Company Using 'BTS' Imitation Trademark Faces Patent Trial Board Ruling: "Unfair Use and Registration Cancellation"

A trademark owner who used a counterfeit trademark reminiscent of BTS (Bangtan Sonyeondan) received a cancellation order for trademark registration by the Patent Tribunal. The trademark owner registered the trademark as "B.T.S Bitieseu (photo left)" but used the BTS trademark (photo right) on actual products, resulting in the cancellation of the trademark registration. Provided by the Patent Tribunal

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[Asia Economy (Daejeon) Reporter Jeong Il-woong] A trademark registration decision has been made against a trademark owner who promoted and sold their products using a counterfeit trademark reminiscent of the idol group BTS (Bangtan Sonyeondan).

The Patent Tribunal recently announced on the 2nd that it ruled to cancel the trademark rights in a cancellation trial filed by BTS's agency, Big Hit Entertainment Co., Ltd., against the registrant of the ‘B.T.S Bitieseu’ trademark.

According to the Patent Tribunal, the owner of the ‘B.T.S Bitieseu’ trademark has been confirmed to have displayed 'BTS' on some products exported to China since 2015 and used a modified version of their registered trademark (such as BTS) on their company website to advertise and sell cosmetic products.

In the cancellation trial, the trademark owner argued that BTS was merely an abbreviation of their independently developed brand ‘Back To Sixteen (Returning to sixteen-year-old skin)’ and that all products labeled ‘BTS’ were exported to China, with none sold to domestic consumers.

They also claimed that ‘BTS’ was only used as the English name of ‘Bangtan Sonyeondan’ in the music market and posed no risk of confusion among general consumers in the cosmetics field.

However, the Patent Tribunal did not accept these claims. Considering that ‘BTS’ is not only the name of a seven-member male idol group representing South Korea but is also widely recognized in music, singer performances, and advertising model industries, and that BTS actively participates as advertising models for various products such as clothing, cosmetics, mobile phones, and finance, releasing various collaborative products with these brands, the tribunal concluded that the trademark owner’s intentional use of the BTS trademark causes consumer misunderstanding and confusion.

Patent Tribunal Chief Judge Lee Jae-woo (Trial Division 11) stated, “The principle is to use a trademark as registered, and using a registered trademark in a fraudulent way by modifying it to ride on the popularity of a famous trademark can lead to cancellation of the trademark registration, so caution is necessary.”

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