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Notable changes affecting Korean trademark practice in early 2021

The Korean Intellectual Property Office (KIPO) has made a number of updates to the Trademark Examination Guidelines, Similar Goods Examination Guidelines, and Trademark Act Enforcement Rules effective from January/February 2021. The most noteworthy changes are summarized below: Similar Goods Examination Guidelines: Class 09 software descriptions [From Jan 1 2021] Until now, KIPO has allowed the designation of broad terms such as “software” and “application software for smart phones” in Class 09. However, given the reality that the purpose or scope of most software is quite limited in practice, allowing such broad coverage has resulted in a crowded register with new applications for software marks often being blocked by senior marks which are actually used for software with an entirely different purpose. For these reasons, and considering industry opinion and examination guidelines in other jurisdictions such as the US, KIPO will now require the specific function of software to be specified in applications filed on or after January 1, 2021. Software descriptions will now be broadly classified either as (i) system software, (ii) game software, or (iii) application software. In determining similarity between different software types, game software will be considered different to system/application software, while the similarity of system and application software will be decided on a case-by-case basis. Software may also be deemed similar to directly related services, though this will only apply when the marks are identical or very similar. One example is that an application for “software for screen golf games” (Class 09) would be deemed similar to an identical or very similar mark covering “operation of screen golf facilities” (Class 41), but not to a mark covering the more general “leisure sport services” (Class 41). Trademark Examination Guidelines: Non-traditional marks [From Jan 1 2021] Reflecting an increase in trademark applications for various kinds of trade dress, the updated Trademark Examination Guidelines contain a number of notable revisions relating to non-traditional trademarks, aimed at improving examination quality: 3D trademarks Formal recognition that solid and dashed/dotted lines can be used to indicate claimed and non-claimed parts of a 3D trademark. Store design trademarks (“interior/exterior of a place at which goods are sold or services are provided”) are now classified as a distinct type of 3D mark, and specific guidelines pertaining to their examination are included for the first time. Incidental parts of a store design which the applicant does not wish to claim rights in (such as windows or other building materials) may be indicated with dashed/dotted lines, so long as consistency in the overall appearance is maintained. Like other 3D marks for product packaging etc., store design marks will be essentially considered as having weak distinctiveness, and so showing evidence of acquired distinctiveness will be required to achieve registration. Non-traditional trademarks, particularly 3D trademarks, will be examined more strictly for functionality in order to avoid granting potentially unlimited trademark rights in elements which should be protected under patent. This will in practice comprise a check of (i) whether a relevant patent or utility model exists, (ii) whether there have been advertisements etc. directed to the functionality of the product, (iii) whether an alternative form exists, and (iv) the ease and economic feasibility of such alternative forms. Position/color trademarks The definition of a position trademark has been expanded from simply “shapes/figures which have acquired distinctiveness when used in a particular position on a product” to now include “colors” when used in a particular position. This will potentially allow for registration of marks where the use of a specific color in a specific location of a product acts as a source-identifier, as per some well-known examples in other jurisdictions such as the Christian Louboutin red-soled shoe (US Reg. No. 3361597) and Prada red tab sneakers (EU TM No. 001027747): US Reg. No. 3361597 EU TM No. 001027747 The description of the specific shade for color trademarks (and color position marks) has also been expanded from just Pantone to now include Hex, RAL, RGB, CMYK, KS A 0062 etc. Trademark Examination Guidelines: Foreign-language trademarks [From Jan 1 2021] For trademarks containing text in a foreign language (i.e. not Korean), such text has until now been treated as a readable word part if represented using the ‘English’ alphabet, Chinese characters, or Japanese hiragana/katakana. Such parts could then be compared with senior marks in terms of pronunciation etc., while text in other languages/scripts was treated as a graphical symbol/device for the purposes of examination. This list has now been clarified to cover text in English language, languages using the Latin alphabet (French, German, Spanish etc.), Chinese (traditional or simplified), Japanese (hiragana/katakana) etc., and a further exception has been added to include text in any other language if the pronunciation/meaning is well-known among consumers. Trademark Act Enforcement Rules: Various [From Feb 1 2021] Among the numerous minor revisions to the Enforcement Rules, the following are likely to be of most interest to foreign applicants: The number of drawings/photographs which must be submitted when applying for a 3D mark has been amended from “2 to 5” to “1 to 5”, allowing for submission of a single drawing/photograph if it allows the mark to be clearly represented. This brings Korea into line with other jurisdictions such as the US, EU and Japan which also allow for a single drawing. (Movement and hologram trademarks will still require 2-5 drawings/photographs, as these marks include a change in form which cannot be shown in a single drawing/photograph.) The time period for submission of files/samples for International Registrations for sound/smell marks designating Korea has been extended from 1 month to 3 months (in consideration of delays attributable to international post). The acceptable methods of indicating a registered trademark have been expanded to include barcodes, QR codes etc. which point to an internet location where the registration number and registration status are presented. Previously acceptable methods were indication of the registration number itself, or provision of a URL where the registration number and registration status are presented. Written by Jonathan MASTERS & Sung-yeon CHO

2021-03-08

Supreme Court reaffirms criteria used to judge source confusion with “renowned” marks

The Supreme Court has recently dismissed an appeal in a trademark invalidation action under Article 7(1)(10) of the old Trademark Act (before promulgation of the current Act on February 29, 2016), which provided a relative ground for refusal based on potential consumer confusion with another party’s mark which is already “remarkably recognized” in Korea. The decision we are discussing (case 2019Hu12179; April 29, 2020) reaffirms the consistently applied criteria for judgement in such cases, that is, whether there is concern that consumers would readily associate a trademark in question with the existing renowned trademark, goods or business of another party, thereby bringing about source confusion. As the judgement relating to similarity of trademarks and overlap in consumers at the Patent Court (earlier instance) differed to that of the Supreme Court, the earlier judgement has been quashed and the matter remanded to the Patent Court. In the Supreme Court decision, the prior-registered mark “” was considered to be a renowned trademark at the time an application for “ ” (hereafter, “the subject mark”) was filed in class 18, and the “” part of the subject mark — said to be strongly distinctive — was considered to differ from the prior-registered mark only in the addition of the final “C” in terms of sound. Further, it was judged that the designated goods of both marks were similar and the consumer groups substantially overlap, and thus Article 7(1)(10) of the old Trademark Act applies to the subject mark. Whereas, in the Patent Court, the two marks were considered to be dissimilar, with the court recognizing that the plaintiff had operated with their trade name pronounced as “MICMAC Lab”, in accordance with the lower “” portion of the subject mark, and that consumers also used this name for the business. Further, given that the upper part of the subject mark contains dots between the English letters, it was considered probable that consumers would refer to the lower part of the mark, and thus be more likely to read the mark as “MICMAC” or “MICMAC LAB” rather than the individual letters “M – C – M – C”. However, the Supreme Court did not readily accept that consumers would widely consider the pronunciation of the subject mark to be “MICMAC” or “MICMAC LAB” based only on the fact the trade name “MICMAC LAB” was used by the defendant (= plaintiff in the earlier instance). It was also judged in the Patent Court that the overlap in consumers of “bags for snowboards” — which are used under the subject mark — and “bags” (recognized to indicate “fashion bags”) of the prior-registered mark would not be significant, while the Supreme Court conversely found that there is similarity in the designated goods and overlap in consumers of the two marks, and thus consumers would readily associate the subject mark with the prior-registered mark, bringing about source confusion. The conclusions as to trademark similarity in the two decisions differ depending on whether the subject mark was considered to be pronounced as per the defendant’s trade name in the lower “” part, and in my opinion the reason the Supreme Court did not admit that most consumers would pronounce the subject mark as per the defendant’s trade name is because the assertion that most consumers would be aware of the trade name was not sufficiently and objectively proven. Further, in the Patent Court, the goods on which the subject mark was actually used (bags for snowboards) — which were not a designated goods description covered by the trademark registration — were used when comparing the overlap in consumers with the prior-registered mark. However, as this case (an invalidation trial) was for determining ineligibility for trademark registration, I believe that it would be fairer to make comparison based on the designated goods listed under the registration of the subject mark, rather than other goods on which the mark is actually used. In such case, as the designated goods were not limited to “bags for snowboards” but did include “bags”, it would be natural to conclude that not only are the goods similar to the prior-registered mark, but there is also overlap in consumers. (A comparison was actually made considering the designated goods of both marks, but as the other party’s renowned mark was a registered trademark and the designated goods of the prior-registered mark also included “bags”, it did not affect the conclusion.) In this decision, judgements relating to Articles 7(1)(7) (ineligibility for trademark registration due to similarity with an earlier registered mark) and 7(1)(11)+7(1)(12) (ineligibility for trademark registration due to similarity with an earlier used mark) of the old Trademark Act — which were among the grounds for invalidation of the subject mark — were omitted. Reading between the lines, this can be understood to mean the Supreme Court presupposed that the prior-registered mark is a “renowned trademark” — the highest degree of fame accorded to prior-used trademarks — and as it was judged that the potential for consumer confusion with respect to such a renowned trademark did exist, saw no need to pass separate judgement on these grounds. Written by Sung-yeon CHO

2020-06-15

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