Trademark, labelling, and advertising considerations for food businesses in Korea
Min Son of Hanol IP & Law provides a guide to the common pitfalls, legislation, and case law concerning the trademark protection, presentation, and promotion of food companies’ products in Korea
As consumer interest in healthcare grows, the number of trademark applications for foods and functional foods has also continued to increase. Trademarks for foods, including functional foods, which are directly related to the health and safety of consumers are subject to stricter examination standards than those for ordinary goods under South Korea’s Trademark Act. Furthermore, the labelling and advertising of foods using trademarks, packages, or containers thereof, etc. must also observe other administrative regulations, which have recently been revised.
Accordingly, in the brand naming of food trademarks, or the labelling and advertising of foods, it is wise to consider the following issues.
Food trademarks in violation of public order and morals
Trademarks that are likely to harm public health can be rejected or invalidated on the basis of “violations of public order or morals” under the Trademark Act.
For example, there is a heated controversy in Korea over the eligibility for registration of trademarks that use the word ‘drug’ (narcotics), particularly for foods such as drug gimbap (a roll) or drug tteokbokki (a spicy simmered rice cake).
The Korean Intellectual Property Office (KIPO) has refused to allow the registration of trademarks containing the word ‘drug’, as KIPO views that such trademarks will harm public order or morals.
However, in the case of the trademark ‘Drug Pillow’ for pillows, the IP High Court revoked the rejection decision rendered by the Intellectual Property Trial and Appeal Board. The IP High Court ruled that the ‘Drug Pillow’ trademark is merely an implicit mark with the meaning of “a pillow that is so comfortable that it is highly addictive, or a pillow that you want to use over and over again”, and therefore it does not constitute a violation of public order and morals (IP High Court Decision 2019heo4024).
Nonetheless, even after the above ruling, KIPO continues to refuse trademarks containing the word ‘drug’ for goods that have a direct impact on public health and safety (for example, foods and medicines), or goods where children could be the main users (for example, toys).
Food trademarks that deceive or mislead consumers as to the ingredients
Trademarks that may confuse or deceive consumers as to the ingredients of the goods are to be rejected. Even after registration, such marks can be invalidated at any time without applying the five-year statutory period of limitation for initiation of an invalidation trial.
For example, under the Trademark Act, in the case of a ‘Milk’ mark for drinks that do not contain milk, trademark registration would not be allowed, since this mark could cause confusion or be misleading as if such drinks were “drinks containing dairy ingredients” or, at least, “milk-flavoured drinks”.
In line with the above, the IP High Court ruled that the trademark for Fishcake Restaurant (Odeng Sikdang in Korean) for food delivery services providing sausage stew rather than fishcakes should be invalidated because this mark caused confusion as if the restaurant provides delivery services for fishcakes, and thus that it had been registered in violation of the deceptive mark provision under the Trademark Act (IP High Court Decision 2021heo4003).
Limitation in labelling and advertising of foods under other administrative regulations
As of January 1 2023, the Ministry of Food and Drug Safety revised the Act on Labelling and Advertising of Food to prohibit misleading labelling and advertising of foods using trademarks, packages, or containers thereof that may cause consumers to confuse the foods with non-food products. Violators of these rules may be subject to administrative measures, such as:
Recall and disposal;
Business suspension or fines; and
Manufacturing suspension orders.
The background for this revision lies in the fact that specific noise marketing has recently become popular in Korea. Namely, labelling trademarks of famous brands on products other than those for which the brands are known has attracted media and consumer attention.
Examples of such marketing include trademarks for ‘Seoul Milk’ for body wash, ‘Monami Magic’ for a sparkling drink, and ‘Horse’ for chocolate, which are well-known trademarks for milk, magic pens, and shoe polish, respectively. In these cases, not only the brand names but also the packages and containers of the goods are almost identical to those of the original goods, and thus these have received close attention from the media. Despite their success in marketing, concerns have been raised that public health and safety may be threatened because consumers, particularly children and the elderly, who are unfamiliar with foreign languages may mistake them for foods.
Under the above revision, labelling “milk” on foods and drinks that do not contain milk can violate this rule. To avoid such issues, it should be indicated as “milk-flavoured” or “milk-free” for goods without real dairy ingredients. Accordingly, in the field of plant-based alternative milk beverages, many beverage makers and beverage store chains have recently been considering changing labels and menus from “soy milk”, “oat milk”, or “peanut milk” to “soy drink”, “oat drink”, or “peanut drink” to avoid using the word ‘milk’.
The Fair Trade Commission has also recently revised the Examination Guidelines for Labelling and Advertising Relating to the Environment to regulate false, exaggerated, or deceptive indications when using common expressions in environment-related labels and advertisements for foods, such as “antibiotic-free” or “organic” (effective September 1 2023).
In addition, in 2023, the Seoul Metropolitan Government published and enacted the Ordinance on Improving Narcotic Product Name Usage Culture in consideration of public wariness towards drug abuse. It is expected that the ordinance will provide a basis for issuing recommendations for corrective actions on the use of product names containing the word ‘drug’ or ‘narcotics’ in the future. Other local governments are also proposing similar ordinances that are being reviewed by the relevant committees.
In Korea, the labelling and advertising of foods using trademarks, packages, or containers thereof, etc. may be regulated and restricted by the various administrative regulations above, as well as relevant provisions of the Trademark Act. Thus, any food companies that wish to do business in Korea should be familiar with the issues above when selecting marks, labelling, and advertising.