(Supreme Court of Korea, Nov. 16, 2023, Case No. 2020Hu11943)
Recently, a client approached me with a question. They were planning to incorporate a gallery business and asked if they could use a specific name. The name in question was identical to “Pola*”, a very famous ice cream brand in Korea.
They asked, “I know I can’t use it for ice cream or food, but wouldn’t it be okay for a ‘Gallery’ or ‘Art Exhibition’ business, which is completely unrelated?”
My conclusion was a firm “No.” Since the brand is a household name in Korea, registering it as a trademark is impossible. Even if the confectionery company hadn’t registered the trademark in the gallery category, using it could still violate the Unfair Competition Prevention Act.
The Golden Rule: Do not try to register or use someone else’s famous trademark.
Korean Trademark Law is increasingly strict against attempts to imitate others’ marks. The law aims to block any attempt to “free-ride” on the goodwill and credit embodied in another person’s trademark. This trend is evident not only in the text of the law but also in the examination guidelines of the Korean Intellectual Property Office (KIPO) and court rulings.
A few days ago, the Supreme Court finalized a ruling that invalidated the trademark “LEGOCHEMPHARMA”.
The Case: LEGO vs. LEGOCHEMPHARMA
LegoChem Biosciences, a KOSDAQ-listed bio-venture company, lost its final battle against the Danish toy giant, LEGO Juris A/S.
The Conflict: LegoChem Biosciences registered the trademark “LEGOCHEMPHARMA” for pharmaceutical products. LEGO filed for invalidation, arguing that it infringed upon their famous toy brand.
Case Timeline
- Nov. 24, 2015: “LEGOCHEMPHARMA” (Class 05 – Pharmaceuticals) applied.
- May 09, 2016: Opposition filed.
- May 01, 2017: Application rejected (Opposition accepted).
- Aug. 22, 2018: Intellectual Property Trial and Appeal Board (IPTAB) reversed the rejection -> Trademark Registered.
- Nov. 30, 2018: LEGO filed an Invalidation Trial.
- Feb. 17, 2020: IPTAB dismissed the trial (Registration maintained).
- Mar. 19, 2020: LEGO appealed to the Patent Court.
- Patent Court Decision: Ruled in favor of LEGO (Registration Invalidated).Nov. 16, 2023: Supreme Court dismissed LegoChem’s appeal (Invalidation Confirmed).
The Supreme Court’s Logic: Protecting Against “Dilution”
This case is significant because the invalidation was based on Article 34(1)(11) (latter part) of the Trademark Act.
This provision prohibits the registration of a trademark that is likely to impair the distinctiveness or reputation (dilution) of a famous trademark, even if there is no direct confusion about the source of the goods.
Supreme Court Reasoning: “The purpose of this clause is to protect the economic value (customer attraction power, sales power) embodied in a famous trademark by prohibiting the registration of marks that may impair its distinctiveness or reputation, even if there is no confusion regarding the source.”
“‘Concern of impairing distinctiveness’ means the concern that the function of a famous trademark to indicate a single source may be damaged.”
Why “LEGO” Won (Despite Different Products)
Although “Pharmaceuticals” and “Toys” are completely different products with no competitive relationship:
- Dominant Part: The “LEGO” part in “LEGOCHEMPHARMA” is identical to the famous mark “LEGO,” making the marks similar overall.
- Dilution: The use of “LEGOCHEMPHARMA” would disperse or dilute the positive image, advertising power, and customer attraction power that LEGO has built over decades.
- Single Source: Allowing this registration would damage the function of the LEGO trademark to indicate a “single source.”
Aftermath and Strategic Takeaway
It seems LegoChem Biosciences has multiple trademarks like “LegoChemBio” either under opposition, withdrawn, or abandoned. They appear to be rebranding to “LCB”.
Is “LCB” Safe? Since “LCB” consists of three simple English letters, it might be registrable if there are no prior similar marks. However, when using it, they must ensure it is clearly distinguished to avoid any association with “LegoChemBio” to be safe from future disputes.
Conclusion
Even a company as powerful as LEGO had to fight for years (from 2015 to 2023) to protect its brand against dilution in a completely different industry. This case serves as a stern warning:
- Don’t rely on “Different Industries”: Even if your product is unrelated (e.g., Toys vs. Medicine), using a famous brand name is highly risky under Korean law.
- Respect Fame: The more famous a mark is, the broader its protection against dilution.
- Create Originality: The cost of defending a copycat name far outweighs the cost of creating a unique brand from the start.
Sarang IP We provide expert legal counsel on intellectual property disputes and trademark strategies.
(Disclaimer: This post is for informational purposes only and does not constitute specific legal advice. Please consult with a professional attorney regarding your specific case.)
