Kakao is a well-known internet company and mobile social giant in South Korea. Its products include mobile chat application “Kakao Talk”, mobile social application “Kakao Friends”, mobile banking application “Kakao Pay”, merchandise of “Kakao Friends” cartoon characters, etc. Kakao and its trademarks are well-known in South Korea and internationally.
Since 2018, it has come to Kakao’s attention that several companies and individuals in Shanghai, Shenzhen, Weihai, Dongguan, and Wenzhou have applied for “KAKAOFRIENDS” ,“KAKAO”, “”, “”, and more than a dozen other trademarks that are identical or similar to Kakao’s product names and cartoon characters on a number of goods and services closely related to Kakao’s business, hindering Kakao’s plans to apply for trademarks in China in these categories, which has damaged the reputation of the trademarks of Kakao’s products and services in China and violated the legitimate rights and interests of Chinese consumers.
After weighing Zhong Lun against other firms, Kakao engaged Zhong Lun to represent its trademark rights protection in China in more than ten trademark squatting cases. Having studiously analyzed and sorted out information about preemptive registration of trademarks, entities making preemptive registrations, and evidence of prior use by Kakao, Zhong Lun lawyers formulated a targeted plan of rights protection through administrative procedures and litigation procedures, initiated trademark opposition applications, trademark invalidation applications, trademark authorization and confirmation administrative litigations, and other procedures, and finally obtained the result that the preemptively-registered trademarks were refused registration or declared invalid for most of the goods and services related to Kakao’s main business, thus assisting the firm’s South Korean client in having its intellectual property rights protected in China by competent authorities and people’s courts.
Zhong Lun partners Dongxiao Ma and Heping Yang, and associates Wen Liang and Xiaofeng Huang provided Kakao legal services for the above-mentioned trademark rights protection.