Two users of the same registered mark
In case 2024Heo12456, decided on June 26, 2025, Korea’s Patent Court considered cancellation for misuse by a licensee, not cancellation for non-use. The figurative Metal Link Inc. mark, registration 0995149, was filed on July 16, 2012 and registered on September 13, 2013 for Class 9 goods including wires and cables. The person who acquired the right in 2018 granted another company a non-exclusive licence on the same day. That company used the registered mark without alteration on the designated goods.
The claimant also used an identical sign for wires and cables. In May 2022 it sought cancellation, alleging confusion with its goods. The IPTAB dismissed that request on March 26, 2024 in case 2022Dang1406. The court then examined the parties’ licensing positions and Article 119(1)(2) of Korea’s Trademark Act.
Paying registration costs did not establish ownership
The claimant relied on longstanding use and its payment of application and registration costs. The court considered the broader history: the sign had been used in a sole proprietorship before the company existed, and the company knowingly paid for an application in another person’s name through its ordinary approval process. The agreements and later conduct supported permission to use, rather than acquisition of ownership.
The court found an implied non-exclusive licence that continued after the transfer of the trademark and ended with the warning demanding cessation of use on February 26, 2021. This was a finding on these particular relationships, not a rule that payment never matters or that any warning automatically ends any licence. The judgment determined a cancellation ground; it did not decide the claimant’s infringement liability or damages.
Turnover is not the same as recognition of a mark
For the ground invoked, the reference mark needed sufficient recognition among consumers or traders in Korea as identifying a particular source. Annual company sales exceeded KRW 20 billion throughout 2010–2023 and exceeded KRW 60 billion in some years. However, the evidence did not establish that all sales concerned goods bearing the reference mark; overseas sales were included and the figures lacked adequate market context.
Advertising expenditure exceeded KRW 300 million in total, but evidence of what was advertised, when, how and to what extent was insufficient. Participation in overseas exhibitions did not establish meaningful exposure among Korean traders. Reports about awards and technical achievements, certificates and research records often did not show the sign itself or its use as a product mark. The court therefore found recognition during the relevant licensed-use periods, up to the IPTAB decision, insufficiently proved.
The actual manner of licensed use matters
The court did not find an objectively established likelihood of confusion with the claimant’s goods on that evidence. It also addressed the licensing structure: where several licensees are authorised to use the same mark on the same designated goods, some overlap in perceived commercial source is inherent in that arrangement. That alone does not satisfy the cancellation ground.
Article 119(1)(2) imposes supervisory responsibility on the proprietor to prevent improper licensed use. In this case, the actual manner of use needed to go beyond confusion ordinarily associated with identical licensed marks and goods and amount to misuse. The evidence showed unaltered use of the registered mark on the designated goods, without proving that further element. The court dismissed the action and upheld the refusal to cancel.
Organise authority, recognition and use separately
A useful evidence file distinguishes ownership from permission: who first used the sign, why a particular applicant was chosen, any transfer, and the products and duration covered by the licence. Payment records are relevant but do not settle title by themselves. Recognition evidence should connect the actual sign to domestic product sales, dated advertisements, distribution and the relevant market during the disputed period.
For alleged licensee misuse, compare the authorised scope with the actual sign, products, packaging and advertising, then explain the specific source of confusion. The decision is neither a blanket permission for identical use nor an automatic cancellation rule whenever two companies share a sign. The legal basis and manner of each party’s use must be examined together.
The original figure labels and forms are preserved; the text explains the source material.