South Korea: Frodo: Not Baggin This One

Last Updated: 23 August 2018
Article by Ilse Du Plessis

We don't often discuss Korean trade mark cases, but a recent registry decision is worth a look because it shines a spotlight on a particularly interesting aspect of trade mark law: character merchandising.

Kakao Corp is Korea's largest mobile service provider. One of its offerings is KakaoTalk, a mobile messaging service that's apparently used by some 154-million people around the globe. Part of the KakaoTalk service is Kakao Friends, which comprises eight characters that are used as emojis. One of the characters is Frodo, a cool-looking dog that wears shades, described as "an ambitious city dog from a wealthy family." Not only are these eight characters used as emojis, but they're also used on various products including cosmetics, clothing and foodstuffs. As a commercially astute company, Kakao Corp has applied to register the various characters as trade marks in Korea.

It's not clear whether Kakao Corp was surprised when its application to register Frodo was opposed, but the opponent was indeed the company behind the various movies that made the character Frodo Baggins so famous, The Lord of the Rings and The Hobbit. The opposition by the Saul Waentz Company was based on the argument that consumers encountering an emoji called Frodo – and indeed a cosmetic or clothing product bearing that name – would be confused.

But how exactly would they be confused? It's quite a convoluted argument, and it goes something like this: the name Frodo is synonymous with a fictional film character; it's quite common for film companies to license manufacturing and service companies to use names or images of famous characters on their goods or services (the licensed companies obviously see a benefit in this, believing that the presence of the character will boost sales). The public understands how this works. In this instance, there is no licence between the film company that owns the rights to the character Frodo and the company that's offering the mobile services and the associated products under the name Frodo, so the public is confused because it mistakenly believes that Kakao Corp has a licence from the film company.

When it comes to deciding whether confusion is likely to arise, a number of issues need to be taken into account. How well-known is the character? How unique is the name or appearance of the character? What associations are there with the character? Has the character been licensed to companies in the past? How likely is it that a character like this will be licensed for products? How likely is it that a character like this will be licensed for products of this nature (for examples of unlikely licensing arrangements, think Hannibal Lecter cuddly toys, or Harry Potter assault rifles!)? How likely is it that a character like this will be licensed in a country like this (it's not hard to imagine situations where religious or moral sensitivities might make licensing of certain characters inappropriate and unlikely)?

A few years back, there was an interesting character merchandising decision in the UK. The case involved a 1930s cartoon character called Betty Boop. The owners of the rights to this character had European trade mark registrations for both the name and image of the character, and they had licensed merchandise for many years. When they discovered that a third party was using the same image on merchandise, they sued for trade mark infringement.

The court showed a clear understanding of character merchandising. It said that, as a result of the significant legitimate use that had been made of the character, the name and image would have a trade mark significance for most people. The court rejected the defendant's claim that its use of the image was purely decorative (sometimes called "non- trade mark usage"), a claim that was absurd bearing in mind that its products were sold with swing tags featuring the words "officially licensed". The court further rejected the defendant's claim that its use was in accordance with honest practices, as well as a freedom of speech defence, saying that this "speech" was purely commercial. This quote from the judgment is key:

"I have rejected the idea that all an average consumer today would see, when looking at the T-shirt, would be a 1930s cartoon character. They will see a character with modern currency. This association certainly takes advantage of the claimants' investment in Betty Boop because many consumers will be moved to buy the T-shirt as a result of the favourable associations conjured up in their mind by Betty Boop, which associations are the creation of the claimants' extensive work."

In the Korean case, the trade mark authorities came to the conclusion that consumer confusion was unlikely. They decided that, even if the name Frodo is associated with a movie character, there was no evidence that consumers associate that character with any products. In other words, the fact that there was no evidence that Korean consumers have been exposed to Frodo character merchandising counted against the film company. The Korean trade mark authorities appear to have given the film company a fair hearing, but finally reached the same conclusion as Gandalf: YOU SHALL NOT PASS!

Creators of characters face a difficult choice. In an ideal world, they would simply work on the assumption that they will probably find companies who wish to use their characters on a wide range of goods and services, and they would get trade mark registrations throughout the world in all 45 classes. But that simply isn't practical and, in any event, there would be real doubts about the validity of trade mark registrations that were obtained without any real intention to use. Owners of valuable characters can, however, be strategic – they can target the most obvious countries and the most obvious product areas.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions