Mark consisting of non-distinctive elements can be distinctive as a whole
The Patent Court has held that the mark AMERICAN UNIVERSITY is sufficiently distinctive among Korean consumers to be registered for university education and instruction services, among other services. The Patent Court rejected the overly literal approach to distinctiveness of the Korean Intellectual Property Office (KIPO) and the Intellectual Property Tribunal (IPT), holding that even non-distinctive elements can make up a distinctive mark.
Both the examination bureau of KIPO and the IPT had previously ruled that:
- the mark AMERICAN UNIVERSITY was a mere combination of the well-known geographical term ‘American’ and the word ‘university’, which is a type of body or business providing the designated services; and
- the combination of these two words did not form a new concept or possess new distinctiveness.
As such, both the KIPO and the IPT rejected the mark under Article 6(1)(iv) of the Korean Trademark Act, which forbids the registration of marks consisting of well-known geographical terms, and under Article 6(1)(vii), which forbids the registration of non-distinctive marks.
On appeal, the Patent Court came to a different conclusion, finding that the mark referred to a specific university operated by the applicant. The court noted the history, student population, facilities, degree of fame in and outside of Korea, and internet search hits related to the university, and concluded that the mark was known to ordinary consumers of the designated services as the name of a specific university. The court also noted that university names consisting of a geographical name and ‘university’ are common, and that it is easy for consumers to determine that the mark AMERICAN UNIVERSITY in its entirety is a university name, by consulting information easily available on the Internet or other reference materials.
In other words, the court found that the mark did not convey only the general concept of a university located in the United States; there was a new concept and overall distinctiveness in the mark as the name of a university located in Washington DC. Therefore, the court held that Articles 6(1)(iv) or (vii) did not apply to the mark, and reversed the IPT’s decision.
KIPO appealed the Patent Court’s decision on August 11 2015, and the appeal is currently pending before the Supreme Court.
The Patent Court properly recognised that newly formed meanings or consumer perception should be taken into consideration when determining whether a mark consisting of non-distinctive elements should be granted a registration.
This is in line with the Supreme Court's recent decision acknowledging that Seoul National University's mark SEOUL UNIVERSITY (in its Korean translation) designating Class 5 should be granted a registration. The Supreme Court held that the mark SEOUL UNIVERSITY did not fall under Articles 6(1)(iv) or (vii) of the Trademark Act, as consumers were well aware that the combination of ‘Seoul’ and ‘University’ now refers to a specific national university located in Seoul, and not just any university in Seoul.
The Patent Court took the Supreme Court's reasoning one step further by implying that Korean consumers can be aware of universities even in the United States, and thus would have known that the mark AMERICAN UNIVERSITY is the name of a university based on information found on the Internet. While it remains to be seen whether the Patent Court's more flexible approach to distinctiveness will prevail, this is a potentially encouraging development for owners of foreign marks with non-distinctive elements wishing to register their marks in Korea.
Joo Young Moon and Nayoung Kim, Kim & Chang, Seoul
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