Article 51(1) of the Korean Trademark Act clarified
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The Korean Intellectual Property Tribunal has clarified the scope of the expression “indicates in a common way” under Article 51(1) of the Korean Trademark Act (Case 2008 Dang 958, August 28 2008, published on February 25 2009).
Article 51(1) provides that the effect of trademark registration does not extend to similar or identical signs that indicate "in a common way" a person's name, trade name or famous pseudonym, among other things. The provision aims to ensure that a trademark owner will not be able to prevent the use of a similar or identical sign indicating in a common way a person's name or trade name where the sign was in use before the filing date of the application for registration of the mark. Article 51(1) thus limits the exclusive rights of trademark owners with a view to protecting the public interest.
In the present case, a foreign company trading under the name Mode More sought to register the Korean transliteration of 'Mode More' as its trade name on the Korean Company Registry. The owner of the trademark MODE MORE opposed the registration of the trade name. The applicant had been using the trade name Mode More in Korea before the filing date of the application for registration of the mark.
The Korean Intellectual Property Tribunal held that the Korean transliteration of 'Mode More' did not indicate in a common way the trade name of the applicant. Therefore, the effect of the registration of the trademark MODE MORE extended to the trade name Mode More, even though it had been in use before the filling date of the application for registration of the mark.
Arguably, the decision restricts the scope of the phrase “indicates in a common way”. In light of the decision and of previous case law, a trade name indicating “in a common way” a person's name or trade name excludes:
Yoon Bae Kim, Kims and Lees, Seoul
Article 51(1) provides that the effect of trademark registration does not extend to similar or identical signs that indicate "in a common way" a person's name, trade name or famous pseudonym, among other things. The provision aims to ensure that a trademark owner will not be able to prevent the use of a similar or identical sign indicating in a common way a person's name or trade name where the sign was in use before the filing date of the application for registration of the mark. Article 51(1) thus limits the exclusive rights of trademark owners with a view to protecting the public interest.
In the present case, a foreign company trading under the name Mode More sought to register the Korean transliteration of 'Mode More' as its trade name on the Korean Company Registry. The owner of the trademark MODE MORE opposed the registration of the trade name. The applicant had been using the trade name Mode More in Korea before the filing date of the application for registration of the mark.
The Korean Intellectual Property Tribunal held that the Korean transliteration of 'Mode More' did not indicate in a common way the trade name of the applicant. Therefore, the effect of the registration of the trademark MODE MORE extended to the trade name Mode More, even though it had been in use before the filling date of the application for registration of the mark.
Arguably, the decision restricts the scope of the phrase “indicates in a common way”. In light of the decision and of previous case law, a trade name indicating “in a common way” a person's name or trade name excludes:
- a trade name written in stylized letters and/or in a particular colour;
- a trade name which is combined with a distinctive element; and
- a foreign trade name transliterated into its Korean equivalent.
In other words, it may be concluded that a sign indicating in a common way a person's name or trade name is a sign that has no distinctive elements and will be recognized immediately by consumers as a person's name or trade name.
Yoon Bae Kim, Kims and Lees, Seoul
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