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KIPO Notifies Hyundai E&C of Grounds for Refusal of ‘Apgujeong Hyundai’ Trademark Application

[비즈한국] It has been confirmed that Hyundai E&C000720, which applied to trademark the name of the Apgujeong Hyundai Apartment complex in Gangnam-gu, Seoul, has recently been notified by the Korean Intellectual Property Office (KIPO) of grounds for refusing the trademark registration. The notification states that the applied-for trademarks and the designated goods are identical or similar to those already filed or registered. Hyundai E&C is expected to resolve these grounds for refusal by obtaining consent from existing trademark holders. Hyundai E&C stated, "The trademark registration has not been denied," adding, "We are preparing additional supporting documents and plan to proceed with the application process."

According to the KIPO, the Trademark and Design Examination Bureau notified Hyundai E&C on the 10th regarding its application for trademarks such as ‘Apgujeong Hyundai (압구정 現代)’ and ‘Apgujeong Hyundai Apartment (압구정 現代아파트)’. The refusal is based on the fact that the applied-for trademarks and designated goods are identical or similar to previously filed or registered ones. The KIPO has requested that Hyundai E&C submit an opinion (response/clarification) or an amendment regarding these grounds for refusal by this coming June.

On the 13th of last month, Hyundai E&C filed trademark applications for ‘Apgujeong Hyundai Apartment’, ‘Apgujeong Hyundai’, and mixed-script versions ‘Apgujeong 現代 Apartment’ and ‘Apgujeong 現代’. The designated goods include 10 items in Class 37 (housing construction, etc.), 10 items in Class 36 (real estate sales, etc.), and 10 items in Class 35 (advertising and promotion, etc.). Hyundai E&C had requested an accelerated examination on the 20th of last month. An accelerated examination is a system where applications are reviewed ahead of others when it is clear that the trademark is being used or preparations for its use are underway.

In South Korea, trademark rights are granted to those who apply for and register a trademark by specifying the goods to be used. Under the Trademark Act, if a trademark is identical or similar to one already registered by another party, and the designated goods are also identical or similar, the trademark cannot be registered. However, unless both the mark and the designated goods are identical, registration can be obtained with the consent of the prior trademark holder. If two or more identical or similar trademarks are filed for identical or similar goods, the first applicant receives the registration.

The obstacle to Hyundai E&C’s registration involves the pre-registered ‘Hyundai Apartment (現代아파트)’ and ‘Hyundai (現代)’ trademarks. Currently, the trademark rights for ‘Hyundai Apartment (現代아파트)’ in Class 36 (real estate sales, etc.) are held by Hyundai E&C, HDC012630, and SK Hynix000660, while those in Class 37 (housing construction, etc.) are jointly held by Hyundai E&C and HDC. Trademark rights for ‘Hyundai (現代)’ in Class 37 are held by Hyundai E&C, Hyundai Corporation011760, HD Hyundai Heavy Industries329180, HDC, and Hyundai Department Store. The KIPO determined that registration is not possible because ‘Hyundai’, the essential part of Hyundai E&C’s application, is identical to the essential part of these pre-registered trademarks.

The existence of prior applications, even if not yet registered, was also cited as a reason for refusal. An individual named Mr. Jeong filed applications in April last year for ‘Apgujeong The Hyundai’ and ‘Apgujeong Shin-Hyundai’ for use in Class 36 and Class 37. Hyundai Elevator also filed for the ‘Hyundai’ trademark in December last year for use in Class 36 services like financial brokerage. These applications were deemed identical or similar in mark and designated goods to the ‘Apgujeong Hyundai (現代)’ applied for by Hyundai E&C.

To resolve the grounds for refusal, Hyundai E&C must obtain consent for trademark registration from the joint holders of the prior registered trademarks. While many of the joint holders are not affiliates of Hyundai E&C (Hyundai Motor Group), it is rare for them to actively use the registered trademarks in these specific sectors, so the likelihood of them refusing Hyundai E&C’s registration seems low. As for the prior applications not yet registered, one must wait for the examination results, though it appears highly likely they will also be refused for the same reasons as Hyundai E&C’s application.

Gong Woo-sang, a patent attorney at Gong & Yoo Patent Law Firm, noted, "If there are no unexpected variables, the likelihood of Hyundai E&C's trademark registration being ultimately denied seems low. However, considering the time needed to obtain consent from existing joint rights holders and wait for the results of the prior applications, the effectiveness of the accelerated examination requested by Hyundai E&C may be diminished."

A Hyundai E&C representative stated, "(The trademark related to Apgujeong Hyundai Apartment) is currently under review and has not been refused," adding, "We have received a request from the KIPO to submit additional opinions, and we are organizing our response for submission and plan to proceed with the application process accordingly."