IP Tribunal takes weakly distinctive elements into account in similarity analysis

South Korea

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, and to concentrate their analysis on the comparison of the remaining distinctive elements. This tendency is quite strong at the Korean Intellectual Property Office (KIPO), which rarely deviates from this practice.

However, a recent decision of the Intellectual Property Tribunal (IPT) of KIPO has displayed a more flexible approach, which may signal a change of attitude regarding this issue.

In W L Gore & Associates Inc v Lee Gil Woon (invalidation action against Registration No 877006, Case 2013dang2649, January 16 2015), the IPT was asked to consider whether the registration for the mark WIND COOL (Registration No 877006, depicted below) should have been denied in view of the famous earlier mark WIND STOPPER (depicted below) of W L Gore & Associates Inc (makers of the GORE-TEX®-branded products)

 

Under the usual Korean examination practice, the compared marks would probably have been found to be dissimilar, as their non-distinctive parts would likely have been ignored (ie, the red octagonal shape and the word ‘wind’), and the examination would likely have focused on the distinctive elements (‘wind cool’ v ‘wind stopper’, or ‘cool’ v ‘stopper’ only).

However, the IPT stated that, because the marks should be compared in their entirety, the red octagonal shape should not be ignored in the analysis, even if it was not distinctive. The IPT found that the graphical elements and the overall presentation of the marks (eg, the red octagonal shape, the fact that the signs were organised on three lines inside the shapes, and the use of capital letters and similar fonts for the word elements) were very similar. The IPT found that such similarity was likely to cause consumer confusion if the marks were used on the same or similar goods, as the overall impression given by the marks was highly similar. The IPT thus concluded that the WIND COOL mark should be invalidated due to its similarity with Gore's famous WIND STOPPER mark.

It remains to be seen whether this decision will be followed by other Korean administrative bodies or courts. If so, this more flexible approach will clearly provide a greater scope of protection to owners of trademarks consisting mainly of non-distinctive or weakly distinctive elements.

Min-Kyoung Jee and Alexandra Bélec, Kim & Chang, Seoul

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