It is not settled in Korea as to whether use of a mark as an app icon to provide certain services should be deemed trademark infringement of a registration that covers "downloadable computer software" in Class 9. In some earlier non-use cancellation cases, the IP High Court (formerly known as the Patent Court) recognized that there was Class 9 use. Recently, however, the court had the chance to consider this issue for the first time in an appeal of a trademark scope confirmation trial, and the court found in favor of the service provider.

Defendant, who owns a registration for the "" mark designating electronic transaction services, etc. in class 36, provided its transaction services through a smartphone app, and used the "" mark as the app icon. Plaintiff, the owner of a registered mark  which designates "downloadable computer programs, etc." in class 9, claimed that such use of the mark falls within the scope of infringed Plaintiff's rights in its registration for the "" mark. In response, Defendant asserted that its use of the "" mark should be regarded as use with the electronic transaction services covered by its own registration, rather than use on the smartphone app itself.

The IP High Court held that the services provided by Defendant through its smartphone app involves electronic pre-payments, which can be regarded as equivalent to the electronic transaction services designated by Defendant's own trademark registration. The court further added that Defendant's use of the "" mark in the Google Playstore and Apple App Stores constituted use of its mark in advertising for the electronic transaction services that it offers. The court agreed with Defendant that its use of the "" mark – which is substantively identical to their registered "" mark – should be deemed to be use with respect to the services designated by Defendant's own registration, i.e., electronic transaction services. 

Given the legal uncertainty on this issue, service providers are advised to register their brands for downloadable computer software in Class 9 in addition to the services they provide through their apps, to avoid any potential disputes. This recent IP High Court decision provides some comfort, however, that even if a service provider fails to register their trademark for software in Class 9, it will not necessarily be exposed to the risk of trademark infringement if it has registered its trademark in respect of its services. It is still worth noting though that in this case, the goods designated by Defendant's registration specifically includes the term "electronic" (i.e., electronic transaction services). It is unclear as to whether the IP High Court would have rendered the same decision if Defendant's registration simply designated "transaction services". We will have to wait and see how the IP High Court and/or the Supreme Court decides such cases going forward.