The question arises whether the use of icons on mobile applications for providing specific services constitutes usage under Class 9 “downloadable computer software” or under the services provided by the application. Historically, some cases have considered mobile applications as valuable tradable items, thus deeming the usage under Class 9. On the other hand, there have been cases where the application could be downloaded for free and was closely tied to the provided services, leading to the conclusion that the usage was under the services provided by the application. Recently, in a high-profile decision, the Korean Patent Court ruled that such usage falls under the services provided by the application (Korean Patent Court, February 1, 2024, 2023 Heo 12862).

The defendant is the trademark holder of the registered trademark "". The designated service for this trademark is electronic financial transaction services under Class 36. The defendant used the "" icon ("the accused mark") on a mobile application providing electronic financial transaction services. The plaintiff is the trademark holder of the registered trademark "", with the designated goods being downloadable computer software under Class 9. According to the procedure for confirming the scope of positive rights stipulated in the Korean Trademark Law, the plaintiff sought confirmation that the defendant's use of the accused mark fell within the scope of the plaintiff's registered trademark rights. In response, the defendant argued that the accused mark and the registered trademark are identical and that the accused mark was merely used in the defendant’s designated services (electronic financial transaction services) and did not fall within the scope of the plaintiff's trademark rights.

The Korean Patent Court determined that the designated service of the defendant’s registered trademark, “electronic financial transaction services,” should be interpreted as “providing financial goods and services to users through electronic devices.” The court found that the defendant's use of the accused mark in the “electronic financial transaction service application” on Google Play and Apple Store constitutes “marking the trademark on items provided to consumers when offering electronic financial transaction services.” Thus, the court supported the defendant's argument, acknowledging that the defendant used a mark identical to its registered trademark in the designated service. Additionally, the court clarified that the plaintiff’s request was an active right scope confirmation trial between rights, and therefore should be dismissed.

The significance of this decision lies in the fact that even if a service provider does not register a trademark for software under Class 9 but registers it for the services provided by the application, there is not necessarily a risk of trademark infringement. It is noteworthy that this conclusion is influenced by the defendant’s designated service being “electronic financial transaction services,” considering the aspect of “financial transaction services provided through electronic devices.” Whether the same judgment would be made if the designated service did not include the term “electronic” remains uncertain. Given this legal uncertainty, to eliminate potential disputes when providing services through mobile applications, it is still recommended to register trademarks not only for the services provided by the application but also for related goods under Class 9.