KIPO to Prevent “second or third ‘Deop-juk’ incidents”

Increase Funding by 25% to Expand Support for “small business IP capacity Building Program” in 2024

Total of 4,290 Trademarks, Designs, and Patents Registered for Small Businesses in 2023

 

Jong-ho Lee Patent Attorney

 

The Korean Intellectual Property Office (KIPO)’s program to support the IP rights of small businesses have been a success in 2023.

 

KIPO has continued the small business IP capacity building program since 2022 in order to prevent IP damages for small businesses and to protect trademarks, designs, and patents in response to two cases of intellectual property infringement against small businesses. In the first case, a small business “포항 덮죽 (topped rice porridge)” was forced to change its name after a franchise company registered a similar trademark with recognition. In the second case, a large company began selling a similar product to a small business “춘천 감자빵 (potato bread).”

As a result, the program supported the registration of a total of 4,290 trademarks, designs, and patents for small businesses. Of these, at least 3,887 were registered through the “IP filing support program,” which provides support for filing trademarks owned by a small business, at least 223 were registered by 22 traditional markets through the “traditional market joint brand and design development support program,” with the development of brands and designs that reflect the characteristics of traditional markets and small business districts. Furthermore, at least 180 were registered by 89 companies through the “IP creation composite package support program,” which provides comprehensive support for the development of brands and designs.

“의왕도깨비시장(Uiwang Dokkaebi Market),” formerly known as “부곡도깨비시장(Bugok Dokkaebi Market),” had been using a generic brand and a similar dokkaebi (goblin) character to other dokkaebi markets. As a result, the market was not well known and was not actively utilized. In response, the market changed its name to “Uiwang Dokkaebi Market” and added the brand name “Yeogi ttuktak” (which means “here, now, everything you want”) to emphasize its difference from other dokkaebi markets. The market also developed a brand design that uses dokkaebi horns as a point of interest and a character with the image of a neighbor wearing a dokkaebi mask. The market introduced these trademarks and designs to shopping bags, folding kits, and online sales packaging. These changes were well received by local residents and led to high satisfaction among market merchants.

“진미양념통닭(Jinmi Yangnyeomtongdak, seasoned fried chicken) is a chicken restaurant that has been in business for 30 years. It was featured on the TV show “Baek Jong-won’s Top 3 Chef Kings” and was selected as the first “100-year-old shop” in Gangwon Province. However, the restaurant’s name was similar to a registered trademark owned by another company. This posed a risk of trademark disputes if the restaurant expanded its business. To address this issue, KIPO supported the development of a new corporate brand called “참진미락 (Chamjinmirak).” KIPO also supported the restaurant in redesigning its packaging to include both the old and new brand names. This was done to help consumers become familiar with the new brand and to protect against trademark disputes. With the support of KIPO, Jinmi Yangnyeomtongdak is now supplying its products to E-Mart stores nationwide. The restaurant expects to see increased sales as a result of its new branding and design.

KIPO plans to increase its support for small businesses in 2024 by expanding the budget by 25% from the previous year. In particular, the IP Creation Comprehensive Package Support program will be doubled to select and support 10 businesses per city and province in 2024.

 

The Regional Industry Property Division Chief Yoon Jong-seok of KIPO said, “We will continue to promote the IP capacity building for small business programs to prevent the hard-earned achievements of small businesses in the blind spot of IP rights from being misused due to unfair trademark registration by others. Through this, we will actively support small businesses to increase their IP value and provide them with practical assistance in increasing their sales.”

 

※ Source: E-patent news (https://www.e-patentnews.com/10754)

 

 

Famous toy company “LEGO” name used in trademark by pharmaceutical company...Supreme Court “Invalid registration”

 

Toy company LEGO has won a trademark infringement lawsuit against a domestic pharmaceutical company that incorporated the name into its company name.

 

According to legal sources on the 8th, the 2nd Division of the Supreme Court, with Chief Justice Lee Dong-won presiding, confirmed the lower court’s decision on December 16th to cancel the trademark registration of LEGO Juris A/S (referred to as LEGO) against LegoChem Biosciences, Inc.

 

KOSDAQ-listed company LegoChem Biosciences, Inc. filed a trademark registration for the name “LEGOCHEMPHARMA” in November 2015. The toy company LEGO filed an objection, claiming that their trademarks and LegoChem Biosciences’ registered trademark were too similar and could cause confusion, and LegoChem Biosciences’ trademark registration was rejected. However, the Intellectual Property Trial and Appeal Board accepted Legochem Biosciences’ appeal and the trademark was registered in September 2018.

 

LEGO filed a lawsuit in March 2020 with the Patent Court, seeking the invalidation of LegoChem Biosciences’ trademark registration. The Patent Court acknowledged, “the essential part of LEGO’s prior-used trademarks and the registered trademark of LegoChem Biosciences, in this case, ‘LEGO,’ are overall similar.” The essential part of a trademark refers to the core part that plays a high proportion in composing the meaning of the trademark and creates a strong impression. LegoChem Biosciences appealed to the Supreme Court, but was unsuccessful. The Supreme Court ruled that the registration of the trademark of LegoChem Biosciences should be invalidated, stating that “it is reasonable to believe that the trademark will damage the distinctiveness of the prior-used trademarks, which are well-known trademarks, that is, the function of indicating a single source.” Article 34(1)(xi) of the Korean Trademark Act states that “a trademark that is likely to damage the distinctiveness or reputation of another person’s goods” may not be registered as a trademark. The Supreme Court also considered the essential part of the name “LEGOCHEMPHARMA” to be “LEGO.” It pointed out that the trademarks of LEGO, a well-known toy company, and LEGOCHEMPHARMA are similar, and that “there is a high possibility that the defendant (LegoChem Biosciences) applied for the registered trademark (LEGOCHEMPHARMA) with the intention of associating it with the prior-used trademarks (LEGO).”

 

LegoChem Biosciences argued that it was not associated with the LEGO company because there is an academic term called “Lego chemistry,” which means synthesizing chemical substances like assembling blocks. However, this argument was not accepted.

 

A Supreme Court official explained the significance of the ruling, saying, “this is the first case in which a registered trademark has been held to be invalid because it falls under the category of ‘a trademark that is likely to damage the distinctiveness of another’s well-known trademark’ in Article 34(1)(xi) of the Korean Trademark Act.”

Source: Segye Daily (https://www.segye.com/newsView/)