US Supreme Court favours jury in ‘tacking’ case

US Supreme Court favours jury in ‘tacking’ case

2014/12/15

A case that should provide guidance on whether trademark ‘tacking’ should be adjudicated by a judge or jury looks to be going in favour of a jury, it has been claimed.


Yesterday (December 3), the US Supreme Court heard oral arguments in the Hana Financial v Hana Bank case, which centres on ‘tacking’, a practice that allows a party to ‘tack’ the use of an older trademark onto a new mark to determine priority.


The dispute at issue was triggered by banking company Hana Financial suing Korea-based Hana Bank for its use of the mark ‘Hana Bank’.


Despite the Korean company first using its mark after Hana Financial, Hana Bank claimed that it actually had priority due to tacking and had earlier registrations for variations of the mark including ‘Hana Overseas Korean Club’ and ‘Hana World Center’.


A jury at the US District Court for the Central District of California sided with Hana Bank, as did the US Court of Appeals for the Ninth Circuit.


Hana Financial then appealed to the Supreme Court, which heard arguments yesterday about whether such disputes should be heard by a judge or jury.


Evan G