Why Trademark Applications Are Refused and How to Respond

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A trademark application must meet the requirements for registration. One of the first issues to assess is whether the mark is distinctive.

Distinctiveness is a mark’s ability to distinguish one person’s goods or services from those of others. Generic names and expressions that merely describe quality or function may therefore be ineligible for registration.

In this regard, Article 33, Paragraph 1 of the Trademark Act specifically stipulates cases in which trademark registration cannot be obtained due to lack of distinctiveness.

So, what grounds for rejection are stipulated in Article 33, Paragraph 1 of the Trademark Act?

In this article, we will look at the reasons for rejection set forth in each subparagraph 1 to 7 of Article 33, Paragraph 1 of the Trademark Act one by one, and organize in an easy-to-understand manner which cases may cause problems in the actual trademark application process.

In general, the presence or absence of distinctiveness is determined in relation to the designated good, and Article 33 (1) of the Trademark Act provides a limited list of reasons for disallowing trademark registration as trademarks that do not have distinctiveness for other products as follows.

It refers to a trademark that indicates the name of a specific product in relation to that product.

For example, if you apply for ‘Walnut Snack’ as a trademark for a confectionery product, ‘Pizza’ as a trademark for a pizza product, or ‘Toothpaste’ or ‘Toothpaste’ as a trademark for a toothpaste product, they cannot be registered as they are common names of the products.

This is a case where a mark becomes commonly used in the same industry over time for a specific type of product. To put it simply, it was initially a trademark of a specific company, but as many people continued to use it, it became a name used by everyone in the industry.

For example, “Beonggeolichaltteok” was found to have long been freely used by rice-cake businesses in Andong to refer to a particular type of rice cake and was therefore treated as a customary mark. Registration may be restricted when a sign is commonly used in the trade and no longer identifies a particular commercial source. 

It is stipulated that a trademark consisting solely of a mark indicating the origin, quality, raw materials, efficacy, use, quantity, shape, price, production method, processing method, use method or time of the product in a commonly used manner cannot be registered.

Simply put, this refers to a case where, rather than thinking of a specific company's product when looking at the trademark, it is perceived as simply explaining where the product was produced, what quality or raw materials it has, and for what purpose it is used.

Trademark registration is restricted because these expressions need to be freely used by multiple businesses selling the same product, rather than being allowed to be used exclusively by a specific business.

For example, ‘Yeonggwang’ as a trademark for Gulbi and ‘SILK’ for raw materials for blouses cannot be registered, and expressions that directly indicate the excellence or quality of a product such as ‘Best’, ‘No.1’, ‘Super’, ‘Premium’, etc. may generally be difficult to recognize as distinctive.

In this case, it refers to a geographical name that is significantly recognized by the consumer.

For example, trademarks consisting of only geographical names that are widely known to general consumers, such as Sindang-dong Tteokbokki, Hangang Fur, and Cheonmasan Gomtang, as well as trademarks that combine the geographical name with a name related to a designated good, may have difficulty in recognizing distinctiveness, so trademark registration may be restricted.

In general, this is a case where a commonly used name indicating a natural person's last name, corporation, organization, company name, etc., is indicated as normal.

For example, trademarks that combine commonly used surnames such as ‘Kim & Park’ and ‘Lee & Jeong’ may have their trademark registration restricted because their overall distinctiveness is not recognized. On the other hand, when common surnames are combined with relatively uncommon surnames, such as ‘Kim & Yoon’, ‘Park & ​​Seol’, and ‘Choi & Ram’, the overall distinctiveness is recognized and trademark registration may be possible.

This is a case where the composition is overly simple, but it is a mark commonly used in the trading community.

For word marks, a single Korean character or one or two Latin letters may be considered simple and commonplace. Examples include “A,” “AB,” “α” and “Ω”; registrability depends on the mark as presented.

In the case of numeric trademarks, marks consisting of only two digits or less may be restricted from registration as they are simple and common marks. Additionally, it is difficult to register a trademark when the 10-unit number is combined with a sign such as ‘+’, ‘-’, ‘×’, ‘÷’, or ‘=’, or when the 10-unit number is combined with a non-distinguishing mark.

However, even if the number is over 100, if the numbers are simply listed in order, such as ‘12345’, the grounds for rejection under Paragraph 6 may apply. However, if numbers are combined using the ‘&’ symbol or the same numbers are repeated, distinctiveness may be recognized and trademark registration may be possible.

In the case of geometric trademarks, marks consisting of only simple shapes or patterns commonly used in the trading community, such as circles, triangles, squares, diamonds, and crosses, may be restricted from registration because their distinctiveness is difficult to recognize. Additionally, even if these shapes or patterns are simply displayed repeatedly in the same form, it may be grounds for rejection under subparagraph 6.

Even if it does not directly fall under types 1 to 6, it is a commonly used expression that makes it difficult for the consumer to identify the source of the product from a specific person.

For example, general greetings, exclamations, advertising phrases, or everyday expressions such as ‘Hello’, ‘THANK YOU’, ‘GOOD LUCK’, ‘WOW’, ‘I CAN DO’, ‘Believe it or not’, ‘www’, etc. may be difficult to recognize as trademarks indicating the origin of a specific business when used alone.

There is a way for trademarks without distinctiveness to be registered if they meet certain requirements.

Even if a trademark did not have distinctiveness at first, if it has been used in actual business for a long period of time and consumers come to recognize that “this trademark is a product of a specific company” when they see the trademark, it can be acknowledged that the trademark has gained distinctiveness. 

“K2” is the well-known name of a mountain, so its inherent distinctiveness for hiking footwear and mountaineering goods could be questioned. In the cited case, acquired distinctiveness was recognized in light of long-term use, nationwide advertising, substantial sales and a high market share for hiking and safety footwear.

In order to be recognized, the acquired distinctiveness must be supported through objective evidence such as actual product sales performance, advertising and promotional activities, and consumer awareness survey data. Simply stating that the trademark has been used for a long period of time is not sufficient; the key is to prove whether consumers recognize the trademark as a product or service of a specific person during actual transactions.

Combine a non-distinctive element with distinctive wording or graphics so that the mark as a whole can identify a commercial source.

For example, if only the general name of the product, ‘Sikye,’ is used as a trademark, it is difficult to recognize its distinctiveness. However, if you combine this with a distinctive mark that can indicate the source of a specific person, such as ‘Birak Sikhye,’ there is a possibility that it will be recognized as a trademark that can identify the product of a specific person as a whole.

Rather than monopolizing words or expressions that lack distinctiveness, you can consider combining distinctive letters or shapes to give originality and distinctiveness to the overall trademark.

In principle, the descriptiveness under Article 33, Paragraph 1, Item 3 is judged in relation to the designated good. Therefore, if an expression directly indicates the quality, raw materials, efficacy, etc. of a product in a specific product, but is not recognized as such in a completely different product, there is a possibility that its distinctiveness may be recognized.

For example, SWEET means ‘sweet,’ so when used in snacks, candies, chocolate, etc., it can be seen as an expression that directly represents the quality or nature of the product.

However, the story may be different if the same SWEET is used for furniture or machinery that is less directly related to the product. In other words, you can consider adjusting the designated good depending on whether SWEET directly describes the quality of the product.

This is the most important criterion. Check whether the trademark directly describes the name or characteristics of the designated good. The key is to judge these two things together: ‘the meaning of the trademark + the relationship with the designated good.’

Check whether it is an expression that only certain businesses use, or whether it is an expression that everyone in the same industry needs to use. If it is an expression that is commonly used by multiple businesses to describe the characteristics or quality of a product, it is difficult to recognize its distinctiveness.

It is the most essential criterion for judging a trademark. When general consumers see the mark, it is examined whether they perceive it as a “word that explains what kind of product it is,” or as a “brand name that tells them which company’s product it is.” This is to see whether consumers can recognize the mark as a product or service of a specific company. 

For example, if the label FRESH is used on fruit, consumers are likely to perceive it as an expression representing the characteristics of the product, “fresh fruit,” rather than a brand of a specific company. On the other hand, if the label “Chocorium, which is uniquely made,” is used on chocolate, consumers are likely to perceive it as a brand name used by a specific company rather than simply a description of the characteristics of the chocolate.

When it comes to combined trademarks, the overall impression is important, not the individual components. 

For example, if consumers can recognize a brand as a single brand by combining expressions that lack distinctiveness with unique coined words, letters, and shapes, there is a possibility that the overall distinctiveness will be recognized.

Even if a trademark originally lacks distinctiveness, if it is used for a long period of time and is recognized by consumers as representing the products of a specific business, its distinctiveness through use can be recognized if certain requirements are met.

However, this is not recognized simply by the fact that it has been used for a long time; it is judged comprehensively based on various data such as period of use, sales, advertising performance, market share, and consumer perception.

Even common words can develop into differentiated brands depending on how they are expressed and composed. 

Before applying for a trademark, it is important to develop an application strategy through an expert to increase the likelihood of registration by comprehensively reviewing the meaning of the word, its relationship with the designated good, and its overall composition.