The “Zombie” Dispute from the Past
Business partnerships end, but sometimes, the legal entanglements resurface years later.
CEO Pyo, a supplier of golf course management materials, faced this exact nightmare. In 2010, he personally coined and designed “Brand B,” using it to build his reputation in the industry. Four years later, in 2014, he entered into a temporary joint venture with Mr. Im to expand sales. The partnership was rocky and short-lived; the company was dissolved, and they went their separate ways.
Fast forward to 2022: CEO Pyo officially registered “Brand B” as a trademark in Korea. Then came the shock. In 2023, nearly a decade after their split, his former partner Mr. Im filed a Trademark Invalidation Trial.
The Accusation: “You Stole Our Shared Asset”
Mr. Im’s legal argument was based on Article 34(1)(20) of the Korean Trademark Act.
This clause effectively states: A trademark cannot be registered if the applicant filed it in bad faith after learning of the mark through a partnership, employment, or business transaction with the person who has the right to the trademark.
Mr. Im argued that because they were partners in 2014, CEO Pyo had no right to register the mark solely in his own name in 2022. He claimed the registration was a violation of their past business relationship and should be declared void.
The Strategy: Timeline and Control
The challenge for Sarang IP was to dismantle the narrative that this was a “shared” asset. We focused on the legal concept of “Substantial Attribution of Rights.”
We argued that Article 34(1)(20) is designed to stop partners from stealing a mark, not to stop the original creator from protecting it.
Our defense relied on two pillars of evidence:
- The Timeline (Pre-dating the Partnership): We provided concrete evidence that CEO Pyo had coined and used “Brand B” starting in 2010—four years before he ever met Mr. Im. This proved that the trademark was not “learned through the partnership,” but was an asset CEO Pyo brought into the relationship.
- Control and Authority: We demonstrated that even during the short 2014 partnership, the “right to control” the trademark remained with CEO Pyo. We submitted evidence showing that Pyo retained decision-making power over the brand’s usage throughout the joint venture.
The Verdict: Invalidation Dismissed
The Intellectual Property Trial and Appeal Board (IPTAB) accepted Sarang IP’s arguments in full.
The tribunal ruled that the registration did not violate the Trademark Act because the substantial rights to the trademark belonged to CEO Pyo long before the partnership existed. The request for invalidation was dismissed, and CEO Pyo’s registration was confirmed valid.
Conclusion
Past business relationships are one of the most common sources of IP disputes in Korea. Former partners often claim, “I helped sell it, so I own half the name.”
However, contribution to sales does not equal ownership of a brand. As this case proves, if you can clearly document who created the mark and who held the right of control, you can defend your rights even against insiders.
At Sarang IP, we reconstruct the history of your brand to build a defense that stands up in court.
