Lee International

[Background] ASICS Corporation (hereinafter “ASICS”), a famous Japanese sporting goods company, entered into a contract with the world-renowned tennis player Novak Djokovic in January 2018 which allowed ASICS to use his name in connection with its tennis shoes.  ASICS then launched a line of tennis shoes with the name “NOVAK” in March 2018 (e.g., “Gel-Resolution 7 NOVAK," "COURT FF NOVAK," etc.), and sold the products via online and offline channels.  ASICS also used the name “NOVAK” together with photographs of Novak Djokovic in its advertisements.  Meanwhile, a Korean individual filed a trademark infringement claim against ASICS based on his registered mark “”.

[Patent Court Decision] The Patent Court held that the use of the word “NOVAK” by ASICS is unlikely to cause consumers confusion as to the source of the parties’ respective goods, so there could be no infringement of trademark rights.  In reaching its decision, the Patent Count took into consideration the following factors: ① ASICS used its famous brand name “ASICS” on its products, which allowed general consumers to easily perceive that the relevant products were manufactured by ASICS; and ② ASICS used the name “NOVAK” only on its tennis shoes and thus general consumers of tennis shoes could easily associate “NOVAK,” as used by ASICS, with Novak Djokovic. 

[Significance] This decision is meaningful in that it relied on the primary purpose of the Korean Trademark Act, which is to prevent confusion as to the source of goods and/or services.  Instead of making a determination solely based on whether the compared marks are identical or confusingly similar, the Patent Court examined whether general consumers and traders would actually be confused in the trade channels and determined that the use of a mark that is identical to a registered mark by a third party did not constitute an infringement.