• Korean pop band T-ara are seeking to cancel a trademark for their group name
  • The mark was filed by MBK Entertainment, their former management agency
  • Move highlights practice in Korea where artists rarely hold rights to their name

One of the most popular Korean bands in the world, T-ara, is seeking to gain rights to use its name following a trademark application by a former management agency, MBK Entertainment. Two attorneys have told World Trademark Review that both parties have viable arguments for legitimate rights over the group name – and point out that it is common practice in Korea for music agencies to own the trademark rights to band names as a tactic to ward off rival agencies from poaching talent.

South Korean girl group T-ara was formed in 2009 by music label MBK Entertainment. The band achieved huge success, including having the best-selling single on Korea’s highly competitive music chart in 2011, and are also regarded as one of the most popular K-pop bands in both China and Japan. However, the last 12 months saw two members depart and, in December, the group left MBK Entertainment and vowed to perform independently. However, as we reported earlier this month, the agency applied to register the term T-ARA at the Korean IP Office (KIPO) on December 28. If accepted, the move would mean T-ara would not be able to promote under that name for the duration of the registration, and even if the members performed under a different name, they may have to pay royalties to the agency if they perform songs that were released under their original name.

When news of the trademark application came out, there was uproar among thousands of K-pop fans around the world, with MBK Entertainment accused of “blatant pettiness” and being “bitter" and "money hungry". In response, the agency released a statement claiming that it is “justified in applying for this trademark as the [former] agency [of the group]”, and that the company’s management “don’t believe it is right for us to be criticized for our actions”. On the flip-side, one of T-ara’s artists, Hahm Eun-jung, posted on Instagram that “it is the official position of our four members that in the future we will be able to greet you in the name of ‘T-ara’ and hope that all of this will be resolved in a satisfactory manner”.

Now, local press in Korea are reporting that the music group has filed documentation to the KIPO outlining grounds for rejection of MBK Entertainment’s trademark application. Furthermore, the group’s trademark attorney has stated that if the application is not rejected, further action will be taken, including re-applying for an appeal. The move demonstrates that the music group is not willing to give up the T-ara name, and the members are willing to challenge the management company that discovered, trained, developed and continuously promoted them for nearly a decade.

Battle for the name begins

Talking to World Trademark Review, Yoon & Yang partner Ted Kwon and trademark attorney YoungJoo Song say that both parties have claims to the name – and it is not clear which side will prevail in this increasingly bitter legal dispute. “We assume that the T-ara music group argued in the information brief that the group members have legitimate rights over the T-ARA mark, and that the T-ARA mark is well-known among consumers as the source identifier of the T-ara music group,” they stated. “The examiner will look at evidence such as contracts between MBK Entertainment and the individual members, any information or materials about who created the music group name, and who contributed what for the success of the music group.”

Another factor the examiner may consider, they suggest, is timing: “MBK filed four trademark applications (under Classes 3, 9, 25, and 41) on December 28 2017, and T-ara was already well-known, not only in Korea but also in other countries, as a K-pop group at the time when the applications were filed. If the examiner concludes that T-ARA could be perceived as the source identifier of a female music group composed of four members among Korean consumers when MBK Entertainment filed the four applications, the T-ARA music group may have better chances in this trademark dispute.”

If the group fails, though, Kwon and Song say that the members still have options – but it will cost them. “Firstly, they can file oppositions against the applications to buy some time for negotiation, as the opposition period is about 8-10 months in Korea,” they state. “If that fails, they could perform as ‘T-ara’ if they were to get a license from MBK Entertainment.”

Ultimately, the dispute is a result of the unique structure of the pop music industry in Korea, where management companies have strict control over the artists they discover and promote. These entertainment agencies nurture and train performers from an early age, and the cost and failure rate is extremely high.

“Korean teenagers who wish to become K-pop stars sign up with entertainment companies, often when they are just elementary school students, and receive intensive training that can include living in the agencies’ dormitories. These companies select young performers from amongst the trainees, organise music groups, and provide ongoing support – including from songwriters, dance instructors, and makeup artists. It is said that more than one music group debuts every day in Korea and most disappear without drawing public attention,” the attorneys explain. “The peculiar and significant influence these companies hold over music performers has led to continuous trademark disputes when the stars leave for new agencies. However, as long as the current practice of developing, training, and promoting K-pop music groups continues, which requires an astronomical investment over a long period of time, then Korean entertainment companies will likely continue to use trademark rights as a mean to keep their K-pop stars from leaving for new management agencies.”

For that reason, then, trademark disputes of this nature will continue to happen – and there is little sign that the K-pop industry will change its tune any time soon. However, T-ara’s legal pursuit for rights to the band name has shone a spotlight on the level of control that agencies have over musicians, and sparked debate about who should retain IP rights when an artist seeks independence.