Even if a trademark is sufficiently distinctive and has no identical or similar pre-registered trademarks, there are still cases where registration may be denied.
Well-Known Trademarks Owned by Others
We have emphasized several times that trademarks are meant to protect the right of first registration. However, the primary function of a trademark is to indicate the source of goods or services (e.g., manufacturer or seller).
These two principles can sometimes conflict—specifically when a trademark, though unregistered, has already gained recognition as a brand associated with a particular company. Even without trademark rights, if the brand is widely recognized by consumers and needs protection, the trademark law will deny registration to any similar mark.
But can a brand become well-known without registering its trademark?
For instance, some trademarks are known only outside of Korea. Since trademark rights are territorial, they apply only within the country where the trademark is registered. This allows for instances where foreign brands, despite being famous in their home countries, are not protected in other jurisdictions. Many try to exploit this by copying and registering these foreign brands locally.
However, Korean trademark law prevents such registrations, even if the brand is famous only abroad.
There are also cases where a brand is well-known for one type of product but not for others. Some exploit this by registering well-known brand names for unrelated products.
Nonetheless, Korean trademark law provides grounds to reject or invalidate such registrations if the malicious intent is evident, regardless of the product category.
In summary, whether domestic or foreign, it is best not to register or use trademarks that belong to well-known brands owned by others.
Famous Individuals’ Names
The names of celebrities or other well-known figures cannot be registered as trademarks if they are likely to cause confusion regarding the source of goods or services.
However, trademarks can be registered with the permission of the person in question.
Names Misrepresenting a Connection with Famous Deceased Individuals
Trademarks that falsely suggest a connection to a famous deceased person are also subject to rejection.
For example, the trademark 허준본가 (Heo Jun Bon-ga, meaning “Heo Jun’s Family Home”) for “rice containing Cordyceps” was rejected because it falsely implied a connection to Heo Jun, a renowned historical figure.
Similarly, Hemingway for “book publishing” was denied registration because it could mislead consumers into thinking the business was associated with works by the famous novelist Ernest Hemingway.
In contrast, the trademark Mozart for “slippers” was approved since there was no indication of any connection to the famous composer. Likewise, the underwear brand James Dean was allowed because there was no implication of a connection to the late actor James Dean.
Other Restrictions
Trademarks that violate public order or morality or that are considered contrary to public interest cannot be registered. Various types of trademarks fall under this category and are subject to rejection based on these criteria.