Can my trademark be registered?
We'd like to introduce how to determine the odd that a trademark will be registered.
In order for a trademark to be registered and protected, trademark must meet the following requirements:
1. It must have a distinctiveness.
The Trademark Law (Article 33, Paragraph 1, No. 7) requires distinctiveness as a requirement for trademark registration.
(1) Meaning of distinctiveness
The distinctiveness of a trademark is the ability to distinguish one's product from another seller's product (Sungjo Jong, Park Jun Suk, Intellectual Property Law, Hong Munsa (3rd Edition), 2019, p. 586).
(2) How to judge distinctiveness
Whether the mark used for a product is distinctive or descriptive depends on whether the consumer recognizes from the mark as meaning the nature or material of the product or whether he or she has to imagine a certain relationship between the mark and the product(imagination test). If the consumer can immediately recognize the origin or quality of the product from a particular mark, the mark is a descriptive mark and cannot be registered, but if the consumer can only indirectly determine the quality of the product, etc., through a certain imagination from the particular mark, it is an implied trademark and you may register it(See Id. page 588).
The distinctiveness power of the combined trademark composed of non-identifiable characters is basically that both the consumer and the trading system see the whole mark as one and identify the source. Rather, it determines whether it is discernible as a whole (See Id. p. 591). This is called the anti-dessection rule.
The precedents (the Supreme Court decision of May 24, 1994, 265, etc.) appear to be basically based on the the anti-dessection rule. But in the cases on distinctiveness of "combined trademarks'', the Supreme Court decided whether a new concept is derived or a new discernment is formed by combining each component that is not recognized. after deciding whether each components of "combined trademarks" is distinctive.
Korean cases that recognize the distinctiveness as a whole of a combined trademark consisting of a combination of non-identifying characters are 'STARCRAFT' (game), 'WONDERBRA' (bra), 'HOMEPLUS' (sweets), 'Colour Scents' (fragrance),' SKYPHONE '(Telecommunications Organization). On the other hand, Korean cases that concluded there is no new idea or a new discernment by combining letters, such as 'Speed 011' (communication business).
(3) Indistinctive Trademarks
The Trademark Act (Article 33, Paragraph 1, No. 1, No. 6) specify trademarks that cannot be registered because it is indistinctive. A trademark consisting solely of a mark indicating, in a common manner, the common name of the goods; A trademark used customarily in connection with the goods; A trademark consisting solely of a mark indicating, in a common manner, the place of production, quality, raw materials, effect, usage, quantity, shape, price, method of production, method of processing, method of use or time of the goods; A trademark consisting solely of a conspicuous geographical name, the abbreviation thereof, or a map; A trademark consisting solely of a mark indicating a common surname or name according to the method in common use; A trademark consisting solely of a simple and readily available mark; a trademark which is unrecognizable for consumers to identify which goods related to whose business it indicates.
2. It must not fall into the categories which the Trademarks Act states can not be registered.
The Trademarks Act (Article 34) prescribes why a trademark cannot be registered as a trademark for public or private interests, even if it is a distinctive trademark.
(a) Any trademark identical or similar to the national flag, the national emblem, the colors, medals, decorations or insignias of the Republic of Korea, or seals or signs used for supervision or certification by the Republic of Korea or public institutions;
(b) Any trademark identical or similar to any national flag of a country of the Union to the Paris Convention for the Protection of Industrial Property (hereinafter referred to as the "Paris Convention"), of a member of the World Trade Organization, or of a Contracting Party to the Trademark Law Treaty (hereafter in this paragraph, referred to as "countries of the Union, etc.");
(c) Any trademark identical or similar to the title, abbreviated title, or mark of the Red Cross, the International Olympic Committee, or a renowned international organization: Provided, That where such organization has applied for trademark registration of its title, abbreviated title, or mark, trademark registration may be obtained;
(d) Any trademark identical or similar to coats of arms, flags, medals, decorations or badges of the countries of the Union, etc. designated by the Commissioner of the Korean Intellectual Property Office after notification by the World Intellectual Property Organization pursuant to Article 6-3 of the Paris Convention, or titles, abbreviated titles, coats of arms, flags, medals, decorations or badges of inter-governmental international organizations which countries of the Union, etc. have joined: Provided, That where an inter-governmental international organization which the countries of the Union, etc. have joined applies for trademark registration of its title, abbreviated title, or mark, trademark registration may be obtained;
(e) Any trademark identical or similar to seals or signs used for supervision or certification by countries of the Union, etc. designated by the Commissioner of the Korean Intellectual Property Office after notification by the World Intellectual Property Organization pursuant to Article 6-3 of the Paris Convention or their public organizations, which is used for the goods identical or similar to those for which such seals or signs are used;
3. You must be willing to use the trademark.
Article 3 of the Trademark Act states that "Any person who uses or intends to use a trademark in the Republic of Korea may obtain registration of his/her trademark"
Therefore, in principle, trademarks without intention to use cannot be registered, but in practice, many trademarks without intention have been registered because it is very difficult to identify the intention of applicants.
As a complementary measure, Article 119 (1) 3 of the Trademark Act allows a request for trial to cancel a trademark registration if the registered trademark has not been used in the domestic market for more than three years prior to the request for trial of cancellation.