Tuesday, August 08, 2006

GS vs. Sam-e Trademarks (A question of fame?)

I feel like this post is one of those email jokes where you scroll down and see some picture that is the punch-line, however I think its the best way to present it.

A few years ago the LG group split up. The main spinoff was the GS group (there was also the smaller LS Group spinoff). As with any spinoff a new corporate identity had to be found for GS group. One was announced, and almost immediately a smaller Korean firm, Sam-e, found a remarkable resemblance between their logo and the new GS logo. It was said that "negotiations" were ongoing, and the matter dropped from the press' and my radar screens.

Apparently negotiations did not go well. Sam-e issued petitions for the Korean Intellectual Property Office (KIPO) to deny GS's registration of the logo. It was announced that a few days ago that Sam-e lost that bid. KIPO denied Sam-e's petition and likely (the paper is imprecise) and registered GS's marks. Sam-e now has a variety of tools to cancel the mark, but the road only gets tougher to hoe going by my experience. Now for the punch-line, here are the two marks in question:

Before you express your consternation, as I did, one must realize that perhaps Sam-e's registration had little to do with the class of goods GS's were filed for. I do not have the details of the rejection, but it is possible that Sam-e original mark was registered for good and services different from the GS application. Sam-e seems like a rather narrow trading firm while GS owns business of all sorts. If that is the case, the Sam-e petition had little standing in the first place. (For example on class consider Kia sells a car called "Morning" and at the same time in Korea there is the name of securities/investment firm called "Good Morning". Similar marks but different services, so there is little likelihood of confusion between the origin of the two. Conceivably that is, I have no exact knowledge of that real world case.)

This could bring up something that is common complaint here. Sam-e may have filed its petition based on the only thing it could, the general fame of the mark. In Korea the bar for what is considered a "famous" mark is very high. This is a big problem, especially for foreign companies since KIPO often looks at fame in Korea and according to some examiners that is interpreted fame to everyday consumers, not fame in the industry. I once dealt with a case where the foreign firm in question was the global leader in its category for the last "umpteen" years. Yet KIPO, and the Korean court system,  consistently ruled the company was not famous since it had no business in Korea at the time in dispute.

This should really be a huge warning sign for any company who is, or wants to, do business in Korea. So far the Madrid system has had little effect on this despite the intent of it. If you fall in this category get your Korean registrations now!


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