In a landmark decision for brand protection on November 16 2023, the Supreme Court of Korea recently invalidated the trademark “LEGOCHEMPHARMA” registered by a pharmaceutical company (the Supreme Court Case No. 2020Hu11943). This case marks the first time the Court has applied the dilution provision of the Korean Trademark Act to strike down a trademark, without evidence of consumer confusion. The ruling sets a powerful precedent for protecting well-known brands from unauthorized use across different industries.

The case was brought by LEGO Juris A/S, the world-famous toy manufacturer, against LegoChem Biosciences, a pharmaceutical company specializing in oncology and antibiotics. LegoChem had registered “LEGOCHEMPHARMA” in Class 5 for pharmaceutical goods in 2018. LEGO argued that including its globally recognized mark “LEGO” within the trademark “LEGOCHEMPHARMA” diluted its exclusive brand identity, even though the two companies operate in completely different fields.

In its analysis, the Supreme Court confirmed that the word “LEGO” is widely recognized as indicating LEGO products. The Court concluded that within the composite mark “LEGOCHEMPHARMA,” “LEGO” served as the distinctive core, while the elements “CHEM” and “PHARMA” were merely descriptive in the pharmaceutical context. The Court determined that the use of “LEGO” was sufficient to create an association with the famous mark, regardless of any intent to deceive or confuse consumers.

The most notable aspect of the ruling is its reliance on Article 34(1)(xi) of the Trademark Act. This provision prohibits the registration of a mark if it could damage the distinctiveness or reputation of a well-known mark, even in the absence of a likelihood of confusion. By applying this provision, the Court emphasized that a famous brand’s strength and integrity must be preserved, reinforcing that its identity cannot be diluted by others, regardless of industry. The Court dismissed LegoChem’s appeal, confirming the lower court’s invalidation of the trademark.

This decision significantly broadens the scope of protection for well-known marks in Korea. For brand owners, it highlights the risks of adopting names that incorporate or allude to famous trademarks, even as part of longer, composite marks. Going forward, this case is expected to influence both trademark filing strategies and enforcement approaches in Korea, underscoring that world-renowned marks like LEGO cannot be appropriated directly or indirectly in any field of commerce.