Hyundai times three

You may be familiar with Hyundai as a car brand but did you know that there is also a Hyundai Technology, a Hyundai Motor Company and an HD Hyundai Co.?

The first company is located in Puerto Rico, while the other two are South Korean.

Hyundai Technology filed an opposition against an application for the wordmark ‘Hyundai’ for computer monitors and systems from the two South Korean companies on the grounds that its older European and German trademarks bear the same name. 

Use of an older trademark

Evidence proving that the older trademarks of Hyundai Technology were in use was limited but the European Trademarks Office determined that the evidence was just enough to confirm that the trademark had been used in the European Union and in Germany throughout the last five years. Overcoming this obstacle was important, as the opposition would have been dismissed if the evidence had been deemed insufficient to prove the trademarks' use.

Two opposition grounds, same result

The opposition was based on two grounds. First of all, Hyundai Technology claimed that the contested trademark was identical to older trademarks and to the products for which they had been registered. The company also claimed that the proposed trademark was the same or similar to the other trademark, giving rise to the risk of confusion.

Several of the opposing party’s products, such as computer monitors and personal computers were considered identical to the disputed goods, which included monitors for displaying data in a global data network. They have the same function, target the same audience and use the same distribution channels.

Identical trademarks

We can be brief when it comes to assessing the marks ‘Hyundai’ (from the opposing party) and the applicant’s word trademark ‘HYUNDAI’, as both solely consist of the word ‘Hyundai’ and are therefore considered to be identical. Given that some of the disputed products are also identical, the opposition was upheld on this basis, preventing the trademark from being registered for those products. This ground, where there is no need to prove confusion but only the identical nature of the marks and products/services, is rarely invoked. In most cases, the marks are slightly different and a claim based on this ground is unlikely to succeed.

Some of the products in this case were not identical, however, and that is why the second ground – risk of confusion – was invoked. The opposition was partially successful on this ground. For similar products, the proposed trademark posed a risk of confusion, so registration was also refused for these goods. However, for products deemed dissimilar, the registration will proceed.

This demonstrates that identical trademarks can coexist, but only when they relate to unrelated products. So don’t be surprised if another 'Hyundai' product hits the market soon!

Author: Erwin Haüer

Bio: Erwin is a trademark attorney and, as the managing partner, in charge of IT and Information Management. He works extensively with startups and scale-ups, while his clientele also includes numerous multinational corporations. Erwin possesses a sharp wit and a keen eye for remarkable trademark news and curious brand infringements.