[비즈한국] The trademark invalidation trial for 'Griptok,' which began a year ago, concluded recently with the defeat of the trademark holder. The patent judges at the Korean Intellectual Property Office (KIPO) determined that 'Griptok' has become a generic term used for smartphone stands, smartphone grips, and similar products. The case is not over yet, as the trademark holder could still file a lawsuit to cancel the decision at the Patent Court and subsequently appeal to the Supreme Court. The trademark holder may choose not to accept the Patent Trial and Appeal Board's decision that the Griptok trademark is invalid and continue to contest it in the Patent Court and the Supreme Court.
The trademark holder may choose not to accept the Patent Trial and Appeal Board's decision that the Griptok trademark is invalid and continue to contest it in the Patent Court and the Supreme Court.
This trial was handled as a fast-track case, which in principle should be processed within six months. Fast-track requests are permitted in cases involving warnings or legal notices. Nevertheless, after intense deliberation between the parties, it took about a year after the filing for a decision to be reached. The parties involved submitted extensive arguments and evidence, and it appears the judges faced a difficult dilemma, weighing the legitimate exercise of the trademark holder's rights against the interests of over 1,000 small business owners.
The Griptok case dates back to around October of last year. At that time, I also received many consultation calls from small business owners. They reported receiving trademark infringement warnings from the Griptok trademark holder, demanding settlement payments ranging from several million to tens of millions of won. Most of the people seeking advice were small business owners with low sales volume and revenue. I looked up the registered trademark and observed how the Griptok trademark was actually being used online, including on platforms like Naver. While it was true that the trademark was properly registered in 2019, it appeared highly likely to be invalidated. I have used the word 'Griptok' as a designated product when filing for trademarks myself, and KIPO had also been accepting the term 'Griptok' in patents and designs related to smartphone stands. Additionally, I have prior experience successfully invalidating the 'Jeotgal Sommelier' trademark. At the time, I expressed the opinion through various media outlets and columns that the Griptok trademark holder would be at a disadvantage, as I judged that the exercise of their trademark rights had come too late.
For the small business owners who sought consultation after receiving warnings from the Griptok trademark holder, I advised them to stop sales for the time being—given that a formal exercise of trademark rights had occurred—but not to pay any settlement money. Since there was a high possibility of the Griptok trademark being invalidated and their sales were not significant, there was little need to pay a settlement. However, the reason for stopping sales was that if the Griptok trademark were not invalidated and were instead recognized as a valid, registered right, continuing sales while knowing of the trademark infringement could potentially lead to charges of intentional infringement under criminal law. Sales could simply be resumed after the outcome of the invalidation trial was finalized.
According to media reports, over 1,000 small business owners received infringement warnings at that time. Two thoughts came to mind. First, if more than 1,000 small business owners were using the name 'Griptok' for smartphone stands, it could serve as evidence that the term had become a generic name, which would work against the trademark holder. Second, despite the Griptok trademark being registered in 2019, the fact that the holder did not enforce their rights until over 1,000 small businesses were using the term made me suspect they might have been planning a 'big picture' move to demand damages or settlements. This is similar to cases where patent trolls or Non-Practicing Entities (NPEs) emerge to assert patent rights and demand large settlements only after products utilizing that technology are actively selling in the market.
However, patents and trademarks are different. In the case of patents, the rights do not expire simply because many people use the patented technology. Therefore, in the case of patents, patent trolls or NPEs can indeed reap significant profits when many people in the market actively imitate the technology. In contrast, for trademarks, even if a trademark is legally registered, it can be invalidated and cease to exist if it subsequently becomes a term that many people use or perceive as a generic name for the product itself.
Consider the case of 'Choco Pie.' After Orion 271560 launched Choco Pie in 1976, it became very popular with high sales. Later, Haitai launched its own Choco Pie product in 1980, and Crown also began using the Choco Pie trademark in 1986. In 1997, Orion filed for a patent trial and a lawsuit in the Patent Court to invalidate Lotte's Choco Pie trademark registration, but the Patent Trial and Appeal Board and the Patent Court did not accept Orion's claims. They determined that 'Choco Pie' had become a generic term or a common trademark for Choco Pie-type products, thereby losing its distinctiveness as a brand to identify the goods of a specific entity.
Ultimately, it comes down to timing. If the Griptok trademark holder had consistently and properly exercised their trademark rights before over 1,000 small business owners began using the term, I believe an invalidation ruling like this might not have occurred. The primary criteria for determining whether a trademark has become a generic or common term include whether it is generally used as such by consumers or those in the same industry, and whether the trademark holder has consistently exercised their rights to protect it. Therefore, one must be careful; if the proper exercise of trademark rights is delayed for too long, even a legally registered trademark can be invalidated and cease to exist as it becomes a generic or common term.