(Patent Court of Korea, Nov. 8, 2023, Case No. 2022Heo5690)
Today, we delve into a landmark legal case, the first of its kind since the establishment of Korea’s Geographical Indication (GI) Collective Mark system.
If you are Korean, you undoubtedly know “Gwangcheon Kim” (Gwangcheon Laver/Seaweed). It is an immensely famous brand. One member company alone, Gwangcheon Kim Co., Ltd., boasts annual sales of 100 billion KRW and exports of 40 million USD. The scale of the entire “Gwangcheon Kim” market is beyond imagination.
This iconic brand, “Gwangcheon Kim,” was registered under the Trademark Act’s Geographical Indication (GI) Collective Mark system.
Understanding the GI Collective Mark
Normally, geographical names cannot be registered as trademarks. However, marks like “Gwangcheon Kim,” which are widely used and originate from the specific geographical characteristics of a region, can be registered as a GI Collective Mark.
- Geographical Indication (GI): Refers to a place name, like “Gwangcheon.”
- Collective Mark: It can only be registered by a “collective” (an association based in that region), not by an individual.
To prevent monopoly by a select few, the law requires the collective to be open for anyone to join (Article 54). It also allows for the cancellation of the registration if the mark misleads consumers about the product’s quality, which must be controlled according to the collective’s articles of association (Article 119).
The Legal Battle: Challenging the “Gwangcheon Kim” Monopoly
Given the immense brand power of “Gwangcheon Kim,” where a single company can generate 100 billion KRW in revenue, it is no surprise that there have been numerous challenges to cancel its registration. Many companies likely desired to use the “Gwangcheon” name for their seaweed products, knowing it could guarantee tens of billions in sales.
Previous Legal Challenges:
- July 1, 2020: Haerakwon Fisheries Cooperative Corp. filed for a passive confirmation of scope of rights (Patent Court confirmed it falls within the scope; plaintiff withdrew appeal).
- Nov. 25, 2020: Gyeongcheon Food Co., Ltd. filed for a Cancellation Trial (Patent Court confirmed cancellation ☆).
- Feb. 25, 2021: Tae-yoon Kim filed for an Invalidation Trial (Pending).
- Oct. 29, 2021: Beom-woo Lee filed for a Cancellation Trial (Dismissed; registration maintained).
Among these, the cancellation trial filed by Gyeongcheon Food Co., Ltd. on November 25, 2020, was initially dismissed by the Intellectual Property Trial and Appeal Board (IPTAB). However, they appealed to the Patent Court, which ultimately ruled to cancel the registration. This ruling has now become final.
Why Was the Registration Cancelled?
The Patent Court cancelled the “Gwangcheon Kim” GI Collective Mark for two main reasons:
- Violation of Quality Control Duty:
- Members used the trademark on products not specified in the registration (e.g., “Kimjaban” – seaweed flakes, “Gimbap-gim” – laver for gimbap).
- Members used seasoned salt or imported sea salt instead of domestic sea salt for seasoned laver, violating the articles of association.
- The Association failed to properly supervise these actions.
- Failure to Take Action Against Unauthorized Use: The Association did not take appropriate measures against third parties’ (non-members’) unauthorized use of the “Gwangcheon Kim” mark.
What Happens to the “Gwangcheon Kim” Brand Now?
1. Loss of Exclusive Rights: With the registration cancelled, the exclusive right is gone. The Association can no longer demand others stop using the mark based on trademark rights. While other laws like the Unfair Competition Prevention Act might apply, the mark is essentially open for anyone to use for now.
2. Can Others Register “Gwangcheon Kim”? It appears difficult for anyone other than the original rights holder, the Gwangcheon Kim Fisheries Cooperative Corporation, to register “Gwangcheon Kim” as a trademark or GI collective mark. If the brand is already considered “well-known” in Korea as belonging to the Association, applications by others will likely be rejected under various trademark law provisions.
3. Can the Association Re-register? Yes, but it will take at least four years.
- The 3-Year Rule: Since the cancellation was based on Article 119, Paragraph 1, Item 7(c) of the Trademark Act, re-application is restricted for three years from the cancellation date (Article 34, Paragraph 3).Registration Process: Even after applying three years later, the registration process itself takes at least another year.
Conclusion: An Uncertain Future for a Market Giant
Four years is a long time in the business world. How will the “Gwangcheon Kim” brand be managed during this vacuum? Many companies will undoubtedly attempt to capitalize on the name. There is a real risk that the immense market built around “Gwangcheon Kim” could collapse due to this cancellation.
Currently, there are numerous pending trademark applications containing “Gwangcheon Kim.” With the original registration cancelled, will these now be registered?
The key question remains: To whom do Korean consumers currently attribute the “Gwangcheon Kim” brand? Personally, I believe it should be managed as a GI Collective Mark, and the original holder, the Association, should secure the registration again and ensure proper quality control among its members. However, given the market’s size, fierce legal battles lie ahead.
Sarang IP We provide expert legal counsel on intellectual property disputes and cross-border 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.)
