Seed names not registrable as trademarks, Supreme Court rules

South Korea

The Supreme Court has put an end to a dispute regarding the relationship between trademark registrations and plant seed name registrations. It ruled that a plant seed name registered with the National Seed Management Office should be considered a common name and thus not registrable as a trademark (Decision 2003Hu1314, September 24 2004).

The Seed Industry Law provides that where a plant seed name is registered in South Korea or in any other country, the registered name must be used. However, this creates problems where the name is also registered as a trademark and leads to the question of whether only the mark owner can exercise exclusive rights over the name. There are two possible solutions.

The first option is to prevent seed names from being registered as trademarks. For instance, Article 4(1)(14) of the Japanese Trademark Law provides that signs that (i) are identical or similar to registered plant seed names, and (ii) apply to goods identical or similar to the plant seeds, are not registrable as trademarks.

The second option is to impose limitations on the trademark rights. For instance, Article 51 of the Korean Trademark Law provides that, among others, a person's own name, trade names or a common name for a type of goods can be freely used by others in certain circumstances, even when these names are registered trademarks.

The Korean courts have issued various opinions on the relationship between trademarks and seed names. This issue now appears to have been settled by the Supreme Court. The case stemmed from the attempt by a Korean individual to register the name HWARANG in Korean characters as a trademark for, among other things, apples and apple tree seeds. The examiner rejected the application on the grounds that the mark is a common name for apples. The individual appealed to the Industrial Property Tribunal (IPT), which upheld the examiner's decision.

The Patent Court overturned the IPT's decision, ruling that even where a seed name is registered with the National Seed Management Office, so long as it is not widely used and perceived as a plant seed name, it is not a common name under the Trademark Law. Therefore, Korean Law cannot prevent a plant seed name from being protected as a trademark (Decision 2002Hou7650, May 15 2003).

The Supreme Court remanded the Patent Court's decision, declaring that a plant seed name registered pursuant to the Seed Industry Law should be considered to have become a common name at the time of the seed name registration, rendering it unregistrable as a trademark pursuant to Article 6(1)(1) of the Trademark Law.

Yoon Bae Kim, Kims and Lees, Seoul

Get unlimited access to all WTR content