Apple variety allowed to be registered as a trademark

South Korea

In Jang-Guen AHN v Intellectual Property Office Commissioner (Case 02Hoe7650), the Patent Court has reversed an Intellectual Property Office (IPO) decision to refuse registration of the term 'Hwa-rang' in Korean characters as a trademark for apples and apple saplings. The court held that the fact that the term had already been registered as a variety name for apples did not preclude its registration as a trademark.

Jang-Guen, an apple grower, developed a new variety of apple and registered the term 'Hwa-rang' as a variety name with the Kyoungsangbuk-Do Agricultural Research and Extension Service. Jang-Guen then applied to the IPO to register the variety name as a trademark. The IPO rejected the application on the grounds that, if the application were allowed, Jang-Guen would obtain the exclusive right to sell or export the apple variety as a result. This, said the IPO, would be contrary to the purpose of the Korean trademark system and public interest.

In reaching this conclusion the IPO examined Article 109 of the Seed Industry Law, which provides that:

"a variety name for which application for registration has been filed under the Trademark Law prior to the filing of the variety name application, or which is identical [...] or similar to a registered trademark, and therefore likely to cause confusion, may not be registered."

It also made reference to Article 4(1)(xiv) of the Japanese Trademark Law, which provides that

"trademarks [that] are identical [...] or similar to the name of a variety registered under the [Japanese] Agricultural Seed and Seedlings Law, and which are used on the seeds or seedlings of the variety concerned or in respect of similar goods or services, may not be registered."

An IPO tribunal confirmed the decision and Jang-Guen appealed to the Patent Court.

The Patent Court overturned the IPO's decision and allowed the term 'Hwa-rang' to proceed to registration. The court held that the registration of variety names governed by the Seed Industry Law is not equivalent to the registration of trademarks under the Korean Trademark Law. Trademark registration is precluded, said the court, where the term that is the subject of an application has become the general or common name for the goods to which it relates. It further noted that the time to assess whether this is the case is the date of the application for registration. The court emphasized that a trademark application cannot be rejected solely on the grounds that (i) it is identical or similar to the name of a variety registered under the Seed Industry Law, or (ii) there is a possibility that the mark will become the general name for the variety at some point in the future. In addition, it pointed out that Article 4(1)(xiv) of the Japanese Trademark Law does not have an equivalent in the Korean Trademark Law.

Applying this reasoning to the case at hand, the Patent Court determined that the term 'Hwa-rang' had not become a general name to describe this particular variety of apple at the time of the application.

Yoon Bae Kim, Kims & Lees, South Korea

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