[Valuable Intellectual Property] The Power of Burberry? The Story Behind the Ban on Wearing Checkered Uniforms

Efforts to Protect Luxury Brand Trademarks
Requesting Crackdowns and Utilizing AI
Weak Trademark Protection and Management
Can Delay Overseas Expansion and Harm Business

[Asia Economy Reporter Kim Bo-kyung] Starting in 2024, Burberry checkered school uniforms will disappear. This is because the British fashion brand Burberry claimed that the checkered patterns on school uniforms infringe on its trademark rights. These patterns were mainly used on the sleeves, collars, and skirts of school uniforms. Of course, not all checkered patterns are affected. Only patterns similar to the Burberry checkered design are subject to removal. New students, not current students wearing the uniforms, will wear the new design uniforms. Initially, this was scheduled to apply to first-year students starting next year. However, the Korea School Uniform Industry Association, representing uniform manufacturers and having negotiated with Burberry, requested "more time to complete administrative procedures," so the change will begin with first-year students enrolling in 2024. In other words, Burberry granted a one-year grace period. Previously, in 2013, Burberry also filed a lawsuit claiming trademark infringement against LG Fashion's Daks shirts and other checkered products. At that time, the court ordered LG Fashion to pay Burberry 30 million won. While design rights expire after 20 years, trademark rights can be renewed indefinitely every 10 years. When a specific pattern is used long-term and continuously like Burberry, it gains the power to identify the source, i.e., distinctiveness as a trademark.

Trademark disputes are not limited to the same industry. In 2015, the French LVMH group, owner of the Louis Vuitton brand, filed for an injunction to stop operations against a chicken restaurant named Louis Vuitton Dak in Yangpyeong, Gyeonggi Province. The signboard reminiscent of Louis Vuitton and the chicken packaging parodying Louis Vuitton’s logo design became problematic. The court sided with Louis Vuitton, and the chicken restaurant eventually closed. Lee Jong-gi, head of the Korean branch of Jungwa Patent Law Firm, said, "Overseas brands do not tolerate any damage to the reputation of their famous trademarks," interpreting this as a message that they will not allow anyone to profit by riding on the reputation of famous trademarks. Choi Sung-woo, a patent attorney at Woo-in Patent Firm, said, "Luxury brands sometimes hire domestic law firms or trademark enforcement specialists to find similar trademarks," adding, "Recently, precise enforcement using artificial intelligence (AI) technology has become possible." He evaluated, "Efforts to protect luxury brands start from such detailed aspects and are the secret to maintaining their reputation for a long time."

Packaging of Chanel No. 5 perfume from France (left) and packaging of perfume from Company A
[Photo by Korea Intellectual Property Protection Agency]

In China, where intellectual property infringement cases are frequent, there is an increasing number of cases recognizing foreign companies' trademark rights. A representative case is last year’s ruling by the Chinese High Court ordering Company A to stop selling similar products that imitated Chanel perfume packaging and to pay 600,000 yuan (about 109 million won). The rectangular white box with black borders and "N˚5" written on the front was under scrutiny. Company A argued in court that "because the perfume is inexpensive, consumers would not be confused." However, the court ruled, "Price differences are not a criterion for determining confusion," and "confusion occurs before actual purchase, so such a defense is invalid."

Regarding this precedent, a representative from the Korea Intellectual Property Protection Agency advised, "Korean companies, especially cosmetics companies, should thoroughly manage intellectual property rights on packaging and decorations to use as evidence in disputes," and suggested, "They should differentiate their packaging design from typical designs of similar products to serve as a source-identifying element."

How is the level of intellectual property management in Korean companies? To understand the status of companies’ responses to trademark infringement, we met with patent attorney Lee Jong-gi. Lee, who worked at the Korean Intellectual Property Office until 2018, currently serves as the head of the Korean branch of Jungwa Patent Law Firm headquartered in Beijing, China. He said, "It is true that Korean companies have a relatively lax awareness of trademark rights." Recently, a fashion company B consulted him, saying, "A trademark broker in China preemptively registered our trademark." Company B is a rapidly growing company that has gained popularity mainly among the MZ generation. When the reporter asked, "Can I reveal which company B is in the article?" Lee pleaded, "Please do not disclose the company name. It would cut off my livelihood." He explained that companies feel burdened by criticism that they "cannot properly manage even a single trademark" if trademark dispute cases are publicly named.

Lee said, "Trademark brokers monitor brands listed on online shopping malls like Coupang and 11st and file imitation trademarks," advising, "If you plan to expand overseas, you need to file trademarks not only in Korea but also in China before exposing your brand to the public." He explained, "At least filing is necessary to assert rights later," adding, "Once you lose your trademark, you have to collect numerous pieces of evidence to respond or prove that the other party is a malicious trademark broker." This process wastes time and money and delays business entry, causing significant operational damage. Even if a trademark invalidation trial is conducted, if the trademark cannot be recovered, the company may have to give up entering China. Lee emphasized, "Trademark registration costs a few hundred thousand won, but disputes can escalate to tens of millions of won and cause huge damage to business," urging, "Trademark filing should be recognized as essential, like registering a child's birth."

This content was produced with the assistance of AI translation services.