Iiwii Combine, which operates Gentle Monster, failed to register some trademarks in the process of launching a new brand. A series of findings said the marks were similar to existing trademarks. However, because it has already registered trademarks in multiple forms, the impact on brand operations and business expansion appears limited.
According to midsize business and legal circles on the 3rd, the Intellectual Property High Court recently ruled against Iiwii Combine in a lawsuit seeking to overturn the Intellectual Property Trial and Appeal Board's decision refusing trademark registration. The ruling was finalized after Iiwii Combine did not appeal.
Iiwii Combine 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 putting Blackpink's Jennie at the forefront, ATiiSSU also raised brand awareness when Felix of Stray Kids posted photos on social media (SNS) wearing an ATiiSSU cap.
Ahead of the brand launch, it filed 55 "ATiiSSU" trademark applications in 2023. Among them, a mark with the English letter "A" placed on top and "TiiSSU" at the bottom became a stumbling block. At the time, the Korean Intellectual Property Office viewed it as similar to the prior-registered trademark "TISHU." Iiwii Combine appealed to the Intellectual Property Trial and Appeal Board, saying, "Consumers will perceive the mark as 'Eotissue' or 'A-tissu,' and take it differently from the existing mark."
But the Intellectual Property Trial and Appeal Board and the Intellectual Property High Court did not accept Iiwii Combine's claims. They found the core source identifier to be "TiiSSU." They viewed "A" as merely a common article, while "TiiSSU" had strong distinctiveness. Because "TiiSSU" can be pronounced as "tissue" or "tisu," its calling is identical or similar to the prior-registered "TISHU," and both marks designate overlapping goods such as clothing, hats, and scarves, they concluded that consumers could be confused.
Although registration of the mark in question was refused, the business impact is expected to be limited. Iiwii Combine has registered trademarks across several product categories, including the word mark "atiissu," as well as for apparel, strollers, bags, accessories, bedding, and retail. As the decision is confined to a specific mark, Iiwii Combine also determined there would be no issue in carrying out its business and did not file an appeal with the Supreme Court.
Typically, corporations secure trademark rights by filing word marks, logos, and combined marks in various forms ahead of a new brand launch. This is because the scope of rights and examination units can vary by designated goods and mark type. As with "Eotissue," filing with a broad range of designated goods can reduce rights gaps by product category when expanding a brand.
Attorney (patent attorney) An Seul-a of Daejin Law Firm said, "In a brand expansion strategy, building a rights portfolio in various forms limits the business impact even if a particular mark is refused."
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 source identifier remains the same," noting, "This case shows the need for prior trademark searches before filing and for preparing alternatives that change the core source identifier."