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IP Newsletter | Spring 2015
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TRADEMARK, DESIGN, COPYRIGHT & UNFAIR COMPETITION
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Supreme Court Rejects KIPO's Review Practices for 3D Marks
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The Supreme Court recently upheld the decision by the Patent Court rejecting the Korean Intellectual Property Office's ("KIPO's") amended examination guidelines pertaining to three dimensional trademarks. The Supreme Court agreed with the Patent Court that the distinctiveness of a three dimensional mark should be determined in the same manner as any other trademark, by referencing all of its elements including shapes, symbols, letters, figures, etc., and should not be limited to considering the three dimensional shape alone as dictated by KIPO's amended examination guidelines (Supreme Court Decision 2014Hu2306 rendered on February 26, 2015).
In detail, the Supreme Court indicated that the Patent Court properly considered all elements of the subject trademark application for artificial hip joint balls (see illustration below), including both the non-distinctive three dimensional shape and the distinctive English characters "BIOLOX delta," when determining the overall distinctiveness of the mark. For additional details regarding the original Patent Court decision, please refer to our Winter 2014/15 newsletter here.
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The Supreme Court also clarified that if a three dimensional trademark is registered as distinctive overall, but the three dimensional shape itself lacks distinctiveness, the registered trademark rights do not extend to the shape alone. Therefore, even if a three dimensional trademark is registered, it does not necessarily mean that other parties are excluded from lawfully using the three dimensional shape if the shape itself lacks distinctiveness.
In view of the Supreme Court's decision, a further revision of KIPO's examination guidelines is expected to be issued in due course.
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