Successful Advisory Case on Responding to a Trademark Infringement Warning

The client received a cease-and-desist letter from a foreign company alleging trademark infringement by a household-goods product it was selling on its online store. The other party demanded that sales be stopped, claiming that the client's product infringed its trademark on the basis of the external shape of its own product, which had been registered as a "three-dimensional trademark." Arguing that the shape of the product in question was merely a generic design widely used in the market, the client requested legal review from Insight Law Firm.

The core issues were (1) whether the product's external shape was "similar" under the Trademark Act, and (2) whether the other party's three-dimensional trademark could be recognized as having independent distinctiveness.

Your Legal Team responded as follows.

(1) Review of limitations on trademark effect: Pursuant to Article 90(1)(ii) (ordinary use of the shape of the designated goods) and (iii) (lack of distinctiveness) of the Trademark Act, we presented grounds for limiting the trademark's effect on the basis that the three-dimensional trademark at issue was merely a commonly used product shape.

(2) Analysis of foreign examination precedents: We reviewed cases in which the three-dimensional trademark in question had been refused registration in several countries, including Japan and the United States, for lack of distinctiveness, and argued that the same judgment was possible domestically.

(3) Establishment of an invalidation-trial strategy: We proposed the possibility of filing an invalidation trial based on Article 117(1)(i) (absence of inherent distinctiveness) and (vi) (subsequent loss of distinctiveness) of the Trademark Act.

Through the advice, the client clearly confirmed that the trademark-infringement claim lacked legal grounds and was able to respond to unnecessary demands to suspend business or reach a settlement. This case demonstrated that where a product's external shape constitutes a functional or generic form, exclusive rights are difficult to exercise based on a mere three-dimensional trademark registration. Drawing on its expertise in intellectual property disputes such as trademarks and designs, Your Legal Team supports companies in responding strategically to unreasonable assertions of rights.