Encouraging news for owners of products with famous shapes
- Despite their historical reluctance to grant registrations, the Korean Intellectual Property Office has acknowledged the distinctive nature of two 3D marks
- To convince the IPTAB of the fame of the marks, evidence such as positive sales figures and consumer survey results was submitted
- These developments should encourage owners of famous product shapes as they highlight the power of 3D trademark registrations in South Korea
The Intellectual Property Trial and Appeal Board (IPTAB) has recognised the distinctive nature of two marks based on their acquired fame in the South Korean market. First, Van Cleef & Arpels's 3D mark in Class 14 (the clover design of the famous Alhambra jewellery line) (left) and second, Hermès's 3D mark (the famous BIRKIN bag) (right).
To convince the IPTAB of the fame of these two marks, various evidentiary materials were submitted, including documents showing sales and advertising figures, positive consumer survey results, numerous articles referring to the iconic product shapes and favourable decisions from South Korean courts, among others.
It has been five years since the Korean Intellectual Property Office (KIPO) amended its examination guidelines to require a lower showing of fame from applicants seeking to secure 3D trademark registrations for product shapes. Despite this amendment, KIPO examiners have continued to be reluctant to grant registrations for 3D marks for product shapes. In these recent decisions, the IPTAB seems to have shown greater flexibility in recognising that certain product shapes function as source identifiers in the South Korean market and it is hoped that the examination division at KIPO will take notice and follow the IPTAB's lead.
3D trademark registrations are a very powerful tool for enforcement in South Korea. These recent developments at the IPTAB should encourage owners of famous product shapes in South Korea to consider filing 3D trademark applications more seriously.
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