IP Newsletter | Summer 2015
	TRADEMARK, COPYRIGHT & UNFAIR COMPETITION
	IPT Takes Weakly Distinctive Elements into Account in Similarity Analysis
	When examining the similarity between two marks, Korean administrative bodies and occasionally Korean courts have a tendency to mechanically disregard the non-distinctive or weakly distinctive portions of the marks in order to concentrate their analysis on comparing the remaining distinctive portions. This tendency is quite strong at the Korean Intellection Property Office ("KIPO"), which rarely deviates from this practice. A more flexible approach was displayed in a recent decision by the Intellectual Property Tribunal ("IPT") of KIPO, which may signal a change of attitude regarding this issue. In this particular case, the IPT was asked to review whether the registration for the mark (Reg. No. 877006) should have been denied in view of the prior famous mark of W. L. Gore & Associates, Inc. (makers of GORE-TEX® branded products) (W. L. Gore & Associates, Inc. vs. Lee Gil Woon, invalidation action against Trademark Reg. No. 877006 - 2013dang2649 rendered on January 16, 2015). Under usual Korean examination practice, the compared marks probably would have been found dissimilar, as their non-distinctive portions likely would have been ignored (i.e. the red octagonal shape, the term WIND), and the examination likely would have focused on the distinctive portions WIND COOL vs. WIND STOPPER or COOL vs. STOPPER only. However, in this case, the IPT stated that because the marks should be compared in their entirety, even if the red octagonal shape was non-distinctive, it should not be ignored in the analysis. The IPT then found that the motifs and the overall arrangements of the marks (i.e. red octagonal shapes, portions inside the shapes organized on three lines, use of capital letters and similar fonts for word portions, etc.) were very similar. The IPT found that this similarity was likely to cause consumer confusion if the marks were used on the same or similar designated goods, as the overall impression given by these marks is highly similar. The IPT thus concluded that the challenged mark should be invalidated due to its similarity with Gore's famous mark. It remains to be seen whether this decision is followed by other Korean administrative bodies and courts. If so, this more flexible approach clearly will provide a greater scope of protection to owners of trademarks substantially comprising non-distinctive or weakly distinctive elements.
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	Min-Kyoung JEE mkjee@ip.kimchang.com Alexandra BÉLEC abelec@ip.kimchang.com
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