IP Report

Daesang “beverage” vs Aekyung “detergent”… What has the Patent Court of Korea Decided in the “Hongcho” Trademark Dispute?

  • Writer: 특허법인아주
  • Date: 2022-08-31 09:30

A dispute arose between Daesang and Aekyung Industrial about invalidation of a trademark “Hongcho (red vinegar).”  The Patent Court of Korea determined that confusion between Daesang’s vinegar beverage “Masineun Hongcho” and Aekyung Industry’s detergent “Trio Hongcho” is not likely.  The Patent Court considered that “Hongcho” is widely used as a byword for “red vinegar,” and drinking vinegar is a completely different product from a detergent.  On the 21st, the second division of the Patent Court of Korea dismissed the plaintiff's claims in Daesang’s trial for trademark registration invalidation against Aekyung Industrial.

 

While Daesang requested a trial to invalidate the trademark “Trio Hongcho” registered by Aekyung with the Intellectual Property Trial and Appeal Board in 2019, the trial was not heard and a decision was rendered. Daesang was dissatisfied with the decision and filed a lawsuit with the Patent Court of Korea in July of last year to cancel the trial decision rendered by the Intellectual Property Trial and Appeal Board.  Daesang asserted that the trademark “Trio Hongcho” in the name of Aekyung Industrial could mislead consumers to believe that vinegar drinks such as Daesang's “Masineun Hongcho” are used as a raw material of the product.  In addition, Daesang asserted that as “Hongcho” is recognized to represent Daesang’s vinegar drink, and use of the name “Hongcho” on the product by Aekyung Industrial can be seen to have the purpose of gaining unjustifiable profits by taking advantage of the credibility and reputation of the earlier released product.

 

However, the Patent Court of Korea agreed with the Intellectual Property Trial and Appeal Board, considering the product “Trio Hongcho” unlikely to be confused with Daesang’s vinegar product.  The Patent Court of Korea acknowledged the arguments that Daesang coined the novel word “Hongcho”, filed a trademark application and registered it in 2004, and has occupied a high market share since release of the drinking vinegar drink product in 2005.

 

However, the facts that a vinegar drink and a detergent are completely different products, that “Hongcho” has been generally used in the corresponding field in the names of products or raw materials to refer to “red vinegar,” and that the trademark of Daesang’s vinegar drink product has been used in combination with the text and figures “Cheongjeongwon” and “Masineun” were also emphasized.

 

 

Although Daesang's vinegar drink products and Aekyung's detergent products have both been on the market since 2013, it was held that there is no evidence that they have been causing consumers confusion as to the sources of the two products.  The Patent Court of Korea ruled that ‘Hongcho’ of ‘Trio Hongcho’ is unlikely to be misinterpreted by consumers as referring Daesang’s vinegar drink product rather than ‘red vinegar,’ or to cause misconceptions about the quality of the product.”  They found the plaintiff’s request to be without merit and dismissed the trial, upholding the trial decision of the Intellectual Property Trial and Appeal Board.

 

Source: https://www.news1.kr/articles/?4620411

 

 

 

The World Acknowledged Names of Products “Hanbok” and “Soju” and are Now Added to Generic Trademarks to the Nice Classification

 

In addition to kimchi, bulgogi, and bibimbap, 6 trademark names including hanbok, soju, etc. are listed, as it is expected to strengthen the protection of Korean generic trademarks in foreign countries.

 

In addition to kimchi, bulgogi, and bibimbap, six product names including hanbok, soju, etc. will be listed as Korean generic trademark names.  The World Intellectual Property Organization (WIPO) announced that Korean generic trademark names (names of generic goods specific to certain countries and regions) “hanbok,” “soju,” “gochujang,” “doenjang,” “makgeolli,” and “gimbab” will be listed as official goods names of NICE acknowledged by the WIPO.

The official goods names of the Nice classification are internationally used trademark names acknowledged by the WIPO and used by the 91 member countries.  Once they are listed as official goods names of the Nice classification, trademarks covering the designated goods may be registered in foreign countries. KIPO proposed that 10 Korean generic trademark names be added as international product names in the agenda of the 32nd NICE International Goods Classification Experts Meeting, and 6 of those, “hanbok,” “soju,” “gochujang,” “doenjang,” “makgeolli,” and “gimbab,” were accepted.

 

In May, the WIPO International Secretariat sent the results of the meeting to the member countries, procedures including opposition from the member countries were finalized in June, and the results are scheduled to take effect next year.  According to the results of this meeting, the number of generic Korean product names listed as NICE official goods names will increase to 9 in addition to the previously listed kimchi, bulgogi, and bibimbap.  Now that they are listed as official goods names of NICE, these Korean generic goods names are less likely to be registered as trademarks in foreign countries, and even if they are registered, the listing may be used as an essential ground on which to invalidate the registered trademarks.

 

Source: https://www.e-patentnews.com/8365

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