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Trademark Applications Also Need ‘O2O*’ Strategy

Trademark Applications Also Need ‘O2O*’ Strategy

- A Smart Start-Up Company Should Simultaneously Record a Product and Service –

“Kakao Taxi”, “Baemin” and “Market Kurly” are services that are currently deeply integrated into our lives. As the fields provided by each service are taxi, provision of restaurant information and order as a proxy, and delivery of fresh and frozen foods, the forms of the services provided are different from each other, but they have a common point. The common point is that consumers use the corresponding services through smart phone application software (‘mobile app’ hereinafter).

* O2O: abbreviation of ‘Online to Offline’ regarding applying online technology to traditional offline sales and services

Reviewing the trademark rights of these companies, it can be confirmed that products such as ‘software, mobile app and mobile coupon, etc.’ were registered in addition to the services such as taxi transportation service, provision of restaurant information and sales of fresh and frozen foods that those companies provide.

** Services: Advertising/Wholesale and Retail sales (class 35), Insurance/Financial business (class 36), Construction/Repair business (class 37), Communication (class 38), Transportation/Travel business (class 39), Processing of materials (class 40), Education/Entertainment/Sports (class 41), Science/IT (class 42), Food and Beverage Provision/Lodging business (class 43), Medical Care/Agriculture/Gardening (class 44), Legal/Security business (class 45)

O2O service companies whose businesses reach a stable stage typically simultaneously file for ‘mobile app’ as well as services at the time of filing a trademark application, whereas start-up companies generally file for and are granted only services to provide consumers due to cost issues and a general lack of awareness regarding trademark rights while initially organizing.

For example, Kurly Corp., a fresh foods delivery service start-up company, filed and registered the “Market Kurly” mark in 2015 only in relation to ‘internet shopping mall business, fresh foods delivery services’, etc., but added ‘mobile app’, etc. as designated goods in 2019 and registered said mark.

In the case that a start-up company provides services through an internet homepage during its initial organizing stage, there are likely to be no problems despite recording only services. However, upon starting ‘mobile app’ services, if the same mark name is already registered by another person in relation to a mobile app, trademark right trouble could occur, and accordingly, attention to this issue is required.

The Trademark and Design Examination Chief of KIPO announced, “As traditional services are expanded from offline to online and from online to mobile, an ‘O2O’ strategy, in which a trademark application also files for ‘mobile app’ together with its designated goods, in comparison to the age of filing only for traditional services, is required” and “If a ‘mobile app’ was not filed for at initial organization, it is possible to file a new trademark or use the system for ‘application for registration of additional designated goods*’.”

* System of ‘application for registration of additional designated goods’: As this is a system for management as one collective trademark right by adding designated goods to an existing registered mark or applied-for mark and being registered, management of the trademark right is more convenient than would be the case if filing for a separate mark.

[Source: KIPO]

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