Review of countermeasures against keyword advertising using the trademark of others

2017.01 (Written)

A Company, which has consistently grown by introducing fintech to the financial investment advisory area, discovered that some small, similar investment advisory firms were running portal search advertisements using the names of their services.

The act of advertising using another’s trademark can be considered unfair competition as stipulated in Article 2, Subsection 1, items (a), (d), and (e) of the Act on Prevention of Unfair Competition and Protection of Trade Secrets. The requirements for violating item (a) include (1) trademarkability, (2) well-knownness, (3) identity or similarity, (4) use as a product or trademark, and (5) confusion. In the case of item (d), it applies even when the services using the product are different and there is no possibility of confusion, and the requirements of (1) the notoriety of the trademark, (2) identity or similarity of the mark, and (3) damage to distinctiveness or reputation must be met.

Law firm Veat clarified that setting A Company’s trademark to appear in the search result screen through interpretation of laws and precedents violated the Act on Prevention of Unfair Competition and Protection of Trade Secrets, and proposed a plan to induce voluntary deletion of advertisements by sending a certified letter urging the companies to cease the illegal advertisements. Subsequently, the companies that had been exposing search advertisements using A Company’s trademark revised their ad copy and no longer utilized A Company’s trademark.

Thank you.

Law firm Veat