In April this year the Intellectual Property Trial & Appeal Board (IPTAB) released guidelines concerning the use of consumer surveys to show consumer awareness, and in May the KIPO-published Trademark Examination Report contained general guidelines regarding the criteria considered by examiners when determining whether distinctiveness has been acquired through use.
We will take a look at these guidelines in the light of a recent IPTAB decision on an appeal against a refusal decision where the mark was determined to have acquired distinctiveness.
Acquired Distinctiveness: Relevant Law & Guidelines
Descriptive marks must acquire “secondary meaning” distinctiveness to be registerable as trademarks. If a mark is not inherently distinctive (e.g. the mark indicates the quality, effect, usage etc. of the goods/services, is a simple mark, etc.), Article 33(2) of the Korean Trademark Act provides that the mark may still be registrable when “such trademark is recognizable to consumers as a trademark indicating the source of goods of a specific person as a result of using the trademark before filing an application for trademark registration”. In such case, protection is granted only for the actual goods/services the mark has been used with.
The Trademark Act was amended in June 2014 to lower the bar of acquired distinctiveness; previously the relevant mark had to be “remarkably recognized among consumers” (emphasis added), while the current Act requires the mark to be simply “recognizable to consumers” as having a source-indicating function. Despite this amendment, however, the actual number of registrations granted following recognition of acquired distinctiveness remained low, with a total of 68 cases in the three-year period following the revision.