IP Newsletter | Fall/Winter 2015
	TRADEMARK, DESIGN, COPYRIGHT & UNFAIR COMPETITION
	Non-Distinctive Parts Can Make a Distinctive Mark
	The Patent Court recently held that the mark "AMERICAN UNVERSITY" (the "Subject Mark") is sufficiently distinctive among Korean consumers to be registered for its designated services of university education services, instruction services, etc. The Patent Court rejected the overly-literal approach of the Korean Intellectual Property Office ("KIPO") and the Intellectual Property Tribunal ("IPT") to distinctiveness, by affirming that even non-distinctive elements can comprise a distinctive mark if sufficiently recognized by the relevant consumers. History Both the examination bureau of KIPO and the IPT had previously ruled that the Subject Mark was a mere combination of the well-known geographic term "AMERICAN" and the word "UNIVERSITY" which is the type of body or business providing the designated services, and that the combination of these two words did not form a new concept or possess new distinctiveness. As such both the KIPO and IPT rejected the Subject Mark under Article 6(1)(iv) of the Korean Trademark Act ("TMA"), which forbids registration of marks comprised of well-known geographical terms, and under Article 6(1)(vii), which forbids non-distinctive marks. Patent Court On appeal, the Patent Court came to a different conclusion, finding that the Subject Mark referred to a specific university operated by the applicant. The court noted the history, student size, facilities, degree of fame in and outside of Korea, and Internet search hits related to the university, and concluded that the Subject Mark was known to ordinary consumers of the designated services as the name of a specific university. The court also noted that university names comprised of a geographical name and "university" are common, and that it is easy for consumers to determine that the Subject Mark in its entirety is a university name, by consulting information easily available on the Internet or other reference materials. In other words, the court found that the Subject Mark did not only convey the general concept of a university located in the U.S., but that there was a new concept and overall distinctiveness in the Subject Mark as the name of the university located in Washington, D.C., U.S.A. Therefore, the court held that Articles 6(1)(iv) or (vii) did not apply to the Subject Mark, and reversed the prior IPT decision. KIPO appealed the Patent Court decision on August 11, 2015, and the appeal is currently pending before the Supreme Court. Relevance The Patent Court properly recognized that newly formed meanings or consumer perception should be taken into consideration when determining whether a mark comprised of non-distinctive elements should be granted a registration. This is in line with the Supreme Court's recent decision acknowledging that Seoul National University's mark "Seoul University" (in its Korean translation) designating Class 5 should be granted a registration. The Supreme Court held that the mark "Seoul University" also did not fall within TMA Articles 6(1)(iv) or (vii), as consumers were well aware that the combination of "Seoul" and "University" now refers to a specific national university located in Seoul, and not just any university in Seoul. The Patent Court took the Supreme Court's reasoning one step further by implying that Korean consumers can be aware of universities even in the U.S., and thus would have known that the Subject Mark is the name of a university, based on information found on the Internet. While it remains to be seen whether the Patent Court's more flexible approach to distinctiveness will prevail, this is a potentially encouraging development for owners of foreign marks with non-distinctive elements wishing to register their marks in Korea.
	Back to Main Page
	If you have any questions regarding this article, please contact:
	Joo Young MOON jymoon@ip.kimchang.com Nayoung KIM nkim@ip.kimchang.com
	For more information, please visit our website: www.ip.kimchang.com