'Ongoing "Deopjuk Controversy" for 2 Years... Insights from a Trademark Expert [Intellectual Property is Competitiveness]'

⑥'Deopjuk' Featured on Popular Broadcast... Controversy Over Trademark Rights
Trademark Application for 'Deopjuk' Filed the Day After Broadcast... Business Owner Claims Menu Theft
No One Holds Trademark Rights Related to 'Deopjuk'
Patent Attorney Choi Seong-woo: "Registering the Business Name as a Trademark Is Advisable"
Asia Economy-Seoul National University of Science and Technology Joint Project

Pohang Deopjuk introduced through SBS's 'Baek Jong-won's Alley Restaurant.' Screenshot from the broadcast.

[Asia Economy Reporter Kim Bo-kyung] The controversy surrounding the Deopjuk trademark is quite well-known in the restaurant self-employment sector.

The incident dates back two years. The restaurant run by Mr. Choi in Pohang, Gyeongbuk, which serves Deopjuk, was featured on SBS's "Baek Jong-won's Alley Restaurant" on July 15, 2020. Culinary researcher Baek Jong-won highly praised Mr. Choi's Deopjuk menu on the show, and Mr. Choi's restaurant gained fame. However, three months later, Mr. Choi reported that his Deopjuk menu was struggling due to 'copycats.' He appealed on social media, saying, "I have not opened any Deopjuk restaurants in other regions," and "Please do not take it away. Please."

Upon looking into the matter, it turned out that a franchise company, Company A, had filed a trademark for "Deopjuk Deopjuk" and was providing delivery services in areas like Gangnam, Seoul. In the company introduction, expressions such as "Deopjuk, a mega-hit menu from Alley Restaurant" and "Deopjuk you know from the broadcast" were used to emphasize the connection to the show.

It evoked the 'Deopjuk' featured on the TV program Alley Restaurant. Consumers who learned the truth through Mr. Choi's appeal harshly criticized Company A and even initiated a boycott. Eventually, Company A, branded as a plagiarist of the Deopjuk trademark, issued an apology and ceased the Deopjuk Deopjuk franchise business.

'Deopjuk Trademark Controversy' Timeline [Source=KIPRIS, Korean Intellectual Property Office]

Let's take a closer look at the Deopjuk trademark controversy. The first person to file a trademark application for "Deopjuk" with the Korean Intellectual Property Office was Mr. Lee, who applied the day after the broadcast, on July 16, 2020.

The patent examiner notified a refusal to register the trademark, citing concerns that since Mr. Choi's Deopjuk, developed in Pohang, became famous through the broadcast, Mr. Lee's use of the Deopjuk trademark could mislead consumers. Mr. Lee argued that the word "Deopjuk" existed before the Alley Restaurant broadcast, as seen in portal site searches, and that he did not imitate Mr. Choi's trademark. However, the examiner rejected Mr. Lee's trademark application, and Mr. Lee filed an appeal with the Patent Court, which is currently under review.

Mr. Choi, who appeared on Alley Restaurant, filed three trademark applications on August 4, 2020, for "Siso Deopjuk," "Somun Deopjuk," and "THE Sinchon’s Deopjuk." It seems that Mr. Choi himself considered "Deopjuk" to be a food name rather than a trademark, which is why he applied for trademarks like Siso Deopjuk and Somun Deopjuk. Usually, if no third-party objections are raised within two months after the application is announced, the trademark is registered. However, Mr. Lee filed an objection, and currently, no one has been able to register trademarks related to Deopjuk.

Mr. Choi has continued attempts to register various trademarks related to Deopjuk, such as filing for "Ome Deopjuk" on December 31, 2020, and "The Deopjuk" on September 28, 2021.

In fact, since Deopjuk refers to a dish of porridge topped with meat or vegetables, like pork Deopbap or eel Deopbap, it is difficult to register it as a trademark by itself. Words that directly suggest characteristics such as origin, quality, or raw materials of goods or services, like Joksam, Buldak, or Padak, cannot be registered as trademarks. Similarly, words like Deopbap or Deopjuk are not considered words that a specific person can exclusively use. Moreover, what became famous through the broadcast was the food called Deopjuk made with a unique recipe by the Pohang owner, not the owner's trademark.

Nevertheless, as mentioned earlier, Company A filed a trademark application for "Deopjuk Deopjuk" on September 4, 2020, advertised it, and was criticized for hijacking the trademark of the Alley Restaurant participant, leading to withdrawal of the application and business exit. Legally, there was little problem with the trademark application, but public sentiment was different.

Recently, awareness of intellectual property rights such as patents, trademarks, and copyrights has increased, but there are still many unnecessary disputes due to a lack of understanding of intellectual property rights.

In light of this case, patent attorney Choi Sung-woo of Patent Corporation Uin offers the following advice. First, patents, designs, and trademarks are granted on a first-to-file basis. This is called the "principle of first-to-file." Many small business owners misunderstand that registering a business alone is sufficient because they lack knowledge about trademarks and the like. However, "business name," "trademark," and "domain name" are different. A business name legally refers to the name of the business operator, while a trademark is a mark indicating the source of goods or services provided by the merchant.

If someone else registers a trademark identical to your business name in the same industry, you may find it difficult to advertise or operate a franchise business using your business name. Attorney Choi said, "It is advisable for business owners to register their business names as trademarks whenever possible," and added, "If you have not registered a trademark, you should seek expert advice to find ways to use your business name as a trademark."

Broadcast companies also need to establish a screening system in advance to ensure that the signs (business names) of stores appearing on programs or PPL products' trademarks are not preemptively registered. Regarding intellectual property rights, it is also good to use free expert consultations provided by the Korean Intellectual Property Office's Public Patent Attorney Consultation Center or internet portal sites.

There are 27 regional intellectual property centers operating nationwide that provide consultations for small business owners and entrepreneurs and also support some costs. In this era, knowledge is power and intellectual property is an asset, not ignorance. Just as much effort is put into developing recipes and advertising, it is also necessary to protect one's trademark rights well and avoid infringing on others' trademark rights.

◆ Patent attorney Choi Sung-woo of Patent Corporation Uin, who provided assistance, also serves as vice president of the Korea Trademark and Design Association, a mediator for the Industrial Property Dispute Mediation Committee, and a member of the Patent Office's Regulatory Reform Committee.