Supreme Court: "Bio Company LegoChem Pharma Registration Invalid... Renowned Trademark Lego's Distinctiveness Damaged"

LEGO, the globally renowned block toy company, has won a final victory in a trademark-related lawsuit against a domestic pharmaceutical company.

The Supreme Court ruled the trademark registration of 'LEGOCHEMPHARMA,' which includes the word 'LEGO,' invalid, marking the first case where a trademark registration was nullified due to concerns that it could damage the distinctiveness of a well-known trademark.

According to the legal community on the 8th, the Supreme Court's Second Division (Presiding Justice Lee Dong-won) upheld the lower court's ruling in favor of the plaintiff, LEGO Juris A/S (hereinafter LEGO), a Danish toy company, in the trademark invalidation lawsuit against the domestic company, LEGOCHEM Bioscience Co., Ltd. (hereinafter LEGOCHEMBIO).

The court stated, "There is no error in the lower court's judgment that the registered trademark in question is overall similar to the well-known prior trademarks (LEGO and Lego) and that there is a concern it could damage the distinctiveness of the prior trademarks," thus dismissing the appeal.

LEGOCHEMBIO, a KOSDAQ-listed company, filed an application for the registered trademark 'LEGOCHEMPHARMA' in November 2015.

The registration was initially rejected due to an opposition filed by LEGO, which had registered the 'LEGO' trademark domestically in January 1980, but the Patent Trial and Appeal Board accepted the appeal, and the trademark was registered in September 2018.

LEGO filed a lawsuit with the Patent Court in March 2020, seeking to invalidate LEGOCHEMPHARMA's trademark registration.

In the trial, LEGOCHEMBIO argued that the registered trademark, which includes 'LEGOCHEM' as an abbreviation of 'Lego chemistry,' was applied for to represent the characteristics of new drug research and development.

However, the Patent Court ruled in favor of LEGO, stating that the trademark could not be registered under the Trademark Act because it might damage the distinctiveness of the globally well-known trademark 'LEGO.'

The court explained, "It is highly likely that LEGOCHEMBIO intended to evoke association with prior trademarks such as 'LEGO' or 'Lego' when applying for the trademark in question, and there is a high possibility that actual associative effects will occur between the registered trademark 'LEGOCHEMPHARMA' and the prior trademarks."

LEGOCHEMBIO appealed, but the Supreme Court's judgment was the same.

The Supreme Court first noted that the parts 'CHEM' and 'PHARMA' in the name 'LEGOCHEMPHARMA' merely indicate the fields of chemistry and pharmacy and lack distinctiveness, so the important part capable of independently functioning as a source indicator is the 'LEGO' portion.

Therefore, the similarity with the previously registered trademarks 'LEGO' or 'Lego' should be assessed by comparing that part.

The court stated, "The important part of the registered trademark in question is identical in appearance and pronunciation to the prior trademark 'LEGO' and identical in pronunciation to 'Lego.' The prior trademarks have high recognition and strong distinctiveness, and it is difficult to see that the defendant necessarily needed to use the abbreviation 'LEGOCHEMPHARMA' to represent the characteristics of its new drug research and development."

The court added, "It is highly likely that the defendant intended to evoke association with the prior trademarks when applying for the registered trademark in question. The 'LEGO' part impresses, reminds, or associates consumers with the registered trademark, making it highly probable that associative effects will occur between the registered trademark and the prior trademarks."

Furthermore, "Considering all these circumstances, it is reasonable to conclude that if the registered trademark is used on the designated goods, it may damage the distinctiveness of the well-known prior trademarks, i.e., their function of indicating a single source."

A Supreme Court official said, "This is the first case where a registered trademark was deemed invalid under the Trademark Act because it was considered a trademark that could damage the distinctiveness of another party's well-known trademark."

LEGO, known as an 'invention that changed the world' or a 'timeless design,' produces approximately 3.6 billion blocks and about 400 million toy rubber tires annually worldwide. It is known that finished product boxes are sold globally at a rate of 7 per second, 420 per minute, and 25,000 per hour.

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