In a lawsuit regarding the registration of ‘Pink Dog’ that is widely known as the trademark of Victoria's Secret, a global retailer of women’s wear, Shin & Kim obtained a Supreme Court decision on behalf of Dunfield that ‘Pink Dog’ is so similar to Dunfield’s dog-shaped trademark that it cannot be registered as a trademark.

Victoria's Secret launched “Victoria's Secret PINK,” a brand targeting women in their late teens and early 20’s, around 2003 and has since used the trademark ‘Pink Dog.’ However, after Victoria's Secret recently registered its ‘Pink Dog’ with the Korean Intellectual Property Office for official launch of “Victoria's Secret PINK” in Korea, Dunfield filed a lawsuit to invalidate such registration, asserting that ‘Pink Dog’ is very similar to its dog-shaped trademark.

Critical to the decision was the acknowledgement of the similarity between ‘Pink Dog’ and Dunfield’s dog-shaped trademark, despite the fact that there are more than 500 trademarks using dog-shapes (and the fact that even out of these 500 registered trademarks, there are dog shapes similar to ‘Pink Dog’ and Dunfield’s). To this end, Shin & Kim highlighted that ‘Pink Dog’ and Dunfield’s dog-shaped trademark are overall very similar (unlike those other dog-shaped trademarks) despite some minute differences, and compared and analyzed a number of cases relating to the similarity of shape trademarks. As a result, the Supreme Court held that ‘Pink Dog’ can’t be registered as a trademark.

With the Supreme Court’s decision, Dunfield is now able to firmly protect its dog-shaped trademark in the apparel field and prevent its dog-shaped trademarks from being diluted in the market, while at the same time, commencing an aggressive marketing push using its dog-shaped trademark.