KAMUT Enterprises of Europe, BV, a Belgian company, has won a lawsuit against a Korean firm over the Khorasan wheat brand "KAMUT." The legal victory was led by attorneys Kang Kyung-tae, Kim Dong-won, and Bae Hee-won from the Intellectual Property Group at Kim & Chang, South Korea's largest law firm. The win allowed KAMUT Enterprises to avoid losses from unnecessary litigation while retaining its trademark rights.
According to legal circles on the 29th, the 62nd Civil Division of the Seoul Central District Court dismissed a lawsuit filed by Company A seeking cancellation of the trademark transfer registration against KAMUT Enterprises. The first-instance ruling was finalized after Company A chose not to appeal.
At the center of the dispute is the Khorasan wheat brand "KAMUT." The trademark was registered in the United States around 1990 and has been used by KAMUT Enterprises since then. Kamut International Ltd., established in 1994, handled the distribution and sale of KAMUT products in the United States. KAMUT Enterprises was later established to manage sales operations in Europe. The company subsequently took charge of distributing and selling KAMUT products across Asia, Oceania, and other regions.
Kamut International originally held the Korean trademark rights for KAMUT. However, after the registration was canceled under the "non-use cancellation system," Company A — a domestic agricultural, livestock wholesale and retail, and processed food manufacturing firm — filed and registered the trademark in 2014. Under the Trademark Act, cancellation of a trademark registration may be requested if the registered mark has not been used for three or more years without justifiable reason.
"In December 2016, Company A entered into a contract to transfer the trademark rights to either Nature's One or Kamut International by the end of March 2019," attorney Kim Dong-won of Kim & Chang explained. "It was an open contract where the trademark would be transferred to one of the two parties, and by agreement among the parties, the rights were transferred to KAMUT Enterprises, which manages the Asian business."
"After the contract was completed, Company A did not actually transfer the trademark until 2021, contrary to the contract terms. Moreover, after completing the transfer, Company A filed a lawsuit claiming the transfer registration contract was void," Kim added.
In filing the lawsuit, Company A argued that the trademark transfer registration contract was concluded in a state of rashness and financial distress and that it had not received adequate compensation, seeking to have it declared void. The court rejected the claims, stating there was "no evidence." The court determined that "there are no grounds to prove fraudulent conduct."
In particular, the court found that "it is difficult to conclude that the legitimate compensation receivable for transferring a trademark that was merely filed and registered domestically includes the value derived from the recognition and market competitiveness of KAMUT products." Company A had argued that the transfer price should include the value of KAMUT products' brand recognition, but the court did not accept this claim.
"The value of the KAMUT brand includes market competitiveness built through global sales and distribution by KAMUT Enterprises over the years," attorney Kim explained. "Company A demanded that this value be added to the transfer price simply because it had filed and registered the KAMUT brand in Korea, but the court did not recognize this claim."
