No Free ride/Interception of Trademark Application Registrations!
-Korean Intellectual Property Office (KIPO) reinforces trademark examinations for famous others' names and characters through analysis of trademark trends-
It is considered by KIPO that recent trademark disputes such as those in relation to Pengsu and Bogyeom TV are not proper applications of trademark users but are applications bearing the unfair intention of gaining economic profit by piggybacking on the credit of others through trademark preemption, and thus KIPO will be further strengthening trademark examinations.
According to current Trademark law, if a third-party completely unrelated to a trademark user files a trademark application for a name or symbol such as for that of an idol group, popular YouTuber, or well-known character, such application is to be rejected under Article 34(1)6 (Trademark containing name and title of a prominent person), Article 34(1)9 (Trademark widely recognized by consumers), Article 34(1)11 (Trademark remarkably recognized by consumers), Article 34(1)12 (Trademark which deceives consumers) or Article 34(1)13 (Trademark used for unlawful purposes).
KIPO has previously rejected trademark applications filed for the idol group names 'Girls' Generation', 'Dong Bang Shin Ki' and' 2NE1' on the grounds of their being prominent others' names and titles. Additionally, there have been cases in which trademark applications filed for the famous character’s name ‘PORORO’ and the program 'Infinite Challenge-TOTOGA' by unrelated persons were rejected for registration.
<Rejection of registration for trademarks consisting of prominent person’s name and character>
In light of such various past examination cases, recent trademark disputes such as those concerning PENGSU and Bogyum TV are unlikely to be finally registered by parties other than the trademark users or character creators themselves.
In order to ensure fairness in relation to free riding and intercepting trademark applications, KIPO said they will further strengthen trademark examinations from this year through their ‘Trademark Trend Analysis Project’* so that examiners can share in advance information on terms that are likely to be preempted.
* Trademark Trend Analysis Project: Quickly identify market trends by analyzing big data concerning terminology, products and characters that involve social issues, select terms related to social disputes, compare and analyze these with trademark application status and create Examination Guidelines for before starting examinations.
Through such trademark trend analysis, it is expected that the accuracy of trademark examinations will be improved by providing in advance guidelines for judging dissimilarity or similarity in relation to buzzwords, new words, abbreviations, and character names that would be problematic for a specific person to be given exclusive rights to.
The Chief of the Trademark Design Examination Bureau of KIPO emphasized, “The names of idol groups and famous celebrities can be protected from unauthorized applications by acquiring fame through broadcasting and internet media. However, for trademarks used by individual businesses or small businesses, it is difficult to be protected by fame, and so it is necessary to file trademark applications and obtain registrations in advance, from the stage of planning the business, in order to prevent future trademark disputes.”