Practice Areas

Trademark/Design

Trademarks and designs are a very important part of representing the image of a company and its products. They are significant legal rights that protect a company's brand identity and the appearance of its products, and they require protection.

CONTENTS

1. Trademark/Design | Importance
- - The Need to Register Trademarks/Designs
- - Legal Disputes
2. Trademark/Design | Key Legal Risks
- - Key Legal Risks Related to Trademarks
- - Key Legal Risks Related to Designs
3. Trademark/Design | Strategies for Securing Rights and Responding to Risks
- - Trademark/Design | Daeryun's Strengths
- - Trademark/Design Risk Checklist for Corporate Practitioners

1. Trademark/Design | Importance

Trademarks and designs are images that represent a company, and they play an important role in securing a competitive advantage in the market by protecting a differentiated brand image and creative designs.

A trademark refers to a sign, character, figure, color, or a combination thereof that allows the goods or services provided by a company to be identified.

It makes it possible to build trust with consumers and plays a central role in maintaining and strengthening a company's image and brand value in the market.

A design, by contrast, is a right that protects visually perceptible external features such as the shape, form, and color of an article, and an industrial property right that takes into account both artistic and commercial value.

Game UI, merchandise, character designs, and uniform designs fall under this category, and where appearance acts as a competitive advantage, it is directly tied to a company's business viability.

Because the entertainment and sports industries in particular are based on popular appeal and visual symbolism, trademarks and designs act not as merely incidental elements but as core assets.

An artist's name and signature, the image of a sports star, and a club's symbolic colors and characters are intangible assets, yet they carry enormous economic value in the market.

Therefore, a situation in which these are used without authorization by a third party, or in which trademark and design rights are not registered and thus go without legal protection, can pose a critical risk to a company.

The Need to Register Trademarks/Designs

The share that trademarks and designs occupy in a company's competitiveness can be considered substantial.

If another company plagiarizes such a trademark or design, legal disputes may deepen, so to prevent disputes a company should acquire rights to its trademarks and designs.

As with 🔗patents and utility models, trademarks and designs can only be acquired and asserted as rights once they are filed and registered.

Legal Disputes

Trademarks and designs are core assets of a company, and failing to protect the rights to them can lead to various legal disputes.

Infringement of these can directly threaten a company's brand value and its competitiveness in the market.

In particular, trademark infringement may cause another company or individual to use a similar trademark and create confusion among consumers, through which a company may suffer a serious blow to its image.

Design infringement, moreover, brings about a situation in which the appearance of a product is copied in a similar manner and consumers may be misled, and consumer trust may decline as a result.

Therefore, a company should protect its assets and strengthen its image through a legal response that prevents the infringement of its trademarks and designs.

The main thrust of such legal disputes is to assert the exclusive right to use a trademark and design and to request damages or an injunction against unauthorized use.

To resolve these disputes, a company should be able to take legal measures promptly and, where necessary, assert its rights through litigation.

It is also important to take preventive measures before infringement occurs and to establish an effective response strategy when a dispute arises.

2. Trademark/Design | Key Legal Risks

The legal risks that frequently arise in connection with trademarks and designs are as follows.

Key Legal Risks Related to Trademarks

▶Risk of Unregistered or Omitted Trademark Registration

Many entertainment and sports companies use an artist's stage name, group name, sports club name, character name, and the like in their actual business, yet often do not register these as trademarks or register them only in some product classes or countries.

Such omitted registration leads to situations in which a third party preempts or registers an identical or similar trademark, ultimately leaving the company unable to use that trademark or facing a use suspension or litigation.

In particular, K-pop group names and team nicknames are frequently registered first overseas in the course of expanding foreign fandoms, so caution is required.

▶Risk of Infringing Another's Prior-Registered Trademark

There are also many cases in which an artist's album title, a sports event name, or a fan club name created without much thought infringes another's trademark rights.

Even where the company has no intent, infringement can be established under trademark law on the 'likelihood of confusion in use' alone, so damages or a use prohibition may be ordered.

In particular, where a name similar to a specific brand is used without a license, or a celebrity's name is used on fan merchandise, there is also a significant risk of escalation to a criminal complaint if intent becomes an issue.

▶Disputes Over Trademark Rights Concerning Exclusive Entertainers and Athletes

If an agency has registered an artist's or athlete's stage name or working name as a trademark, but after the contract ends that person seeks to work independently, legal disputes frequently arise over whether the trademark may be used.

Because trademark rights vest in the registrant, even where it is one's own name, independent use is difficult if the entity registering the trademark is the agency.

Therefore, if the entity to which the trademark rights vest and the conditions for use after termination are not clearly agreed when concluding the exclusive contract, this becomes the seed of a long-term dispute.

▶Risk of Overseas Trademark Disputes

Along with the expansion of Korean Wave content and global sports marketing, overseas trademark disputes are also surging.

There are cases in which a third party registers an entertainer group name or character name first overseas, leaving the original agency unable to pursue export or licensing business, and resolving this takes years of litigation and enormous cost.

In China, Southeast Asia, Europe, and elsewhere, trademark preemption by local filing agents and trademark brokers is frequent, so proactive measures are essential.

Key Legal Risks Related to Designs

▶Unregistered Designs and Unauthorized Use of Similar Designs

Concert merchandise, sports club character products, fan merchandise, and UI/UX designs occupy an important share of a company's revenue structure, yet in many cases design registration is not carried out, or only a trademark is registered and the scope of protection is therefore limited.

Without securing design rights, a company cannot restrain a third party that imitates or copies a similar design and may instead risk a counter-suit from a competitor for design infringement.

▶Infringement of Another's Registered Design

In merchandise production, package design, app UI, and the like, where content produced by a designer through outsourcing is similar to another's registered design, the company may bear legal liability.

Even if the designer produced the work merely by referring to an already-registered drawing from outside or modifying publicly available design materials, civil and criminal liability may arise if 'similarity' is recognized.

In particular, items where visual distinctiveness matters, such as merchandise, clothing, and accessories, carry a high risk of design infringement.

▶Joint Creation and Issues of Copyright/Design-Right Vesting

For characters, merchandise, and album designs in which an entertainer, athlete, or joint creator has participated, the entity to which rights vest is often unclear.

For example, where an agency commercializes a character that an artist drew personally for a fan meeting, it can become unclear to whom the design right of that character vests.

In this case, if the contract or the agreement assigning economic copyright is inadequate, the likelihood of a future dispute increases.

▶Responding to Design-Right Infringement and Imitation Overseas

The entertainment and sports industries see active overseas fandoms and merchandise exports, but design protection commonly stops at domestic filing.

Even if similar designs are distributed in large volumes overseas, legal measures are difficult if the design is not registered in the country concerned.

In particular, design protection can become loose owing to short protection periods, differences in registration requirements across countries, and cost issues, and as a result the brand image may be damaged or counterfeit goods may circulate.

3. Trademark/Design | Strategies for Securing Rights and Responding to Risks

Trademarks and designs are core brand assets of a company, and protecting and managing them is very important.

Creative and distinctive trademarks and designs are an important factor in raising a company's competitiveness in a competitive market, and to protect them efficiently it is necessary to seek the help of legal counsel.

To prevent in advance the legal risks that may arise in the course of registering, managing, and responding to infringement of trademarks and designs, and to respond effectively when they occur, the following strategies should be built systematically.

① Strategic Registration Management
Trademarks and designs should not stop at domestic filing; an international registration strategy should be established that takes into account the countries of planned entry, the product lines to be licensed, and the brands set for expansion.

For example, when exporting Korean Wave content to China, Japan, and Southeast Asia, proactive trademark and design registration in those countries is critical.

② Building an In-House IP Management System
Companies should manage IP assets in an integrated manner and, when entering into contracts, clearly set out provisions on the vesting of rights, whether the work was jointly created, and any obligation to file.

In particular, exclusive contracts with artists and outsourcing contracts in the course of game development must not omit provisions on the copyright and the trademark and design vesting of the resulting work.

③ Operating a Trademark/Design Similarity Search and Monitoring System
A search and monitoring system should be operated regularly to detect when marks similar to the company's brand are registered or circulated in the market.

Alongside legal advice, the company should be able to swiftly take measures such as prior investigation, sending warning letters, filing oppositions, and bringing invalidation trials.

④ Establishing an Early Response System When Disputes Arise
When an infringement of rights occurs, the company should, in accordance with internal response protocols, quickly proceed with collecting evidence, applying for an injunction, halting the distribution of content, and bringing a damages claim.

A media response strategy that minimizes damage to the brand image, coordinated with the PR department, should also be pursued in parallel.

Trademark/Design | Daeryun's Strengths

At Daeryun Law Firm, to reach results that clients can be satisfied with in trademark and design matters, attorneys whose backgrounds include service as a Patent Court judge, together with professionals such as patent attorneys and tax accountants, collaborate in a coordinated manner.

The firm carries out, as a matter of course, trademark and design application work as well as rights-related legal issues such as invalidation confirmation and scope-of-rights confirmation, along with various civil and criminal litigation work related to infringement.

In addition, where an act of infringement occurs from a competing company, the firm proceeds with sending certified content mail and with litigation work.

If you are troubled by a legal issue concerning trademarks and designs, please request legal assistance through the 🔗Entertainment Attorney Legal Consultation Booking.

Trademark/Design Risk Checklist for Corporate Practitioners

Item	Review Content
Trademark/Design Registration Status	Has trademark and design registration been completed for the company name, brand names, artist names, characters, and the like?
International Filing Status	Have international trademark and design filings been made for the main countries of entry?
Review of IP Contract Provisions	In exclusive contracts, outsourcing contracts, and collaboration contracts, are the trademark/design vesting and conditions of use clearly defined?
Infringement Monitoring System	Is regular monitoring conducted of the use of similar trademarks and designs?
Dispute Response System	When infringement occurs, is a system prepared for internal decision-making and for legal responses such as litigation and injunctions?