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| IP Newsletter | Spring 2014 |
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TRADEMARK, DESIGN & COPYRIGHT |
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"N" Means New Life for Non-Distinctive Portions |
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The Supreme Court en banc ruled that a mark similar to an inherently non-distinctive portion of a registered mark, which had acquired secondary meaning in the Korean market place after registration, falls within the scope of protection of the registered mark (Case No. 2011hu3698, rendered on March 20, 2014). |
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The facts: New Balance vs. Unistar |
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New Balance obtained a registration for the following device mark in 1984:
A competitor, Unistar, later started using the  mark for its shoe products in the Korean market. |
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New Balance subsequently filed a scope confirmation action at the Korean Intellectual Property Office, which is an administrative action available under Korean law, to determine whether the use of Unistar's mark on shoe products fell within the scope of protection of New Balance's trademark registration. The case was eventually appealed up to the Supreme Court. |
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In its ruling, the Supreme Court noted that at the time New Balance's mark was registered, the  portion was not distinctive as merely the shape of a shoe, and the  portion was also not itself sufficiently distinctive to be granted registration. However, due to the extensive use by New Balance of the  portion on its products, the Supreme Court acknowledged that the portion of the mark had acquired secondary meaning beginning in 2009. |
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As the Supreme Court further found that the  portion of Unistar's mark was similar to the portion of New Balance's registered mark, the Supreme Court concluded that Unistar's mark fell within the scope of protection of New Balance's registration. |
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Thus, the Supreme Court has established the principle that even if a registered mark or a portion of a registered mark has weak or no distinctiveness at the time the mark is granted registration, said mark or portion of the mark may later acquire distinctiveness due to the use of the registered mark as a whole or in part, which must be considered in any later scope confirmation trial involving the mark. |
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Major Change in the Korean Practice |
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The Supreme Court acknowledged that this ruling was a major change to its jurisprudence, noting in its ruling that this decision overruled its previous 2007 decision in the A6 case (Case No. 2005hu728, rendered on December 13, 2007). In this prior decision, the Supreme Court had ruled that the  mark did not fall within the scope of protection of the  mark, the A6 portion of the latter mark being non-distinctive at the time registration had been granted for the mark. The court reached that decision despite the fact that the A6 portion of the registered mark had subsequently acquired secondary meaning in the marketplace. |
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This major change in Korean practice significantly broadens the scope of protection for owners of registered marks comprising inherently non-distinctive portions, since the owners' use of the marks may now lead to protectable secondary meaning even in such originally non-distinctive portions. |
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