Johnson & Johnson fails to register CLEAN & CLEAR

In Johnson & Johnson v Korean Intellectual Property Office (KIPO), the Patent Court has rejected Johnson & Johnson's (J&J) application to register the trademark CLEAN & CLEAR (and design) despite J&J's argument that the trademark had acquired distinctiveness due to the extensive use of its other device marks CLEAN & CLEAR (and design), CLEAN & CLEAR (and design) and CLEAN & CLEAR (and design) (Case 2007Hu3868, September 5 2007).

In the early 1990s, J&J made several attempts to obtain a trademark registration for CLEAN & CLEAR in connection with skincare cosmetics and soaps. J&J's applications were rejected by KIPO and the Korean courts on the grounds that the mark was descriptive. On November 13 1998 the Supreme Court held that CLEAN & CLEAR could not be registered on the following grounds:

• The words 'clean' and 'clear' describe the nature or effect of cosmetics and soaps; and
  
  
• The figurative element of the mark could not be considered as the dominant element and thus did not add to the distinctiveness of the mark (Cases 97Hu3005 and 97Hu3012).

In 2004 J&J filed a new application for the registration of CLEAN & CLEAR for cosmetics. It argued that the mark had acquired a secondary meaning through its extensive use in Korea over a long period of time. The Patent Court strictly applied the criteria for determining whether a mark has acquired a secondary meaning. The court concluded that the marks actually used by J&J in Korea were its other device marks, which differed from the trademark applied for. Accordingly, the court held that even if the marks used by J&J had acquired a secondary meaning through use, such acquired distinctiveness did not extend to the mark applied for.

This decision limits the possibilities of achieving secondary meaning. It is likely to affect potential applicants seeking to register an inherently non-distinctive mark by relying on the use of a similar trademark which contains the non-distinctive element of the mark applied for.

Sung-Nam Kim and Nayoung Kim, Kim & Chang, Seoul