0. First Shinhwa Trademark Dispute Summary The Shinhwa trademark dispute started in 2013. The most direct reason should be April 2012 when Open World (Entertainment)’s CEO was arrested. Theoretically, Open World got dissolved.
In order to retain the trademark, Shinhwa took two law-related measures, separated into two types. 1) Civil Action (Seoul Central District Court, July 26, 2014 verdict): The lawsuit mentioned the revocation of the trademark contract with Jun Media (Jang Seokwoo CEO) including the 2012 gains, etc. Regarding this, Jun Media counter-sued, asking for a portion of Shinhwa Company’s profits from 2013. The final verdict was Shinhwa lost the original lawsuit and Jun Media wins a part of the lawsuit.
2) Filing to Revoke Trademark Registration (Patent Court, May 22, 2014): Determined to revoke SM’s trademark registration of ‘Shinhwa’ in 2004. Originally the defendant is trademark owner SM, but since the trademark usage was transferred to Jun Media, the defendant is changed to Jun Media according to law.
Many fans mistaken that this civil suit is of a trademark dispute, so I must explain this. Today’s reports all mentioned the (1) civil suit, and the trademark dispute in (2) was not mentioned in any reports.
Some reports when writing the text of (1), described it as “Shinhwa losing trademark dispute lawsuit,” but you must understand clearly the details of the lost trademark dispute lawsuit. What they lost on is the revenue payment from their concert, but the so-called trademark dispute is the matter of trademark registration. This detail is not related to today’s decision in the civil suit.
Therefore, this essay will focus on the matter of revocation of trademark in (2). The present lawsuit result is unfavorable towards Shinhwa, but Shinhwa representatives expressed that they will not give up. In the future, there will be 2nd trial, 3rd trial (lawsuit), and even if this battle drags on, Shinhwa will absolutely not give the name of Shinhwa.
1. The Start of Shinhwa and SM’s Trademark Problems
Shinhwa officially debuted in 1998 as SM’s third group. After their contract ended with SM in 2003, they switched to Good Entertainment.
At that time Lee Sooman, who produced Shinhwa, was being investigated by Interpol (International Criminal Police Organization). SM treated Shinhwa like they did with Shinhwa’s sunbaes and offered contract renewals to only a few members. Yet the group that they produced decided to move to another company using its original name.
This action was an unprecedented event among idol groups and therefore, the entire music industry started noticing the direction Shinhwa was going. Of course this situation drove SM crazy. Not to mention, Shinhwa completed its entire contract before leaving so SM had no excuses to stop Shinhwa. If SM acted rashly, they would have suffered instead.
Although Shinhwa switched to another company, Shinhwa’s trademark, symbol, songs and copyrights belonged to SM. But SM’s standpoint at the time was “will respect Shinhwa’s activities and will give support.” And because of that, Shinhwa carried a very thankful attitude towards SM and successfully transferred to the new management company.
The above-mentioned happened in July 2003.
This is half a year later on January 2004.
Application date: 2004 January 7 Application No: 40-2004-0000629 Notification date: 2004 December 2 Notification No: 40-2004-0062196 Registration date for resolution (for consideration): 2005 January 20 Commodity score: 1 (?) Designated goods or designated services #9 category: Recorded discs (music), recorded videos (music), albums, collection of recorded albums, downloadable electronic music Duration (reservation) termination date: 2015 March 14
SM registered ‘Shinhwa’ as trademark.
To reiterate, Shinhwa’s contract with SM ended in 2003. But SM first allowed Shinhwa to continue using its name. Shinhwa believed those words and after signing with Good Entertainment half a year later, SM registered “Shinhwa” as a trademark under SM Entertainment’s name.
Perhaps some that hear of the ins and outs of Shinhwa’s trademark dispute would say: “Shinhwa chose not to renew their contracts with SM, they jumped ship, isn’t this a problem they of course would need to take on?”
This is also understandable; you can’t say it’s wrong. But please think, who would expect that it would go from an ex-company that said they “fully support your decision” to being backstabbed by them one year later?
2. Shinhwa’s Trademark Usage, SM & Open World Entertainment
SM finally completed its Shinhwa trademark registration at year-end 2005. SM became Shinhwa’s trademark controller then.
Soon afterwards, SM transferred the usage rights of the trademark to Open World Entertainment. As everyone knows, Open World’s CEO is Jang Seokwoo was arrested for sexually harassing trainees. Open World dissolved and became a company called Jun Media.
This was in the description of the civil suit: The court expressed, “Acknowledged Jun Media receiving the ‘Shinhwa’ trademark from SM Entertainment.” As well as, “We’ve taken into consideration that there is no obstacle in Shinhwa Company using the trademark through Jun Media. Shinhwa’s stand to terminate the contract is difficult to accept.”
There was this phrase: “…there is no obstacle in Shinhwa Company using the trademark through Jun Media.” Similarly, there was also this in the civil suit details: (1) Because the applicant (Shinhwa Company) signed a trademark usage agreement, they can freely use the designated trademark, so whether there’s a failure to register the trademark or not, in reality, there is no direct relationship.
According to Jun Media’s position, one can see that through the trademark usage agreement, Shinhwa could freely use the name Shinhwa.
First, let’s look at the facts. Jun Media’s position is right to a certain extent.
Shinhwa just didn’t become the owner of the name Shinhwa. At least after Shinhwa signed the agreement with Open World, Shinhwa was not restricted to use the name during their activities.
But as many fans known, Open World did not interfere with Shinhwa using the name ‘Shinhwa,’ but you also can’t say (Open World) allowed Shinhwa to freely use ‘Shinhwa’ during their activities.
The most representative example is they unilaterally announced the termination of the trademark contract with Shinhwa, and they pushed this responsibility on to Eric and Andy. Also Jang Seokwoo openly attacked Andy on his Twitter, etc.
Shinhwa and Open World’s relationship cannot simply be viewed as “allowing Shinhwa activities” or “hindering Shinhwa activities.”
Even though as a management company, they finished their work to a certain extent, there were many tricks behind their backs. As a result, they didn’t hinder Shinhwa, but they did kept messing with Shinhwa’s ready source of money, becoming the company that received the greatest benefits.
Through news, they exerted pressure on the members, using Shinhwa as a poker chip to threaten fans.
Just because of the reason that they didn’t restrict Shinhwa’s activities, does that mean you can really tolerate Open World?
3. 10 years of Trademark Dispute
After CEO Jang Seokwoo was arrested and Open World dissolved in 2012, Shinhwa took action to retrieve the Shinhwa name.
Registration termination notice date: 2013 February 6 No: 2013DANG299 Registration date: 2013 February 6 Case Topic: Terminating trademark registration number 0611276 Purpose for applying: Requesting to terminate trademark registration 0611276 Petitioner: LLC Shinhwa Company Registered 2013 February 14
On February 6, 2013, Shinhwa requested, under Shinhwa Company, to terminate 2005’s SM registration of the ‘Shinhwa’ trademark. Up to this time, the trademark controller of Shinhwa is SM, Open World (Jun Media); as before, rights were transferred from SM.
Then the application was successfully accepted on February 14.
But on March 8, Shinhwa’s trademark became Jun Media ‘s (Originally Open World Entertainment) possession.
(Notification of all rights) Registration obligor: LLC SM Entertainment Seoul Gangnam… Registration management: LLC Jun Media Seoul Gangnam… Registration reason: Transfer Registration purpose: Transfer all rights Registered Entered 2013 March 8
The difference here is, Before Open World operated through the borrowing of the trademark as management SM “lend the rights” to Open World. But SM is the one that directly sold Shinhwa’s trademark to Jun Media (originally Open World). In short, SM no longer has the right to Shinhwa’s trademark.
*Because of the civil suit this time, some uncertain parts are added. SM transferred the rights to Open World in 2006, but they did not register this until 2013.
(Property Safeguard Registration) Case subject: Seoul District Court 2013 Section 48706 Trademark Property Safeguard Registration obligor: Jun Media Seoul Gangnam… Registration management: LLC Shinhwa Company Seoul Yongsan… Registration date: 2013 May 14 Registration reason: Property safeguard decision Registration purpose: Registering trademark property 2013 May 16
May 16, 2013 is the first day of their 11th album sales and also announcement of comeback.
2013.11.22 (Friday) 14:00-2013 File 299 [Trial Court 4] Revocation of trademark registration #0611276 – LLC Shinhwa Company // Jun Media
An oral hearing was conducted on November 22, 2013.
Half a year after the oral hearing and about 1 year after the trademark property safeguard, the final decision was made on May 22, 2014.
4. Trademark Dispute 1st Trial Result
As everyone knows, the trademark lawsuit has been dismissed.
(4) Result Therefore the decision is passed, the trial request has been dismissed. The lawsuit fees will be assumed by applicant (Shinhwa Company).
About a month later, the text details about this lawsuit was disclosed. After spending a year’s time on this lawsuit, the verdict was astonishingly simple. A brief summary is below: 1) Shinhwa Company has a direct relationship with the “Shinhwa” trademark and, thus, is able to appeal. 2) ‘Shinhwa’ trademark’s original registrant SM’s Shinhwa Vol 1 is still selling from 1998 till now. 3) This shows that SM’s registered ‘Shinhwa’ trademark has been in use since the initial registration.
According to trademark laws, if you can demonstrate within 3 years up till the trial request date that the trademark hasn’t been used, it may be possible to cancel the original trademark registration.
In Shinhwa’s situation, the trial request date is February 6, 2013 so the 3-year window is February 6, 2010 to February 6, 2013. As long as it can be proved that SM did not use the ‘Shinhwa’ name, SM’s registration of ‘Shinhwa’ in 2005 can be legally cancelled.
However, the trial department’s verdict, simply put, is that because the album that SM released is still being distributed [in the market], it means that SM has always been using the ‘Shinhwa’ trademark.
The result of this civil suit combined with the results of the patent trial results is this procedure. 1) SM registered the ‘Shinhwa’ trademark in 2004, officially applied for it in 2005. 2) Starting 2005, SM entrusted the ‘Shinhwa’ trademark to Open World. Open World and Shinhwa’s management company at that time, Good Entertainment, signed a trademark usage agreement, exercising the right of all those under the trademark. 3) Starting 2006, SM transferred the ‘Shinhwa’ trademark, to Open World. 4) Until 2013, Open World never registered the ‘Shinhwa’ trademark. 5) While they did not register the ‘Shinhwa’ trademark, Open World signed a trademark usage agreement with Shinhwa Company in 2011. 6) In 2012, Shinhwa requested Open World to show proof of ‘Shinhwa’ trademark ownership, but it was Open World that refused it. 7) In 2013 when the lawsuit for trademark revocation was mentioned, it was then learned that Jun Media had registered the trademark.
5. Trademark Dispute 2nd Trial Preview
Shinhwa bid farewell to SM 11 years ago. It’s been 17 years since their debut and Shinhwa is the longest-running idol group. Today and tomorrow, they are writing a new record every day. However, Shinhwa still does not own Shinhwa. They have lived under the name of Shinhwa for 17 years, yet they still cannot own the name.
Today, in regards to the civil suit, Shinhwa expressed that they are preparing to appeal the part of the suit that they lost.
That day, a Shinhwa Company representative said, “Shinhwa partially lost and won parts of the lawsuit. In regards to the parts that were lost, we are preparing to appeal.”
And added, “Since SM Entertainment ended its contract with Shinhwa and transferred the ‘Shinhwa’ trademark to the previously-Open World, now Jun Media, we knew that Shinhwa Company cannot own the trademark. The lawsuit is also started because of this.” “This is not a dispute to own the trademark, but a case to determine if there was any trademark usage violation.”
It was also stressed that, “There will be no problems using the name ‘Shinhwa’ for future activities.”
In addition, regarding the ruling of the court in answer to revocation of the trademark, 15 days ago on July 11, 2014, an appeal has been filed.
(Litigation to appeal) Lawsuit file date: 2014 July 11 File no: 2014 ‘heodang’ 4951 Event indication: 2013 ‘dang’ 299 (trademark registration #0611276 revocation lawsuit) Request purpose: Appeal the verdict of case 2014.05.22 2013 ‘dang’ 299 Petitioner: LLC Shinhwa Company
Shinhwa’s trademark problems have been handed over to the patent court. Perhaps what awaits us may be even more difficult than the past year.
It’s hard to predict how many more years this will take and what’s the result that awaits us.
When these things happen and when the fans are asked whether this is tiring, honestly it’s super tiring. Not going the easy route and choosing to walk on a difficult road for a while is how you break through. In this process, even though they purposefully tried to not let the fans know, it still emerged barefaced. And even when we all know, we still have to see them pretend that they don’t know and that it’s okay, guarding and focusing on smiling, it’s really tiring.
But if Shinhwa is wrong, it’s probably because they trusted too much in the company that raised them; being wrong in being too pure in this confusing and dangerous entertainment circle. And also wrong in giving up being able to use Shinhwa’s name to get countless benefits and an easy life, and choosing to let their colleagues stay by their sides in the future.
To Shinhwa, what are the pros and cons of the choices made at this point? Shouldn’t we determine that after 10 years?
The first battle took one year’s worth of time and had a bad outcome. The steps Shinhwa chose elongated anticipation. They knew they were going to have to deal with division of revenue yet they still stubbornly chose to go this road. This is their way.
As well as, even sometimes in order to prove the things they’ve promised, they insist on showing the public how hardworking they are. In my eyes, they are as clear as the text itself; they are truly Shinhwa.
Other than believing in them, protecting them, wholeheartedly supporting them, we’re sorry there’s nothing we can do. But even if the last battle is even more difficult, there’s only one thing that’s clear – No matter what, you are still Shinhwa.
Original text: secgarden Chinese translations: Best Shinhwa (I apologize for any mistakes in the technical terms as law is definitely not my field of expertise. I did a ton of googling *tired*.)