[Trademark Practice Insight ] Case Study on Risk Management Strategy for Non-Use Cancellation: Kung Fu Tea
When a trademark is registered but not actually used, anyone may file a petition for its cancellation and merely needs to show that this non-use has continued for a period of three years. It is sufficient for the petitioner to assert the non-use for three years; the burden of proving actual use lies with the trademark owner once the petition is filed. Therefore, we continuously remind clients of the utmost importance of retaining evidence that proves actual use of the trademark.
1. Case Overview
The trademark Kung Fu Tea was registered under Class 43 for “restaurant services.” However, due to a lack of substantial evidence showing actual use of the trademark in connection with the designated services, the registration was canceled in a non-use cancellation trial.
2. Court Ruling (Patent Court Case No. 2023Heo12671)
The Korea Intellectual Property High Court determined that the evidence of use submitted by the trademark owner merely amounted to a “nominal use,” and therefore did not constitute legitimate use. The court pointed out the following: • A poster supplied as evidence of use was written only in English and listed prices in U.S. dollars. • Despite the claim that bubble tea was being sold at the location, there was no actual equipment to make or sell beverages present at the site, nor was there a menu available. • Supplied evidence of use had been created only recently and in a formalistic manner, making it difficult to recognize it as representing any substantial use.
3. Practical Points: Concrete Strategies to Avoid Non-Use Cancellation
• Proof of actual service provision (e.g., menu boards, receipts, POS records) is essential. • The trademark must be clearly displayed in a way that consumers can recognize it. • Posters, cups, and similar items are merely supplementary; consistent commercial activity is the decisive element. • The registered class of services must match actual business operations. • Korean language and currency pricing must be implemented to clearly indicate that the services are indeed being provided in Korea.
4. Conclusion
The Kung Fu Tea case is a representative example demonstrating that superficial or mere symbolic use of a trademark cannot prevent cancellation based on non-use. In practice, it is critical to consistently and routinely accumulate solid evidence of actual use even after a trademark has successfully been registered. This is especially true for businesses such as restaurants, cafes, and franchises, where comprehensive and continuous proof of service provision is indispensable to secure the lasting validity of a mark. |
