In a recent case handled by Kim & Chang, The Procter & Gamble Company ("P&G") received an important decision from the Patent Court holding that P&G's "PITERA" mark is famous in Korea, and therefore that the similar "PITERA LASER (in Korean transliteration)" mark filed by a third party should be invalidated, even though the compared products/services are different.

The adverse mark PITERA LASER was registered under Class 44 designating various medical services such as medical clinic services, physical examination services, dermatology, cosmetic and plastic surgery clinic services, etc. P&G manufactures and sells skincare products under the globally renowned brand "SK-II," and "PITERA" is used as a trademark in connection with SK-II products as well as the name of a main ingredient in such cosmetics. 

P&G filed an invalidation action against the PITERA LASER mark before the Intellectual Property Trial and Appeal Board (IPTAB). However, while the IPTAB acknowledged that the compared marks were similar, and the PITERA LASER mark with respect to dermatology and plastic surgery-related services as overlapping with cosmetics (the designated goods for the PITERA mark), the IPTAB refused to invalidate the PITERA LASER mark as to other designated services on the basis that the PITERA mark was not sufficiently famous to warrant such a scope of protection. The IPTAB noted in particular that P&G presented no objective evidence regarding the use of the PITERA mark itself.

P&G appealed to the Patent Court where Kim & Chang argued that PITERA is often used together with the SK-II brand, and successfully persuaded the court to accept evidence showing the use of "SK-II PITERA" as relevant to the fame of the PITERA mark itself. Kim & Chang also convincingly argued that there was an economic relationship between the compared products and services by pointing out that consumers of cosmetics also often are consumers of general medical services, and that many medical clinics engage in cosmetic procedures. 

As a result, the Patent Court acknowledged the fame of the mark PITERA, and invalidated the remaining services designated under the adverse mark based on the risk of consumer confusion and the registrant's bad faith intent. The registrant did not appeal the decision, which is now final.

As a result of the court's ruling that P&G's PITERA mark itself is valuable and famous, separate from the SK-II brand, P&G now has much greater scope to enforce against other marks that imitate the PITERA mark.