People keep pestering me about Starbuck’s trademark problems in Korea. I cannot tell you how many times people who know me and role as a blogger have said “What’s going on in that Starbucks thingy?” The problem on commenting is twofold. One, my interest in the facts, let alone forming an opinion, is basically nil. Second, this really is about as close to straight-up trademark case you can get, it is what it is. However I thought the announced decision last week by the Korean Supreme Court against Starbuck’s appeal against Elfreya (dba Starpreya Coffee) coupled with announcement by Starbuck’s CEO in Hong Kong last month to vigorously protect its trademarks in Korea has prodded me into posting this.
As I mentioned this is partly a pretty straight up case, these are the marks in question:
The first thing to mention is that Korean trademark law has a strong tradition of disregarding just about anything that could be considered a generic design element. In other words, no company can have exclusive right to use a generic design or word element, or such which would be indicative for the type of goods involved. For example, it would be irrational to use Starbuck’s above mark to claim a right to use any circle or medallion shaped logo, likewise the right to COFFEE since STARBUCKS COFFEE is the mark on file. So lets break up some of the easier design elements:
1. Circle Logo, as stated
2. The word Coffee, as stated
3. Concentric Circles in a logo (ie the black center circle on the green back circle)
4. Words concentrically printed a logo
5. Stars to separate words. Stars generically indicate quality
6. Use of the word STAR
7. In general, use of a woman as a logo
Now if you can excuse my crude skills, here is a look of both with some of these common elements taken away:
In essence, these are the two marks that the Korean Intellectual Property Office, the Patent Court, and the Korean Supreme Court have been asked to rule on similarity.
As we can see here the distinctive parts are the words and the woman logo, neither of which are very similar. Further Starpreya can point out its font is different (technical speaking) adding to the difference. Finally, and most obvious, “Preya” is different in spelling, pronunciation, and meaning from “Bucks”
Now we could go a little further and mention the colors, however at this point we may be getting into non-generic parts of the mark. Worldwide there is some discussion on the protection of color and color use, Korea is not alone in their confusion and inability to legally define such. On such an issue we can construct an argument such as:
“Starbuck’s logo is unique since it has five concentric circles, a center of black, a thin white one, a broad green one, another thin white one, and a thin green one.”
As you can tell such an argument sounds very complex, however they are not too persuasive in Korea. Mainly since to accept such an argument you would have to agree these two are similar:
Now I know the above suffers from my poor drawing skills, and a bit of hyperbole, but I wanted to make a point. No matter how you describe these design elements as basic set of concentric colored circles, much is left to interpretation. The broader the possible interpretation, the more unlikely such would be protected by the registered mark.
So what about the “Starbuck Circles” being specifically protected? Well if they were filed as an individual design element, I would bet the farm they would be rejected by the Korean Intellectual Property Office for being too generic. And that is the rule of thumb in these cases. If the were registered? You still would have the debate above on what exactly is protected in implementation, for example would a change as simple as lighter shade of green make a different mark?
My main point here is the only thing that Starbucks can claim as “unique” which is shared by the Starpreya mark is so debateable in general, let alone when considering Korean law, that they would be unlikely to win the case (and doubly so when the Korean Supreme Court is loath to overturn KIPO rulings, in my experience). And as a final point, because of these issues I find it difficult to believe that the court is biased in favor of the Korean respondent (even more so when you consider that Starbucks Korea is part owned and operated by Shinseagae, one of the larger chaebol’s out there).
Update: The comments section reminded me of a good question, howe does US law stand on this. While I feel I am less qualified to comment on US law (ironically), I thought I would add what I know. There are a number of individual differences between this and a hypothetical US case, let me discuss a few of the differences:
1. Registrations
For reasons that I hope will are clear below, the US would likely not have this problem. Due to the broader protections afforded marks, the Starprey logo would not have been registered in the first place I think. However for the sake of discussion lets assume that both marks were registered, and in a similar timeframe.
2. Language
The US does not really have a widely understood language or script, unlike the US. However you can add foreign script and its meaning in a USPTO filing. However such protection is usually narrowly defined in the use of printed marks. In figurative marks, as in this case, one script would be considered to have the same impression for the other, regardless of actual meaning. For example if both had Korean script, the overall meaning would be incidental since the scripts would not be considered as understood by the average US public. Therefore “Korean script” in general becomes a design element, and the are would be similar no matter the ultimate meaning.
However in constructing a similar US case, I am throwing this out. It is highly unlikely that Korean script would be used on the marks in the first place.
3. Fame
Perhaps the biggest difference is the general fame in the US for the Starbucks name and mark versus others. This dramatical tips US law into Starbuck’s favor, not to mention makes it easier to show bad-faith by Prowstar. Meanwhile, while Korean law is statutorily similar, in fact few marks in Korea are considered “famous” and accorded broader interpretation. The bar is excessively high in Korea to the chagrin of quite a few.
4. Interpretation of the Mark
US law places a greater emphasis on the overall impression of the mark, rather than individual design elements. This would again give more support to Starbuck’s position. To put more words to this, under US law a collection of generic items in a specific way can create a unique trademark. Technically Korean law works the same way, however in implementation the bar is much higher.
4. Law governing infringement
I think the most relevant thing to bring up is the recent Trademark Dilution Act of 2006. This act would afford Starbucks greater protection against infringement causing dilution or tarnishing the famous brand. Further it substantially lowers the bar from where it was previously, it makes it illegal to use a mark that would simply “likely” cause confusion. However this is a very new law and really has yet to be tested in the courts, accordingly this case would likely be among the first if this case was suddenly transported.
It should be stated that Korea has similar avenues via anti-competition law, however the crux here is not the companies conduct but the existence of the registered mark as the Korean Intellectual Property Office (a different dispute).
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Just change the name and the logo and problem solved. Why is it so difficult? And another thing, not just shameless but why they have to go through all the trouble in keeping the copied logo and name when it is easier to create their own logo?
The two logos are very different; and, I think, most consumers of average intelligence could tell the difference.
Kudos on doing a very good job on explaining a complicated issue of law.
How does US law deal with this problem? The analytical approach that you describe would reduce many similar designs to dissimilarity — or to a similarity that the law ignores (such as the use of a common alphabet). The overall design of the Starpreya logo is clearly intended to mimic the Starbucks logo and mislead customers only vaguely familiar with the Starbucks logo. Would Korean law not recognize this if the shoe were on the other foot?
Jeffery Hodges
* * *
Have you ever thought of taking this excellent presentation (possibly as a power point one) and touring South Korea presenting this talk at coffee houses?
US law deals with likelihood of confusion or actual confusion caused, along with a few other factors (such as the strength and distinctiveness of the mark, the similarity between the products offered, etc…). I’m pretty sure that the sort of analytical approach the Korean court appears to be engaging in is particularly disfavored in US courts, since such side-by-side comparison tends to ignore the larger picture.
Needless to say, a US court would probably reach the opposite result in this case, especially if Starbucks could show that people were actually confusing their mark with their imitator’s mark. I don’t really think Starbucks has to worry much about Starpreya expanding into the USA.
I find it laughable, and, if anything, the Prowstar and Starpreya chains pay tribute to the said coffee giant. I have no sympathy or loyalty to Starbucks. I lost all respect for them when I found empty cups of coffee littering the inside of the Forbidden City in Beijing. Yes….not so forbidden.
Could we continue this discussion and examine other examples? Such as the upside down McDonalds’ M in China?
Interesting that in a similar case in China last year the court ruled in favor of Starbucks:
http://www.china.org.cn/englis.....153945.htm
It did involve the use of the name “Starbucks” in Chinese, but the court still said “Shanghai Xingbake Coffee Co Ltd constituted illegitimate competition by using…a similar design motif for its coffee houses.” Also noteworthy is: “Lu (the chief justice) reminded companies intending to take advantage of famous copyrights that all market players should observe business ethics.” I think this point is lost on the Korean court.
China of course rips off everybody: there are “Sammeng” and “Samesong” products on their market, and I wonder how the Korean court’s line of reasoning would apply in those cases (actually I don’t wonder, it would follow the usual hypocrisy in application of law and standards in Korea).
I dislike trademark law altogether, and I’d like to see a world in which people are shamelessly copying the most popular fad of the moment with joyous abandon.
Therefore, I support this decision and I hope other countries follow suit.
Damn, I love this blog! Got my brain cells working even better than a double expresso. (Personally, I favor the Cuban kind, 7 cents each on Calle Ocho in old days. Went down really well with a sandwich medianoche, followed by a 35 cent cazador. Great breakfast!)
A deep bow of respect, brother Brendon.
Thanks for touring me into the Rodney Dangerfeild of Marmot’s Hole.
I’d like to announce my new Korea-based electronic company (w/manufacturing in China, of course): Samsang. My logo will be this cool slanted blue oval with the name “Samsang” in the center, but it will slant in the opposite direction of the “Samsung” logo, so no problem.
Remember Dram Man; in blogging it is the message, not the messenger. Just be happy that someone is digging your work.
You two are missing the point. In these theoretical “Samsung” cases the proposed marks are very similar in apperance and pronunciation to the original registered mark. Further, it should be mentioned that the Samsung “oval” does not give it a right to any oval, just the specific implementation (in this case likely something like “a narrow slanted oval with the first and last letters of the names placed on the edges”).
Again, you can easily see some major problems with Starbucks’s claims even without raising the ugly head of economic nationalism.
This case is much more clear sicne the Xingbake was a combination of a Chinese word for “Star” combined with a simular sounding “bake”. Korean law would make a simular ruling (eg “Byeol-Puck”).
Why not just use “Samsung”. Since it’s just “three” “stars” – and a rip-off itself of a Japanese brand – both perfectly generic words, it can’t be protected under the “analytic approach” deployed by the Korean court.
Dram Man has provided an excellent explication of this methodology in practice, which is, as he says, the predominant approach of the Korean courts.
The problem with it, like so much of what passes for legal reasoning in Korea, is that it – quite willfully — misses the forest for the trees.
As Jeffery surmises and Zonath correctly points out, the elephant in the living room is whether there is a likelihood of confusion or actual confusion caused by the subsequently registered mark, along with a few other factors (such as the strength and distinctiveness of the mark, the similarity between the products offered, etc…).
I’ll bet dollars to dimes that if you launch your Samsang brand, the Korean court will suddenly see the elephant.
Richardson, there is already a maker of electronic devices named Samsang with a blue oval for a logo.
But if you go ahead with your idea, you can set up your electronic company next door to one of the hundreds of Hyundai Super found around Korea.
I have a question related to the topic. Prowster set up its logo in 1996 when it opened up, 3 years before Starbucks came to Korea and 3 years before Starpreya opened. Legally speaking, does Starbucks lose any legal ground against Prowstar if it waited several years to defend its copyright? Is it possible that Starbucks would have a stronger case against Starpreya than Prowstar, even though both of the Korean companies have logos that are obviously intended to mimic the Starbucks logo?
Esteemed Dram-man,
My humblest apologies! Please accept my lowest, Mecca facing, bow. You are the man!
Dram, I don’t understand your defense of the Korean court decision at all. The Chinese “Samesong” company is very similar to Samsung exactly as “Starpreya” is to Starbucks, and the intention is the same: to take advantage of a famous copyright. I’d even argue against the Korean court that in a country that does not primarily use the Roman alphabet people can in fact be confused by similar names and logos for similar products.
Also, the Chinese Samsung ripoffs are real, not theoretical: http://english.chosun.com/w21d.....50004.html
Actually, corporate Korea is having its own problem with being copied, and then some by the Chinese (the scourge of the earth):
As we say in America, “what goes around, comes around” and I hope this applies in educating the public and legal establishment about IP law and piracy.
Yes, because – true to form – Korea has a very eccentric interpretation of the “famous brand” exception to the first to file rule, i.e., it has to be famous in Korea, i.e., well-known among rice paddy farmers deep in the Jeolla mountains.
There was indeed an undercover investigative TV show last week showing businesses on furniture row in Itaewon selling counterfeit Italian furniture manufactured in China.
The real travesty of these counterfeits, though, is that someone would copy something so gaudy.
and then there was
“StarBongs”…
This is exactly what I have experienced. I filed in Korea for a trademark on a certain phrase or slogan that was unique to my business. Six months later it was rejected as being “too generic”. I had been using this specific and unique phrase for more than a few years as well so just how would one protect their business and image — an image and slogan that is has been developed through marketing in Korea — under such nebulous patent laws in Korea?
I would have no problem applying for and receiving a trademark in the U.S. and in Europe but such foreign trademarking seems to be almost meaningless in Korea. The only advantage I have is that the particular phrase in question is already closely associated with me, thus for someone else to use it would mark them as a knock-off and inferior imitator.
Thanks for the analsysis, Dram Man. In your opinion, would Starbutts be safe? Here’s a link (keeping it simple to avoid the wrath of the Button Nazi):
http://anxiousdog.blogs.com/ph.....butts.html
The “Star” part is generic, but “butts” is awfully close to “bucks.” Would the fact that one serves coffee and the other quim have any bearing?
Eye4> Sorry the HTML Elf had to correct that link.
Eglin>Without knowing the specifics of your case, its hard to know. However if it’s been a few years, you may want to collect your business history, including use and sales figures, and reapply for the mark with such evidence proving fame in Korea. Worth a shot if your that serious about it.
Wedge> Sorry never heard of it. For a proper evaluation I think you will have to take me there and subsidze my sampling of the services so I can fully appreciate the scope of the problem.
Well my first thought to that is Prowstar has no reason to go after Starbucks and vice versa for some of hte same reasons above, in addition for text orientation (single sweep clockwise), colors (green, black, white, yellow), and center logo (fish).
And that leads obviously to the statement that Starbucks has a much better case against Starpreya. It is also worth mentioning here that Starpreya’s marks were registered well after Starbuck’s, possibly indicating bad faith. However as I mentioned, many of the design elements that are simular are too general.
That all said, I think the big thing as indicated in quite a few places here, is the fame of Starbuck’s marks. Sufficient fame proven could sway the case. However such is difficult to achieve, even in the US. Starbucks is currently fighting quite a few cases in the US that are similar, and have no clear resolution either.
Finally, too many of you are pretty liberal in alleging bad faith on the part of Prowstar, yet you have nothing to back it up with than the logo. You need more to back up a charge like that.
LOL… Somehow, it seems like a shop of that name would be more appropriately-situated in Amsterdam.
Dram, I really don’t get your posts sometimes. You said “My main point here is the only thing that Starbucks can claim as “unique” which is shared by the Starpreya mark is so debateable in general, let alone when considering Korean law, that they would be unlikely to win the case,” and then later:
“It is also worth mentioning here that Starprey’s marks were registered well after Starbuck’s, possibly indicating bad faith.” If it’s possibly bad faith, isn’t that precisely because the two logos are so similar? It sounds like Starbucks indeed has a good case, only the Korean court interprets copyright so vaguely that Starpreya gets off easy.
As might be said of Sambo, or Trigem.
‘It is also worth mentioning here that Starprey’s marks were registered well after Starbuck’s, possibly indicating bad faith.” If it’s possibly bad faith, isn’t that precisely because the two logos are so similar? It sounds like Starbucks indeed has a good case, only the Korean court interprets copyright so vaguely that Starpreya gets off easy.’ je-ne-se-qua-is-soap
This topic for you represents yet another opportunity to take a shit on the Korean people. Korean law is Korean law. if Starbucks don’t like it, it can exit Korea. It’s that simple. The logos are clearly different. Even a retard can see this. Please remove those glasses forged in the fire of your deep hatred for Koreans. Then you will see it too.
BTW, Starbucks is never going to leave Korea; it makes too much money. A bit of trivia for you guys: perhaps it’s changed because I heard this a couple years ago but Korea has the largest Starbucks in the world. Ain’t that interesting?
btw, frenchy, why don’t you and your brothers form a civil rights movement with you as its leader? I could just see you guys singing ‘kumbaya’. lol!
One last thing, I’m proud to be American. Are you proud to be French?
I do not mean sound too much like a weasely lawyer (because I am not), but I used “possibly” only to point out the possibly of such an argument from Starbuck’s side and I was asked how the timing of such registrations could effect the arguments. It alone is a pretty weak argument, let alone a smoking gun.
A futher bit of trivia on that. The store in question was in Myeongdong. I say was because the owner of the building jacked up the rent as soon as he could and Starbucks left to other points (I think a Pasttuci or something like that is int here now). As I recall “the largest” crown went to Taiwan, but I could very well be wrong.
I can dress up a pig in red, white, and blue bunting, and even teach it to grunt out the “Star Spangled Banner”.
But that does not make the pig an American.
Yeah, but he’s still a pig. Gooseshit is pond scum — at best.
Who’s the Frenchy?
That’s okay, that’s Korea’s problem.
nuljimaripkan, under the alias of pawikirogi, said:
Now that’s news, guys… Who wouldathunk?
‘i’m american! i’m american!’ exclaimed pawi
i put that shit in there because i know you so well. that kind of shit eats you up inside, don’t it?
‘the koreans need to accept that non koreans are part of their society and they need to accept people like hines ward.’ the entire babble brigade, korea branch
‘you’re no an american, pawi.’ babble brigade, korea branch
btw, doggie, what makes a real american? since you talk so often about minorities ie ‘bring troop homes to fight the real terrorists in new orleans’ or ‘i’m tired of kyopos pissing in my country!’, i’m sure being a real american got a lot to do with skin color, don’t it?
‘hines ward! korean racism! hines ward! korean racism!’ exclaimed the nasty expat
‘if you took away the coasts of america, america would have a low crime rate.’ richardson
‘why are korean women whores?’ dogbert
‘koreans never follow the law.’ lawyer
if you took away the statistics for blacks and latinos, america wold have a low crime rate.
why are black women whores?
blacks never follow the law.
I do not believe Dogbertt has said that. If he really has, he should apologise. My wife is not a whore, nor is the overwhelming majority of Korean women…
Pawi,
can you show us any proof of Dogbertt making that heinous statement.
Holy Crappacino!
This topic (Starpreya vs Starbucks) came up in the Marmot’s Hole like around 6 months ago. I seem to remember pontificating about the philosophical subtleties of determining whether a business logo(simultaneously similar and different) is indeed a rip-off of the other. I discussed the matter in terms of comparing specific design elements, which no one else had bothered thinking of doing.
And what do I see here but Dram-Man doing the exact same thing, thus stealing my intellectual property, in a post about Corporate Korea ripping-off Corporate America, no less?
Oh, the irony!
Can you prove it?
Richardson from United States your flag
Posted January 17, 2007 at 4:39 am | Permalink
Can you prove it?
http://www.rjkoehler.com/2006/.....ment-51685
Whadda want? A cookie?
As I recall that debate was more about the need for trademarks in general, not about the merits of that specific case.
‘i don’t beleive dogbert wrote those things…’
oh yes he did. he’s written such things twice in the past few months. i’d also tell you he’s informed me that my mother is a whore.
‘can you prove it?’
well, yes, i can but i won’t since that would require me to sift through hundreds of posts. i’m not willing to do that. why not ask dogbert directly if he’s written such things on this board? i’m sure he won’t answer you but if he does, he’ll tell you i misunderstood his sentence.
somewhat related to copycatting issues, i was wondering if LG has a case against apple’s iPhone like this article claims it does.
“je-ne-se-qua-is-soap” LOL, nice try, baise mon cul. Je suis Americain.
Pawi, Mr. Cartoon Kyopo, I write stuff here when I’m bored at work (sorry Marmot) but I’m not so bored as to engage you, except when you went on ignorantly about Israel. Have a nice day.
Don’t sweat it, “fantasy”. The truth is nulji called my wife a whore and now (surprise) is trying to play the aggrieved victim. Nothing unexpected and nothing none of us haven’t seen before, time and again.
That all hinges on what, if any, patents LG would allege Apple infringed in the iphone. If the only copying is in the design of the phone, I don’t think LG would have much of a case, even if they did have a patent in that. After all, PDAs have been using pretty much the same type of design for years — it’s quite literally nothing new.
Fantasy, Nulji (pawikirogi) is well known for making up quotes of things that people never wrote. He is one of those archetypal Kyopo that seem determined to reinforce stereotypes (jealous of white men dating Korean women, blindly nationalistic for Korea, but not the country they live in, saying they are proud to be American as if it is a weapon, ect).
Dogbertt, Matt,
yes, I certainly believe you. If Pawi had had proof of your saying that, he would have bookmarked the thread and kept the link as a valuable treasure, so as to be able to present it when convenient.
I do, however, also want to show to the Gyopos (
oops, someone will regard my using the term as offensive, as it can only be used legitimately by ethnic Koreans, or so I have been told in another thread of this blog) that we do not tolerate ethnic slurs on either side, if indeed any such slurs have been uttered.Dogbertt wrote:
No, but if you could do such and teach it to sniff people for exploding liquids, I would say you have a potential addition to homeland security there.
Maybe the people of India have learned something from the South Korean court case. That they can get away with it, too.
Star-strucks. Coffee.
http://biz.yahoo.com/rb/070304......html?.v=3
Could be worse:
http://www.engrish.com/recent_.....2008-05-06
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