Region: South Korea

Comprehensive new amendments to the Trademark Act

The National Assembly has recently approved major amendments to the Trademark Act which will come into effect on September 1 2016. These are the first comprehensive amendments to the act in 26 years.

11 May 2016

Korea’s new ‘dominance’ in global design filings is almost entirely accounted for by single applicant (you know who)

The World Intellectual Property Organisation recently released annual data for industrial design filings under the Hague System; this is the first year in which Japan and the United States, and the second year in which South Korea, have been members of the scheme. All three countries now appear to be major players when it comes to design rights, as Korean press reports suggest – but a closer analysis of the statistics tells a different story.

15 April 2016

Court confirms that store's appearance is protectable trade dress

In a case involving rival bakeries, the Seoul Central District Court has confirmed that a shop's general appearance is protectable trade dress under the Unfair Competition Prevention and Trade Secrets Act. Among other things, the court held that the appearance and design elements claimed by the plaintiff as its trade dress had been produced through considerable effort and investment on its part for the purpose of distinguishing itself from other bakeries.

27 November 2015

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

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