IP Report

Registration of a trademark application filed by an ordinary person for a trade name of a large-scale company’s parent company is rejected

  • Writer: 특허법인아주
  • Date: 2022-01-18 11:29

Registration of a trademark application filed by an ordinary person for a trade name of a large-scale company’s parent company is rejected

- Decision (Case No. 2020Heo2192 for invalidation of registration (trademark) rendered by the Patent Court of Korea on July 6, 2021)

 

A well-known large Korean company, LG Group, has its roots in the “Koo In-hoe Store,” which was first started by the late founder Koo In-hoe.  Meanwhile, an application for a trademark containing the name of the late chairman Koo In-hoe consisting of “Koo In-hoe Sangjeom” (transliteration of Korean for “Koo In-hoe Store”) was filed for services of retail services of cotton fabrics, etc. in July 2018.  The trademark for which an application was filed contains the same Chinese characters as the name of the late chairman Koo In-hoe.

 

The subject trademark

Cited mark

 

 

 

구인회상점: KOO IN-HOE SANGJEOM

 

The Korean Intellectual Property Office and the Intellectual Property Tribunal rejected the registration of the corresponding trademark application on the grounds that it might damage the reputation of the late founder, and the mark is related to LG Group, and thus is likely to cause misconception or confusion as to the source.  However, while the applicant was dissatisfied with the decision, and filed a trial to cancel the trial decision with the Patent Court of Korea, the Patent Court of Korea also ruled that the subject trademark considerably lacks social feasibility in the process of registration of the trademark application.  Accordingly, since acceptance of the registration is in contrast to the order of the Trademark Act, the registration is not acceptable.  

 

The Patent Court of Korea considers the applicant, who has no relation to LG Group, to have filed and registered the subject trademark application with the intent to exclusively use the subject trademark without permission by imitating the earlier filed trademark with respect to the business run by the late chairman Koo In-hoe, which is likely to cause consumers to mistake the subject trademark as being related to the late and famous Koo In-hoe, the founder of LG Group, or damage his reputation by means of disturbing memories of Koo In-hoe of LG Group, which is not only contrary to the good customs of ordinary people and ordinary moral sensibility, but would also unfairly attract purchases from consumers by taking advantage of the reputation of the well-known late founder or the trade name he used, and thus is likely a threat to morality such as fair product distribution order and business ethics.  In addition, the Patent Court of Korea confirmed that the holder of an earlier filed mark may be an individual, a company and their collective social entity, and the first used mark may be recognized by general consumers or traders that it is related to LG Group that succeeded Koo In-hoe’s business, and thus if the subject trademark were used, the corresponding mark would be recognized by general consumers or traders as a mark related to LG Group that succeeded Koo In-hoe’s business and cause general consumers misconception or confusion as to the source of goods, deceiving the general consumers.

 

As a result of the Patent Court of Korea’s ruling, examinations of trademarks related to large-scale companies or late celebrities filed by third parties are expected to become stricter.

 

Meanwhile, the person who filed this trademark application also filed and registered successful applications for the trademarks “Bokheung Sanghoe,” a rice shop where the late Chung Ju-yung, former honorary chairman of another large-scale company, Hyundai group, first worked, “Gyeongil Sanghoe,” his first place of business, “Ado Service,” the name of a repair shop that is the parent company of Hyundai Motors, “Burim Sanghoe,” the name of a lumber mill that is the parent company of DL Holdings, “Parkseungjik Sangjeom,” the name of the parent company of Doosan Group, and “I We Lab,” the name of the parent company of Kakao.  However, as a result of the decision rendered by the Patent Court of Korea, it was confirmed that trademarks related to large-scale companies or late celebrities that are registered by third parties are subject to grounds for invalidation.  Accordingly, if the registrant uses these trademarks or exercises rights for the registered marks, this will likely constitute an act of unfair competition and abuse of rights.

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