Korea Acknowledges Secondary Meaning for
YoungJoo Song and Somi Lim, KAI International IP Law Firm Korea (KAI IP) (Korea)
After years of trying, Samyang Foods finally won recognition for the acquisition of a secondary meaning for its mark “” (“Buldak Bokkeum Myeon” in English, which means “Fire Chicken Stir-Fried Noodles”).
The application in this case was for a descriptive mark consisting of the words “bul dak,” which means “fire chicken” in Korean and refers to a Korean dish made of deboned chicken cut into pieces and tossed with a very spicy seasoning of chili peppers and other flavors and baked in an oven, and “bokkeum myeon,” which means “stir-fried noodles” and refers to a dish made of vegetables and/or meat stir fried with noodles.
The mark was rejected at the examination stage for being a descriptive mark in relation to the designated goods “ramen” because the name of the mark “Buldak Bokkeum Myeon” (“Fire Chicken Stir-Fried Noodles”) indicates the nature of the designated goods.
Summary of Decision
The Korean Intellectual Property Trial and Appeal Board (IPTAB) acknowledged the following points:
• A product with this trademark was launched on April 4, 2012. Since then, it has been used in Korea for about 10 years.
• Since its launch, sales of products with this trademark had cumulatively reached KRW 2.519 trillion and about 3,661.3 million units have been sold. The product ranks fourth in instant noodle sales in Korea.
• Products with this trademark have been promoted in various media, including broadcast media (TV, radio), print media (newspapers, magazines), online/mobile (including YouTube) and outdoor media (billboards, posters).
• Products with this trademark are listed in online encyclopedias such as Naver.
• Products with this trademark have won various awards for domestic brands.
In light of these facts, IBTAB recognized that the trademark had acquired secondary meaning through its use for the designated goods “ramen” and therefore did not fall under Article 33(1)(3) and (7) of the Trademark Act, which says that trademark registration cannot be granted to marks that indicate the nature of a designated goods, nor to marks that prevent consumers from identifying which goods related to whose business are indicated. (Case No. 2022one702, Decision rendered on April 26, 2023)
The acquisition of secondary meaning is very hard to achieve in Korea, so this case is a significant win for the trademark rights holder in particular and the food industry as a whole. It means that the rights holder can protect his mark both in Korea, where the mark is already popular, and worldwide.
The main issues in this case were whether secondary meaning could be recognized for this mark, a descriptive mark, and the criteria for recognition of secondary meaning. The criteria for determining whether secondary meaning has been acquired varies for each goods. The decision in this case was rendered based on the fame of the mark, the fact that the mark had been in use for more than 10 years, as well as the high sales volume and large number of advertising materials submitted as evidence of the product’s use. Therefore, the decision cannot be uniformly applied to other goods.
Also, the mark is stylized to some extent, and Samyang Foods submitted evidence that the mark on the actual products was the same as the mark in the application. However, they also pointed out that the degree of stylization did not overwhelm the distinctiveness of the mark as a whole. Therefore, it remains to be seen whether secondary meaning could be recognized for a mark consisting only of letters and without any stylization.