Region: South Korea

Supreme Court: titles of musical productions may be protectable as source identifiers

In a case involving the well-known musical <I>Cats</I>, the Supreme Court has held that the title of a production can be protectable under the Unfair Competition Prevention and Trade Secret Protection Act if the production has been staged enough times to cause its title to become associated with the party responsible for the production. This is the first time that it has been clearly confirmed that the title of a musical production can be protected as a source identifier.

05 October 2015

Mark consisting of non-distinctive elements can be distinctive as a whole

The Patent Court, rejecting the overly literal approach to distinctiveness followed by KIPO and the Intellectual Property Tribunal, has held that the mark AMERICAN UNIVERSITY can be registered for university education and instruction services. This is a potentially encouraging development for owners of foreign marks consisting of non-distinctive elements who wish to register their marks in Korea.

30 September 2015

IP Tribunal takes weakly distinctive elements into account in similarity analysis

In <I>W L Gore & Associates Inc v Lee Gil Woon</I>, the Intellectual Property Tribunal of KIPO has held that the figurative mark WIND COOL should be cancelled based on Gore’s famous earlier mark WIND STOPPER. In doing so, the tribunal adopted a more flexible approach to the assessment of similarity, taking into account the non-distinctive elements of the marks.

24 July 2015

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

The Supreme Court has upheld a decision of the Patent Court rejecting KIPO’s amended examination guidelines pertaining to 3D trademarks. The Supreme Court agreed with the lower court that the distinctiveness of a 3D mark should be determined in the same manner as for any other trademark - that is, the examination should take into account all the elements of the mark and should not be limited to the 3D shape alone.

02 June 2015

Hermès successfully protects rights in design of Birkin and Kelly bags

The Seoul Central District Court has issued an injunction order against Suwa United Corporation for violating the new catch-all provision of the Unfair Competition Prevention Act. Suwa United is now prohibited from manufacturing or selling polyester bags on which images of Hermès' iconic Birkin and Kelly bags are printed.

25 March 2015

Landmark decision puts the freeze on copying ice cream shop's trade dress

In the first ruling of its kind, the Seoul Central District Court has recognised that a shop's general appearance and decorative elements can be protectable trade dress under the Unfair Competition Prevention and Trade Secrets Act. The operator of a dessert café chain had sued the franchisor of a similar chain for unfair competition on the basis that the latter was copying the plaintiff’s signature dessert and the unique appearance of its cafés.

29 January 2015

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

Under KIPO’s amended examination guidelines for 3D marks, the distinctiveness of a 3D mark must be determined based only on the shape itself, without considering any other elements which may be part of the mark. In a recent case involving a 3D mark representing an artificial hip joint ball, the Patent Court has rejected KIPO’s methodology, holding that, when determining the distinctiveness of a 3D mark, one must consider the mark in its entirety.

21 November 2014

Batch examination now available for IP applications

KIPO has announced that batch examination is now available for all types of IP applications. Batch examination allows an applicant to pool together multiple IP applications related to a common product into one examination basket to be processed according to the applicant's designated timeline. Batch examination will streamline the examination process, while making it faster and more consistent.

01 October 2014

'Spa' held to have lost distinctiveness in Korean cosmetic industry

The Supreme Court has confirmed a decision of the Patent Court in which the latter had held that the term ‘spa’ is no longer distinctive for cosmetics in Korea, and has not been distinctive since at least 2012. The decision is significant because the Supreme Court had recognised in 2003 that the term ‘spa’ was distinctive in the Korean cosmetic industry in around 1999.

24 September 2014

Amendments to Trademark Act take effect

Amendments to the Korean Trademark Act, which apply to marks filed from June 11 2014, have introduced important changes. Among other things, it is now easier to prove that a mark has acquired secondary meaning, and the registration of a mark that may dilute the distinctiveness and/or reputation of a famous mark is not permitted.

19 September 2014

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