[비즈한국] Hyundai E&C000720 has failed to register the trademark "Apgujeong Hyundai," a name it has heavily promoted in the Apgujeong reconstruction market in Gangnam-gu, Seoul. This follows the Intellectual Property Office's decision to reject all 12 related trademark applications filed by the company. Although Hyundai E&C has secured construction rights for Apgujeong Zones 2, 3, and 5 by emphasizing the "Apgujeong Hyundai" heritage, the decision was based on the potential for confusion with existing "Hyundai" and "Hyundai Apartment" trademarks.
“Risk of Misleading Consumers Regarding Source”
According to BizHankook, the Intellectual Property Office issued a rejection decision on the 23rd regarding the 12 trademarks applied for by Hyundai E&C in connection with Apgujeong Hyundai Apartment. The reason for the rejection is that the applied-for trademarks are identical or similar to already registered trademarks, and the goods and services designated for use are also identical or similar. The Trademark and Design Examination Bureau of the Intellectual Property Office stated, "If these trademarks are used together, there is a risk that the general public or traders may be misled or confused regarding the source of the products."
Hyundai E&C began filing these trademark applications about a year ago. In February of last year, it filed for four types of trademarks: "Apgujeong Hyundai," "Apgujeong 現代 (Hanja)," "Apgujeong Hyundai Apartment," and "Apgujeong 現代 Apartment." These were filed across Class 35 (advertising and PR), Class 36 (real estate development), and Class 37 (housing construction). Hyundai E&C had requested a prioritized examination from the Korean Intellectual Property Office in the same month. Prior to this latest decision, the Intellectual Property Office notified Hyundai E&C once in April of last year regarding the grounds for rejection.
The existing registered trademarks served as the primary obstacle. The trademarks deemed identical or similar to Hyundai E&C's applications by the Intellectual Property Office include "Hyundai (現代)" and "Hyundai Apartment (現代 Apartment)." Currently, the rights for the "Hyundai (現代)" trademark in Class 37 (housing construction) are held by Hyundai E&C, Hyundai Corporation, HD Hyundai329180, HDC012630, and Hyundai Department Store069960. The "Hyundai Apartment" trademark in the same Class 37 is shared by Hyundai E&C and HDC, while the Class 36 rights (real estate development) are held by Hyundai E&C, HDC, and SK Hynix000660.
In South Korea, trademark rights are granted to those who register an application for specified goods. According to the Trademark Act, if a mark is identical or similar to a pre-registered trademark and the designated goods are also identical or similar, registration cannot be granted. However, if the mark and the designated goods are not entirely identical, registration may be granted with the consent of the existing trademark holder. In this examination, it appears that the similarity to existing trademarks could not be overcome.
Hyundai E&C argued that if the applied trademarks are viewed in their entirety, they are not similar to existing ones. They contended that "Apgujeong Hyundai" or "Apgujeong Hyundai Apartment," when viewed as a single, combined entity rather than broken down into components, do not resemble previous registrations. However, the Intellectual Property Office dismissed this claim, stating, "'Apgujeong' is a prominent geographical name and lacks distinctiveness, meaning it is highly likely that the term would be shortened to just 'Hyundai,' making the applicant's argument difficult to accept."
Highlighting Heritage During the Bidding Process for Zones 2, 3, and 5...
Hyundai E&C has actively utilized the name and symbolism of "Apgujeong Hyundai" in the Apgujeong reconstruction market. Apgujeong Hyundai Apartment is a flagship complex built by Hyundai E&C along the Han River in the 1970s and 80s, serving as a symbol of high-end housing in Gangnam. Leveraging this, Hyundai E&C secured the construction rights for Apgujeong Zone 2 in September of last year, followed by Zones 3 and 5 in May of this year. In Zones 2 and 3, they emphasized carrying on the value of "Apgujeong Hyundai," and in Zone 5, they even proposed the complex name "Apgujeong Hyundai Galleria."
The trademark applications were part of the same strategy. February of last year, when the applications were filed, was four months prior to the bidding for Apgujeong Zone 2, the first among the reconstruction zones to select a contractor. In subsequent press releases, Hyundai E&C stated they would "do their utmost to inherit the Apgujeong Hyundai identity" and would cooperate with large law firms to respond to trademark issues. They explained that they intended to prevent unauthorized use of the "Apgujeong Hyundai" name and explore ways for the resident associations to use the name once registered.
This rejection decision does not immediately mean that the use of the "Apgujeong Hyundai" name is prohibited. Hyundai E&C can file an appeal against the rejection decision within three months of receiving the notice. However, since the Intellectual Property Office identified "Hyundai" as the core, recognizable element of "Apgujeong Hyundai," Hyundai E&C has faced a hurdle in securing exclusive trademark rights for the name. As Hyundai E&C has used the "Apgujeong Hyundai" heritage as a key asset in its bidding battles, future appeal procedures and the resolution of relationships with existing trademark holders remain significant variables.