Umbro logo kicked out of Korea

The Supreme Court of South Korea has rejected British sportswear company Umbro's application to register its diamond-shaped logo on the grounds that it is a symbol often used in Korea (Case 2006Hue3632, March 16 2007).

According to Article 6(1)(6) of the Korean Trademark Act, a sign that "consists only of a simple and commonplace mark may not be registered". The guidelines on trademark examination issued by the Korean Intellectual Property Office (KIPO) give the following examples of such signs:

• double circles (a small one situated with a larger one);
  
  
• double squares; and
  
  
• double diamond shapes.

The guidelines explain that these kinds of mark can be registered only if:

• they achieve secondary meaning;
  
  
• they have some other meaning transcending the original meaning; or
  
  
• they contain features that are distinctive enough to attract special attention from general consumers.

The KIPO examiners in charge of the Umbro application held that the mark fell within the definition of a simple and commonplace mark that lacks distinctiveness. They also held that, at the time of filing, the Umbro logo had not obtained secondary meaning in Korea. This position was upheld by the court on appeal. The Supreme Court has now also affirmed the rulings.

On appeal, Umbro filed evidence to support its claim that the mark had achieved secondary meaning at the time of filing in the form of advertising materials and invoices showing $1.12 million-worth of sales over a three-year period. However, the Supreme Court has consistently held that the standard to judge evidentiary materials purporting to prove that a simple and commonplace mark has achieved secondary meaning should be strict as accepting a lower standard of evidence would lead to the registration of marks that lack intrinsic distinctiveness. It appears that, in this case, the court found that Umbro's evidence did not meet the relevant criteria and accordingly, it dismissed the appeal.

Yoon Bae Kim, Kims and Lees, Seoul