October is a great month for sightseeing in Korea. Cool weather, occasional winds, and cloudless blue skies create a beautiful ensemble to visit. Tourists, both from abroad and Korea itself, meander through ancient palaces and flock to amusement parks seeking thrills in the autumn season. Enjoying the cool breeze while strolling along the Han River with friends or loved ones can build up quite an appetite, which calls for local Korean delicacies.
But what do you think of first when you hear ‘Korean food’? Many people’s minds will jump to the ubiquitous Bibimbap, Bulgogi and Korean barbecue. Yet, these are only entrees to the diverse menu Korean cuisine has to offer. One of the most beloved local culinary staples, especially enjoyed by Korean women, is none other than ‘Tteokbokki’ or a rice cake with spicy seasoning.
Tteokbokki, considered as one of Korea’s soul foods, was once sold in the streets, without a brand at stalls or small private restaurants. However, as times change, many tteokbokki brands emerged, vying for prominence in the local market. Our publication today will explore the branding struggle around this succulent staple of Korean cusine, diving into a trademark dispute over a Tteokbokki brand.
Today’s protagonist, “Guljak Tteokbokki,” is a specialty brand of Tteokbokki and Chicken, which began in 2015.
“Guljak”, as seen in the image above, is defined by the Korean Dictionary as: “[a very good piece of art or something that attracts attention because it is ridiculous or unusual]” (darts-355-022-F-ko). In other words, this brand can be interpreted as offering Tteokbokki that is so delicious and excellent, that it attracts attention. The figurative trademark includes a long red ladle-shaped element in the middle referencing the fact that the Tteokbokki comes in a soup and must then be eaten with a spoon. Also, the ‘I’ character of Tteokbokki written in Korean is replaced by a figurative Tteokbokki rice cake with spicy seasoning.
The 걸작 떡볶이(Guljak tteokbokki), a company that has found popularity recently with a strong expansion to more than 100 branches in the past three years, tried to register the trademark listed above with the Korean Intellectual Property Office (KIPO) in 2016. The Office saw fit to reject the application on the grounds that it presents similarities with the below service marks:
‘걸짝(GIRLZZAK)’ is a pub brand. However, it can be observed that there is no spoon or Tteokbokki rice cake sign like the previous 걸작 떡볶이(Guljak tteokbokki) trademark nor the red color symbolizing red pepper paste sauce. The KIPO also decided that the two trademarks have different appearances. However, despite distinct visual elements, in terms of the name, ‘GIRLZZAK’ and ‘걸짝’ have the same pronunciation as ‘걸작’ and the KIPO concluded that the two trademarks are similar.
“The application service table in this case is called the ‘Guljak’. Pre-registered service table 1 is called ‘girlzzak’, and pre-registered service tables 2 and 3 are called “girlzzak” relatively easily in English. Therefore, these service marks have the same or similar names. On the other hand, the notion of these service marks is similar considering that the pronunciation of ‘걸작’ which means, according to the Korean dictionary 「a very good piece of art or something that attracts attention because it is ridiculous or unusual」, is ‘걸짝’.” (darts-355-022-F-ko)
In addition, 걸작 떡볶이(Guljak tteokbokki) insisted that it is a franchise that sells Tteokbokki, but as 걸짝 is a pub brand that sells liquor and snacks the substantial service industry is different and thus it does not cause actual misunderstanding among general consumers. But the KIPO rejected this claim, too.
“The designated service industry in the application service table and pre-registered service tables in this case includes both the “dining restaurant business”. Therefore, the designated service businesses of both service marks correspond to the same service business. The fact that the two service marks are used for different designated services in the real world does not lead to different conclusions.” (darts-355-022-F-ko)
In disagreement with KIPO’s judgment, 걸작 떡볶이(Guljak tteokbokki) appealed the Patent Court. 걸작 떡볶이(Guljak tteokbokki) insisted on the difference of ‘idea’ in addition to the claims it made to KIPO earlier. 걸작 떡볶이(Guljak tteokbokki) claimed that “’GIRLZZAK’ is thought to be meaning ‘pairing with(짝(ZZAK)) women(걸(GIRL))’. From the ‘GIRL’ part, the recognition regarding female seems to be stronger. Therefore, even though the names are similar, the appearance and concept are so different that the application service table in this case cannot be regarded as like the pre-registered service tables.” (darts-200-618-G-ko)
However, the Patent Court decided that:
“It is difficult for the general consumer or trader to recognize that the combination of ‘걸(GIRL)’ and ‘짝(ZZAK)’ imply the idea of ’pairing with women’ without listening to the explanation. Even if the idea of pairing with a woman is likely to be recognized, the idea of 걸작(Guljak), whose pronunciation is the same as we saw earlier, may be also felt. Thus, the idea is similar.” (darts-200-618-G-ko)
In addition, the Patent Court rejected the claim of 걸작 떡볶이(Guljak tteokbokki), drawing the same conclusion as KIPO on the other issues. In this ruling, the Court stated that even if the application service mark is different from the pre-registered trademark in its appearance, KIPO and the Court can refuse registration if it is similar in its name and concept.
What did the court say in other cases? KIPO has rejected the registration of another Tteokbokki brand, ‘나는 조선의 떡뽂이다!’, which is similar to the preregistered trademark ‘王조선떡볶이’ and belongs to the same or similar restaurant business (darts-786-751-D-k o). However, afterwards, the Patent Court decided that the names of the two brands were different, and in particular, the service mark in this case was a parody of the famous line in the drama, while the pre-registered trademark, ‘王조선떡볶이’’ is not(darts-248-841-E-ko). Considering this trend, it is necessary to focus and prove that ‘걸작떡볶이(Guljak tteokbokki)’ is at least different in idea from the existing pre-registered trademark ‘걸짝(GIRLZZAK)’ in order to win the lawsuit.
Awareness of intellectual property rights is being reconsidered, and legal disputes around trademark applications and registrations are increasing. For foreign companies doing business in Korea, it will be important to know the trend of the Court’s decisions and prepare in advance for trademark disputes.2bbbb 3bbbb 4bbbb bbbb