Korea gets tough on non-distinctive foreign marks

South Korea

The Patent Court has upheld two decisions refusing registration for the terms 'angioguard' and 'rambase' on the grounds that they are descriptive. These decisions seem to confirm that Korean trademark examination practice is becoming increasingly strict on preventing registration of descriptive foreign trademarks.

In the first case, the Patent Court affirmed the Trademark Office examiner's decision to reject the registration of 'angioguard' (in English) for catheters for medical use (Case 02Hoe6831). The court found that (i) the term should be considered as two separate words and not a single word with a new meaning as 'angio' means 'blood vessels' and 'guard' means 'protect', and (ii) the traders or consumers of the designated goods are specialists familiar with English medical terminology. Thus, the mark should be considered descriptive and not distinctive enough to be registered.

In the second case, the court upheld the decision to reject registration of 'rambase' (in English) for computers and computer programs (Case 02Hoe2574). The court reasoned that as the mark is made up of 'RAM', which means 'random access memory', and 'base', which means 'foundation' or 'basis', its overall meaning of 'based on RAM' or 'operated on the basis of RAM' is too descriptive to warrant registration. The court also found that since the term's design is simple, it is not sufficiently distinctive to counteract its descriptiveness.

Although the second case is pending in the Supreme Court, the Patent Court decisions seem to signal a stricter approach to the issue of descriptiveness. Thus far, courts have often ruled that foreign words unfamiliar to general traders or consumers were sufficiently distinctive to be registered, even though they were in fact describing the quality, efficacy or use of the designated goods - a ground to refuse registration under Article 6(1)(3) of the Korean Trademark Law. The courts took the view that when determining the descriptiveness of a mark, "consideration must be given to the meaning of the mark, relationship with the designated goods and actual circumstances of business[...]".

The new stricter approach is welcomed in so far as it reduces potential problems caused by the lack of a disclaimer system in Korea. If 'angioguard' and 'rambase' were registered, for example, there would be little to prevent the mark owners from requesting exclusive right to the commonly used words 'angio' and 'RAM'. However, rejecting the registration of signs that may function well as trademarks also means that these signs will not benefit from any effective protection as (i) there is no supplemental registry in Korea (ie, a registry for descriptive marks for which secondary meaning has not been proven), and (ii) a very high level of fame is required for registration on the basis of distinctiveness gained through use.

Yoon Bae Kim, Kims & Lees, Seoul

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