Eyewear brand operator IICOMBINED, which runs Gentle Monster, failed to register some trademarks in the process of launching a new brand. The decisions found they were similar to existing marks. However, because the company already registered trademarks in several forms, the brand's operations and business expansion are unlikely to be significantly affected.
According to mid-sized corporations and the legal community on the 3rd, the Intellectual Property High Court recently ruled against IICOMBINED in a lawsuit seeking to overturn the Intellectual Property Trial and Appeal Board's decision refusing trademark registration. The ruling was finalized when IICOMBINED did not appeal.
IICOMBINED officially launched "ATiiSSU" in Jan. last year. It is the fourth brand after Gentle Monster, beauty brand "Tamburins," and dessert brand "Nudake." As Gentle Monster expanded its scale by featuring Blackpink's Jennie, ATiiSSU also boosted brand recognition when Stray Kids' Felix posted photos on social media (SNS) wearing an ATiiSSU cap.
Ahead of the brand launch, the company applied in 2023 to register 55 "ATiiSSU" trademarks. Among them, a mark that placed the letter "A" on top and "TiiSSU" on the bottom became a stumbling block. At the time, the Korean Intellectual Property Office found it similar to a prior-registered mark, "TISHU." IICOMBINED appealed to the Intellectual Property Trial and Appeal Board, arguing that consumers would perceive the mark as "Eotissue" or "ATissu" and distinguish it from the existing mark.
However, the Intellectual Property Trial and Appeal Board and the Intellectual Property High Court did not accept IICOMBINED's arguments. They concluded the core distinctive element was "TiiSSU." While "A" is merely a common article, they found "TiiSSU" highly distinctive. Because "TiiSSU" can be pronounced as "Tishu" or "Tisu," its name is the same as or similar to the prior-registered "TISHU," and the designated goods for both marks overlap, including clothing, caps, and scarves, they concluded consumers could be confused.
Although registration of the mark in question was refused, the impact on the business is expected to be limited. IICOMBINED has registered trademarks across multiple product categories, including a word mark for "atiissu," as well as apparel, strollers, bags, accessories, bedding, and retail services. Because this decision is confined to a particular mark, IICOMBINED also judged there would be no issue in carrying out its business and did not appeal to the Supreme Court.
Companies typically file separate applications for word marks, logos, and combined marks in various forms before launching a new brand to secure trademark rights. The scope of rights and the examination unit can vary by designated goods and by mark format. As with "Eotissue," filing with a broad range of designated goods can also reduce rights gaps by product category when expanding the brand.
Attorney (patent attorney) An Seul-a of Daejin Law Firm said, "In a brand expansion strategy, if you build a rights portfolio in diverse forms, even if a particular mark is refused, the impact on the business is limited."
She added, "In areas where there are identical or similar prior-registered marks, registration can be blocked even if you change the form, when the mark's core distinctive element remains the same," and "this case shows the need for prior trademark searches before filing and preparing alternatives that change the core distinctive element."