[Patent Talk] Why the Trademark of 'Odeng Sikdang,' the Original Budae-jjigae Restaurant, Was Invalidated

The Patent Court recently ruled that the mark "오뎅식당 (Odeng Sikdang)," registered for services including "budae-jjigae (army stew) delivery services," is invalid (Judgment 2021Heo4003, rendered 2021.11.4). Grandmother Heo Gi-suk, who had sold budae-jjigae from a street stall since 1960, registered the trade name "Odeng Sikdang" in 1968, and the restaurant became famous in the Uijeongbu area as the original budae-jjigae eatery.

The business was passed down to Heo's son and grandson, and in 2009 Odeng Sikdang Co., Ltd. was established. Having operated the restaurant with only a registered trade name, Odeng Sikdang Co., Ltd. filed a trademark application for "Odeng Sikdang" covering "budae-jjigae delivery services" and other services in 2011, and the mark was registered in 2012. In early 2020, Mr. Jeong, who ran a restaurant, filed an invalidation trial against the registration. In the invalidation trial, Mr. Jeong argued that the registration was invalid because the essential part of the registered mark, the words "Odeng Sikdang" (literally "fish cake restaurant"), directly describes the nature of the designated services and thus lacks distinctiveness, and because selling budae-jjigae without fish cake could mislead consumers about quality.

The Intellectual Property Trial and Appeal Board (IPTAB) dismissed the invalidation trial, finding that the registered mark, a color mark combining figures, letters and numbers that included a famous trade name, was distinctive as a whole, and that there was no risk of misleading consumers about quality because the restaurant was widely known as Korea's first and original budae-jjigae restaurant. The Patent Court, however, held the trademark invalid on the ground that there was a risk of misleading consumers about quality, based on substantial evidence that ordinary consumers had mistakenly believed the budae-jjigae contained fish cake.

Generally, a mark cannot be registered if it contains words relating to the nature, raw materials, place of origin or the like of the designated goods or services. However, if the mark has acquired fame...