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▶ “FRODO” from Kakao Corp. v. “FRODO BAGGINS” from The Saul Zaentz Company

In the recent case, KWON & KIM Patent & Trademark Attorneys obtained favorable decision for our client, Kakao Corp. in connection with trademark opposition and successfully defended Kakao Corp. against claims by The Saul Zaentz Company on the suspected similarity ground between the trademark “FRODO BAGGINS”  from The Saul Zaentz Company and the trademark “” (hereafter “FRODO”)  from Kakao Corp .

In late 2017, The Saul Zaentz Company ("Opponent"), the producer of the movie "THE LORD OF THE RINGS" and "The Hobbit" filed a trademark opposition with the Korean Intellectual Property Office (KIPO) on the grounds that the name “Frodo” among the characters of "Kakao Friends” developed by Kakao Corp. (“Applicant”) is similar to the character’s first name "FRODO" of "FRODO BAGGINS” from the above movie.

Kakao Corp. is the provider of KakaoTalk, a mobile messaging service used by over 90 % of Korean people. KakaoTalk launched in 2010, and it has more than 154 million registered users from 230 countries. Kakao Corp. is expanding its service to digital contents, marketing, commerce and more. KAKAO FRIENDS as seen above is comprised of eight of featured characters, all of which are marketed with KakaoTalk emoticons by Kakao Corp., and managed by its subsidiary Kakao Friends Corporation. Kakao Friend's character products have been growing in the market around the world and the characters are imprinted onto numerous kinds of consumer goods including cosmetics, clothing and food, etc.

The characters have their names and personalities, for example, Frodo is one of the famous characters and he is an ambitious city dog from a wealthy family.

The Opponent submitted various evidences claiming that Opponent produced a number of popular films including "The Lord of the Rings” and "The Hobbit”, and "FRODO BAGGINS” among the characters and its first name part “FRODO” are widely known around the world and such names have been used as a trademark for various goods which are identical or similar, or economically related to Applicant’s products.

 

▶ Response

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(Image Source: Movies “The Lord of the Rings” and “The Hobbit”)​

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In response, we, KWON & KIM argued that

 

The Opponent’s claim is merely to assert that the movies "The Lord of the Rings" and "The Hobbit" are widely known, and it does not prove that one of the characters in the movies, "FRODO BAGGINS" or its first name part “FRODO” is also well-known.

 

 

Even if it is accepted that “FRODO BAGGINS” and its first name part “FRODO” are well-known, the evidence provided by Opponent only shows that such names are merely known as one of the characters of a movie or novel rather than as a trademark to identify the source of the products. Therefore, its reputation is not acquired by a use of trademark, but simply it is widely known to general consumers by a title with the contents of the movie and novel.

 

 

Moreover, it is not possible to find substantial number of the revenue and sales income of products using "FRODO BAGGINS" or its first name part "FRODO" in Korea, and therefore it cannot be found whether it is widely known as a trademark or the source of a specific person or company.

 

 

Even if the movie or a novel has been well known, it does not mean the character was immediately known and also the name of such character was not widely known as a trademark. 

 

 

 

▶ Conclusion

 

 

In conclusion, the KIPO dismissed the opposition by the Opponent and decided in favor of the Applicant, Kakao Corp. stating that the Opponent’s assertion and evidences were not sufficient enough to prove the names concerned be recognized as a trademark or product of specific source to domestic consumers or traders, and it was also not sufficient to be known to indicate a product of specific people among domestic and international consumers.

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