Today we celebrate World Intellectual Property Day, congratulations to all! For this reason, we want to share the following article with you:
South Korea’s Supreme Court ruled that the word “Yangtangguk,” an archaic term for coffee in Korea, is valid for use as a coffee shop brand.
This ruling comes after an appeal against the country’s Intellectual Property Appeals and Trials Board, which had determined that the use of this obsolete term as a trademark was invalid. As a result, a local coffee franchise that had registered the word as a trademark years ago was unable to use it freely.
The word “Yangtangguk” translates to “Western soup” and was the noun for coffee from the late 14th to the early 20th century. The word also currently designates the “Yangtangguk Coffee Culture Center,” which recreates the coffee culture of the Korean Empire in Hadong Province and promotes other brands as part of a tourism campaign.
The trademark was registered as an image, in Korean characters, by Mr. Kyoung Il Hong, a businessman who, shortly after registration, faced a challenge from a local coffee franchise. The franchise petitioned the Korean Intellectual Property Office to invalidate the trademark, arguing that yangtangguk, as a generic/noun term, could not be monopolized as a trademark by a single individual.
Although Article 7 of the Korean Trademark Law of 2007 states that trademarks that could cause confusion with another person’s goods or services cannot be registered, given that they are recognized by consumers as designating a third party’s goods or services, the Supreme Court held that “it cannot be definitively stated that a consumer will perceive a particular product as the item representing the specific product (perceiving yangtangguk as coffee) simply because the product uses the previously used name.”
The Court ruled that the invalidation was not warranted, as it found no clear evidence demonstrating that consumers would confuse the archaic term with the product. Furthermore, he insisted that the trademark cannot be invalidated because the modern consumer, upon hearing or reading the word “yangtangguk,” does not immediately think of coffee.
This is, to date, the first decision in Korea to accept archaic and obsolete words as trademarks, as it does not consider the use of an antiquated noun as grounds for invalidating a trademark. This sets a precedent, contrary to many global legislations that prohibit the registration of generic words as trademarks unless they serve to prevent the establishment of monopolies, provided certain conditions are met, beginning with safeguarding the uniqueness of a product or service.
In Paraguay, Law 1.294, the Trademark Law, states in Article 2, section “e” that signs consisting entirely of a generic name or designation of the product or service in question, or that could be used in commerce to qualify or describe any characteristic of the product or service, cannot be registered as trademarks. When an individual or company wishes to register a name of this nature, there are often several recommendations to consider.
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