Supreme Court rejects KIPO's examination practice for 3D marks

South Korea

The Supreme Court has upheld a decision of the Patent Court rejecting the Korean Intellectual Property Office's (KIPO) amended examination guidelines pertaining to three-dimensional (3D) trademarks (Decision 2014Hu2306, February 26 2015).

The Supreme Court agreed with the Patent Court that the distinctiveness of a 3D mark should be determined in the same manner as for any other trademark, by reference to all its elements - including shapes, symbols, letters and figures - and should not be limited to the 3D shape alone, as dictated by KIPO's amended examination guidelines.

In particular, the Supreme Court indicated that the Patent Court had properly considered all elements of the trademark application at issue, which consisted of the shape of artificial hip joint balls (depicted below), including both the non-distinctive 3D shape and the distinctive English characters ‘BIOLOX delta’, when determining the overall distinctiveness of the mark.

The Supreme Court also clarified that, if a 3D trademark is registered as being distinctive overall, but the 3D shape itself lacks distinctiveness, the registered trademark rights do not extend to the shape alone. Therefore, even if a 3D trademark is registered, it does not necessarily mean that other parties are excluded from lawfully using the 3D shape if the shape itself lacks distinctiveness.

In view of the Supreme Court's decision, a further revision of KIPO's examination guidelines is expected to be issued in due course.

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

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