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Have you received a notice of reasons for refusal after applying to register your trademark?
There are many different types of trademark grounds for refusal, but one of the most common grounds for refusal is grounds for distinctiveness in trademarks (Trademark Act Article 33 Paragraph 1).
This article explains refusals under Article 33(1), how to assess distinctiveness, and the implications for filing strategy.
Article 33 (1)
Trademarks falling within the following categories
generally cannot be registered, subject to the applicable statutory exceptions.
Article 33(1) of the Trademark Act states that trademarks that are subject to certain conditions cannot be registered.
This provision prohibits the registration of trademarks that make it impossible for the consumer to distinguish the goods, i.e. trademarks that do not have distinctiveness.
Thus, Article 33(1) of the Trademark Act lists the reasons why trademark registration is not permitted as follows:
No.1
Marks consisting solely of the generic name of the goods in an ordinary form
Common names are generic abbreviations, slang and other names that are actually used and recognized by the trading system that handles them.
For example, 'Chair' for chairs or 'Juice' for juice cannot ordinarily be monopolized as a trademark.
No.2
Marks customarily used for the goods
A customary mark is an indication commonly used by traders in the relevant field. It may consist of symbols or figures as well as words.
Examples of customary marks include “-TEX” for textiles, “-kkang” for snacks and “jeongjong” for clear rice wine. Although less generic than ordinary product names, customary marks similarly lack distinctiveness.
In other words, if the operator of a telecom company uses "communication" as a trademark, it's not possible because it's a generic name. If you use "NET" as a trademark, it's not possible.
No 3The goods’ place of origin, quality, raw materials, effects, purpose, quantity, shape, price, production method or processing method…Trademarks that indicate how or when to use them normally.
Descriptive marks directly convey characteristics of goods. Although commercially attractive, such expressions generally need to remain available for others to use and may lack the distinctiveness needed for registration.
Examples include 'chodang tofu' for tofu and 'SILK' for blouses. Laudatory expressions such as 'Best,' 'No. 1,' or 'Super' may also lack distinctiveness, depending on the mark and the goods.
No.4A trademark with a prominent geographic name or abbreviation.
A prominent geographic name is a sign that the term itself conveys an immediate sense of geography to the general population.
For example, a trademark of a word associated with a designated goods or a remarkably recognized geographic designation cannot be registered, such as Jangchung-dong, Shindang-dong, Tteokbokki, Jongro Academy, and OXFORD.
No. 5Trademarks marked with a common last name or name
A common surname or name is one widely perceived as occurring frequently, including names of individuals, entities, organizations, or businesses.
Whether a term is a well-known geographical name is assessed from the perspective of ordinary consumers at the time of the registration decision. The ground for refusal can apply regardless of whether the name is written in Korean, Chinese characters or English.
Combinations of common surnames, such as 'Kim & Park' or 'Lee & Choi,' may be refused on this ground. A combination containing an uncommon surname, such as 'Kim & Yong' or 'Lee & Seol,' may be assessed differently.
No 6A simple and common trademark.
1. Word marks
The article describes simple word marks made up of a single Korean character or no more than two alphabetic characters as unregistrable, giving “ga”, “DY”, “α” and “Ω” as examples.
2. Numerical marks
For numeric marks, the article discusses refusals of numbers with two or fewer digits, combinations of tens with symbols such as +, −, ×, ÷ or =, and combinations with non-distinctive elements. It also identifies ordered sequences such as 12345 as falling within the cited refusal ground. It contrasts these with combinations using & or repeated identical numbers.
3. Figurative marks
For figurative marks, ordinary circles, triangles, squares, diamonds, the Buddhist manji symbol, samtaegeuk motifs and identical representations of such common shapes or patterns may fall within the refusal ground discussed.
No 7Other marks, beyond the categories in subparagraphs 1 to 6,that do not enable consumers to identify the commercial source of the goods
In the case of the 7th, it is not possible to list all trademarks without distinctiveness, so it was legislated to supplement the 1st through the 6th.
This residual category covers marks that consumers do not perceive as identifying a particular source, including indications unsuitable for exclusive appropriation in the public interest.
For example, marks such as "Good Morning" and "Be Smart" are used as general slogans, without any distinctiveness. "LAND, MART, PLAZA, OUTLET, HOUSE, TOWN, TOWN, TOWN, and Yard" are also commonly used in the sense of location.
How to Register a Trademark without Distinctiveness?
- Acquired distinctiveness through use
Article 33(2) permits registration for certain categories of initially non-distinctive marks where use before filing has enabled consumers to recognize the mark as identifying a particular source. The exception does not apply indiscriminately to every refusal ground.
For example, it was originally an expression of the characteristics of a product, but it was recognized as a unique brand among consumers through steady marketing and use, and has been registered as a trademark.
To prove this, we need a variety of proof of use, including actual sales, advertising and promotional activity, and consumer awareness surveys. The important thing is to prove that “consumers are perceived as the trademark of a particular person.”
- Combining components with distinctiveness
Combining a non-distinctive expression with a distinctive element may make the mark as a whole registrable.
The article gives Haitai's pear drink as an example: '갈아만든 배' describes processing and ingredients, while the composite mark '해태 갈아만든 배' adds the distinctive company name 'Haitai.'
In other words, when viewed as a whole, it's important to make sure that consumers feel distinct. Even common words such as ‘NATURE JUICE’ and ‘THE REAL APPLE’ can be used to give uniqueness through new combinations, or to combine company logos and unique graphics to give distinctiveness to the entire trademark.
In summary, it is not necessarily possible to register with a trademark that does not have distinctiveness. (1) It is possible to obtain consumer awareness through long-term use, or (2) it is possible to register in a manner that enhances the perception of the entire mark, in combination with other elements of distinctiveness. In particular, if you are carefully developing a trademark strategy during the initial planning phase of your brand, it is important to choose a name that avoids rejection from the start.
Distinctiveness Review Method
Lack of distinctiveness is a common ground for refusal and should be assessed before filing.
However, judging which marks have distinctiveness cannot be determined simply by appearance. The various factors should be considered comprehensively, and the following criteria are the key to discretion in practice.
- Review of the relationship between trademark and designated goods
Depending on which product is used, the exact same word is different.
For example, the word “APPLE” cannot be registered as a generic name for fruit products, but it can be registered as a unique brand for electronic products. And while ‘SILK’ is a descriptive mark of quality when used in clothing, it can be recognized by cosmetic brands as a mark of distinctiveness. In other words, the label itself cannot determine whether a registration is possible, and it must be judged with the designated goods.
- Reviewing trademark's components
It's important to know what the marker is made of. Trademarks consisting of common words such as common names, idioms, and descriptive marks are difficult to register in principle. Numbers, simple symbols, common surnames, and simple shapes can be determined to have no distinctiveness. However, the inclusion of shapes, unusual combinations, unique names, and symbolic expressions can result in overall distinctiveness . In other words, it is important to judge by the overall impression (whole-marking) and whether a part of the component with distinctiveness can be recognized independently.
- Ordinary consumers' perception
The patent assesses distinctiveness based on the average perception of the consumer, not the perspective of the professional or business. In other words, the point is whether the consumer sees the trademark as a mere description or information, or as a brand. Consumer research results, market awareness, and frequency of media exposure can affect judgment.
Strategies to improve the potential of trademark registration
Where a proposed mark has weak distinctiveness, consider approaches such as:
1. Combining a distinctive company name with a descriptive product name
2. Unique shape combination: with logo, symbolic image
3. Creating a genuinely distinctive coined term or combination, assessed in relation to the goods
Even common words can be branded according to how they are expressed, so you need a strategy for word selection and visual composition.
This article reflects the information available when it was published. Contact us to discuss your circumstances.