(Supreme Court of Korea, Nov. 16, 2023, Case No. 2020Hu11943)<\/p>\n\n\n\n
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.<\/p>\n\n\n\n
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?”<\/em><\/p>\n\n\n\n My conclusion was a firm “No.”<\/strong> 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<\/strong>.<\/p>\n\n\n\n The Golden Rule:<\/strong> Do not try to register or use someone else’s famous trademark.<\/p>\n\n\n\n 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.<\/p>\n\n\n\n A few days ago, the Supreme Court finalized a ruling that invalidated the trademark “LEGOCHEMPHARMA”<\/strong>.<\/p>\n\n\n\n LegoChem Biosciences<\/strong>, a KOSDAQ-listed bio-venture company, lost its final battle against the Danish toy giant, LEGO Juris A\/S<\/strong>.<\/p>\n\n\n\n The Conflict:<\/strong> LegoChem Biosciences registered the trademark “LEGOCHEMPHARMA” for pharmaceutical products. LEGO filed for invalidation, arguing that it infringed upon their famous toy brand.<\/p>\n\n\n\n This case is significant because the invalidation was based on Article 34(1)(11) (latter part) of the Trademark Act<\/strong>.<\/p>\n\n\n\n This provision prohibits the registration of a trademark that is likely to impair the distinctiveness or reputation (dilution)<\/strong> of a famous trademark, even if there is no direct confusion about the source of the goods.<\/p>\n\n\n\n Supreme Court Reasoning:<\/strong> “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.”<\/p> “‘Concern of impairing distinctiveness’ means the concern that the function of a famous trademark to indicate a single source may be damaged.”<\/p><\/blockquote>\n\n\n\n Although “Pharmaceuticals” and “Toys” are completely different products with no competitive relationship:<\/p>\n\n\n\n It seems LegoChem Biosciences has multiple trademarks like “LegoChemBio” either under opposition, withdrawn, or abandoned. They appear to be rebranding to “LCB”<\/strong>.<\/p>\n\n\n\n Is “LCB” Safe?<\/strong> 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.<\/p>\n\n\n\n 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:<\/p>\n\n\n\n Sarang IP<\/strong> We provide expert legal counsel on intellectual property disputes and trademark strategies.<\/em><\/p>\n\n\n\n (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.)<\/em><\/p>\n","protected":false},"excerpt":{"rendered":" Can you use “LEGO” for medicine? The Korean Supreme Court says NO. Learn about the landmark ruling on trademark dilution (2020Hu11943) and what it means for brand protection.<\/p>\n","protected":false},"author":1,"featured_media":3908,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[60],"tags":[87,86,85,84,67,83],"class_list":["post-3322","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-insights","tag-article-34-1-11","tag-famous-trademark-protection","tag-korean-trademark-act","tag-lego-case","tag-supreme-court-ruling","tag-trademark-dilution","category-60","description-off"],"aioseo_notices":[],"aioseo_head":"\n\t\t\n\t\n\t\n\t\n\t\n\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t\n\t\t
\n\n\n\nThe Case: LEGO vs. LEGOCHEMPHARMA<\/h2>\n\n\n\n
Case Timeline<\/h3>\n\n\n\n
\n\n\n\nThe Supreme Court’s Logic: Protecting Against “Dilution”<\/h2>\n\n\n\n
Why “LEGO” Won (Despite Different Products)<\/h3>\n\n\n\n
\n\n\n\nAftermath and Strategic Takeaway<\/h2>\n\n\n\n
Conclusion<\/h3>\n\n\n\n
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