[Patent Talk] The Trademark Dispute over MC the Max

Jeon Min-hyuk, a member of MC the Max, recently expressed his regret on his YouTube channel that Lee Soo had obtained the trademark rights to "엠씨더맥스 (MC the Max)" on his own, without the prior consent of or consultation with the other members. In particular, Jeon recalled how the members had joined forces to defend the trademark during a past dispute with their former agency, and lamented that he could not use the group's name on his own single album. A search of KIPO's KIPRIS database shows that two trademarks, "엠씨더맥스" and "M.C the MAX," were filed on March 17, 2021 in the name of applicant Jeon Kwang-cheol (Lee Soo's real name) and registered the following year.

In 2006, Mr. Baek, the head of the group's former agency, sought a preliminary injunction to stop MC the Max from using the group name, based on the "M.C THE MAX" trademark registered in his own name. At the time, MC the Max had moved to a different agency, and members Lee Soo, Jeon Hyun-cheol and J.Yoon filed an invalidation trial against Mr. Baek's trademark; after a dispute that went all the way to the Patent Court, the trademark was invalidated.

The Intellectual Property Trial and Appeal Board (IPTAB) found that the band name "MC the Max" had not become so widely known as to be famous as of March 2003, when the trademark application was filed, so there was no violation of Article 34(1)(vi). However, it held that as of July 2004, when the decision to grant was made, the name had become famous in connection with "phonograph records" and "music performance services," creating a risk of confusion as to source, and that the registration was therefore invalid under Article 34(1)(xii). The Patent Court upheld this decision. Note, however, that under the Trademark Act as amended in 2016, Article 34(1)(vi) is also judged as of the time of the decision to grant, so today a violation of Article 34(1)(vi) could apply as well.

MC the Max is not the only case of a trademark dispute between singers and agencies. In 2019, NRG member Noh Yoo-min filed a trademark application for the group name on his own; after receiving a notice of preliminary rejection, he added Chun Myung-hoon as a co-applicant, but the application was rejected because the consent of all members was not proven. The head of the agency subsequently filed a trademark application for "NRG," but after the application was published for opposition, Noh Yoo-min and Chun Myung-hoon filed an opposition, and the application is now being reexamined.

In light of the NRG case, Lee Soo's trademark rights, absent the other members' ...