trials and 12.8% in ex parte cases such as trial against rejection, correction trial and the like. Particularly, rejection rates for trials of patents and utility models were shown to exceed those the designs and trademarks in the second instance. These numerical results are higher than those of last year in the rejection rate of average 21.8% at the second instance. Furthermore, rates of appeals filed at the Patent Court in refusal of decisions at the IPT averaged 25.7% which represents quite an increase from those standings of 1998 at an average of 18.7%, the KIPO announced.

One KIPO official confessed thereto that accuracy of decisions has been a bit lowered due to unparalleled shortening this year of trial period to within six months for expedited proceedings of trials, and reiterates that trial examiners are exerting concentrated investigation into reasons of revocation when a decision is reversed at the Patent Court in order to enhance the accuracy of decision to a maximum along with shortened proceeding period of trials. Detailed contents of statistics relative to revocation trial of decision at the Patent Court is given in the following table.