A "malicious trademark filing" is where a party knowingly applies for a trademark that is already in use by another party with the intention of selling, licensing, or suing for trademark infringement damages once the trademark is registered. The Korean Intellectual Property Office (KIPO) recently conducted a study of potentially "malicious" applications for trademarks on the names of popular celebrities, television shows, YouTube channels, cartoon characters, and other well-known marks, and concluded that there were an alarmingly high number of such applications in Korea.
KIPO has identified a number of applicants who appear to be frequent filers of malicious trademark applications based on their internal criteria. Based on data through 2020, 67 such applicants were identified as having filed a total of 23,802 trademark applications (about 355 applications per malicious applicant). Further, the data from 2015 through 2019 suggests that about 26% of malicious trademark applications are eventually registered (during that period, an average of 343 malicious trademark applications were filed per year, resulting in an average of 89 registrations per year).
Below are some examples of malicious trademark filings reported by KIPO:
- Names of famous celebrities: "Girls' Generation", "2NE1", "Big Bang", "TVXQ", "Young Tak", etc.
- Names of famous broadcast programs: "2 Days & 1 Night", "Happy Sunday", "Dae Jang Geum", etc.
- Famous YouTube channel names: "Boram Tube", "Bokyem TV", etc.
- Names of famous characters: "Pengsoo", "Pororo", "Shin-chan", etc.
- Famous trademarks: Twitter, Google, TOYOTA, KakaoTalk, etc.
- Others: "BORAHAE", a word coined by a member of BTS meaning "I will trust and love you for a long time."
South Korea is a first-to-file jurisdiction, so owners of marks are well-advised to file trademark applications promptly in Korea to avoid unnecessary complications that may arise due to malicious trademark filings by third parties.
If a trademark owner discovers an imitation trademark application or registration in Korea, there are several potential options for response, such as filing an information brief during an application, filing an opposition, filing an invalidation action against a registered trademark, and/or filing a cancellation action against a trademark based on non-use.
If a trademark squatter attempts to exercise rights based on a maliciously registered trademark against the rightful owner of the mark, the rightful owner may have a defense under Articles 90 (Extent to Which Trademark Rights Do Not Have Effect) or 99 (Right to Continuously Use a Trademark Based on First Use) of the Trademark Act. Court precedents have also recognized defenses based on trademark abuse, or denied infringement damages for marks that have not been used, depending on the circumstances.