Case background

Masai Marketing & Trading AG ("Plaintiff") registered the mark "MASAI WALKING" in connection with shoes. The shoes were designed to have healthful benefits. Due to the recent popularity of "well-being" products (products that are geared towards healthy living), the "MASAI WALKING" shoes became popular throughout Korea.

Once the shoes gained in popularity, many counterfeiters came into the market. One such company, RYN Korea ("Defendant"), started using "MASAI WALKING," "MASAI WALKING SHOES," "MASAI WALKING CENTER," "MASAI WALKING CENTER RYN," "MASAI TRIBE WALKING SHOES," "MASAI TRIBE WALKING CENTER," "MASAI WALKING SHOES RYN," and "MASAI TRIBE WALKING SHOES" in connection with its own line of shoes.

After receiving a cease and desist letter from the Plaintiff, the Defendant tried to fight back with a counter-trial for affirmation of scope of trademark right before the Intellectual Property Tribunal ("IPT") against the Plaintiff's registered mark. The Defendant argued that the Plaintiff's registered mark, "MASAI WALKING," in Korean characters is generic or descriptive because the shoes were based upon the "MASAI" tribe's particular walking style. Consequently, Defendant argued its use of "MASAI WALKING SHOES RYN" did not fall within the scope of the rights granted to the Plaintiff's registered mark. The Defendant also lodged an invalidation trial against the Plaintiff's registered trademark before the IPT arguing that the Plaintiff's registered trademark is generic or at least descriptive. However, both trials were dismissed by the IPT. Defendant then appealed the invalidation action to the Patent Court which was also dismissed. Thereafter, Defendant appealed to the Supreme Court. The Supreme Court dismissed the case again finding it to be groundless.

Subsequently, the Plaintiff filed a petition with the Seoul Central District Court alleging trademark infringement against the Defendant.

The Seoul Central District Court Decision

Before the District Court, Defendant argued that the Plaintiff's registered trademark had become recognized by consumers as generic or descriptive for "shoes without heels and the sole of which is in a curved form." However, the Court did not find the Defendant's arguments persuasive.

The Court looked at the following factors in deciding that Plaintiff retained trademark rights to the "MASAI WALKING" mark:

1. "MASAI WALKING" was first used by the Swiss engineer Karl Müller who invented shoes inspired by the Masai tribe's manner of walking.
2. Karl Müller's said invention based on the Masai Barefoot Technology was granted a patent.
3. The trademark for "MASAI WALKING" has been registered in numerous countries including Switzerland, New Zealand, Canada, China, Japan and the United States.
4. The trademarks for "mBT by SWISS MASAI", "SWISS MASAI", "MASAI WALKING", etc. has been registered in Korea.
5. The term "Masai Walking" had been used by Plaintiff as a trademark since July 2003 and advertised through numerous media outlets including, books, newspapers, magazines, and TV broadcastings.

In sum, the Court recognized that "MASAI WALKING" is distinctive and is neither descriptive nor generic in connection with the designated goods. Thus, use of a similar mark by the Defendant, on similar goods, is likely to cause consumer confusion as to the origin of the goods. In light of the foregoing, the Court held that the Defendant's acts constituted trademark infringement. This decision is currently under appeal before the High Court.