Patent Court rejects KIPO's examination guidelines for 3D trademarks

South Korea

The amended examination guidelines of the Korean Intellectual Property Office (KIPO) regarding three-dimensional (3D) trademarks have been controversial ever since they came into effect on March 5 2012. Prior to the amendment, KIPO would simply evaluate the overall distinctiveness of 3D trademarks much like any other trademark. However, KIPO's amended examination guidelines provided that the distinctiveness of a 3D trademark must be determined based only on the 3D shape itself, without considering any other elements which may be part of the mark, such as symbols, letters and figures. This change has been the subject of much debate, as many in the legal field argued that the amended examination guidelines are too narrow in scope.

This issue was presented before the Patent Court, which recently reviewed an appeal of a rejection by KIPO of an application for the registration of a 3D trademark designating artificial hip joint balls, depicted below.

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KIPO had rejected the application on the basis that the 3D shape lacked distinctiveness, while refusing to consider the distinctiveness of the English characters ‘BIOLOX delta’ in its review.

The Patent Court rejected this methodology, holding that ‘BIOLOX delta’ should have been considered together with the 3D shape when judging the distinctiveness of the mark. As a result, the Patent Court found that the 3D mark was distinctive overall, ignoring KIPO's examination guidelines (Patent Court Case 2014Huh2344, September 19 2014).

The Patent Court further stated that KIPO's amended examination guidelines for 3D trademarks were adopted solely for the convenience of KIPO's own internal review process (and were thus impliedly illegitimate). The Patent Court ruled that the scope of protection of 3D trademarks is to be determined by reference to all of their elements, including shapes, symbols, letters and figures, and should not be limited to the 3D shape alone. In other words, when determining the distinctiveness of a 3D mark, one must consider the mark in its entirety, just as with any other trademark.

By rejecting KIPO's amended guidelines, the Patent Court's decision restores a reasonable standard for determining the distinctiveness of 3D trademarks. KIPO has filed an appeal to the Supreme Court, which is currently pending.

Min-Kyoung Jee and Jason J. Lee, Kim & Chang, Seoul

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