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IP Newsletter | Winter 2017/18
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TRADEMARK, DESIGN & UNFAIR COMPETITION
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KIPO Amends Trademark Examination Guidelines and Classification System
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The Korean Intellectual Property Office (KIPO) recently amended its trademark examination guidelines and classification system, effective as of January 1, 2018. The amendments are summarized below.
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1. Distinctiveness of 3D Trademarks
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The guidelines previously stated that a 3D shape essentially functions as a design and not a source identifier, and that secondary meaning is required to obtain a trademark registration for a 3D shape unless it is combined with a distinctive element. Accordingly, KIPO examiners normally rejected applications for a 3D shape, even if the shape had no intrinsic connection to the designated goods or services.
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The above guideline has been replaced with the following guidelines for determining the distinctiveness of 3D marks:
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If a 3D trademark is for the product configuration itself, the distinctiveness of such a mark cannot be admitted except in combination with a trademark element that is distinctive.
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However, if a 3D mark is not for the shape or form of the product itself, and the shape is not common but very unique for such products or services (e.g., a lion-shaped shape for car), distinctiveness can be admitted.
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2. Distinctiveness of University Names
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The following guideline has been introduced for determining the distinctiveness of a university name:
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A mark which consists only of a famous geographical indication and the term "university" is not distinctive. However, if the combination mark is recognized as a trademark which indicates a specific source in an "education related field," then depending on the length of time the mark has been in use, the extent to which it has been advertised, and the size and nature of the university, secondary meaning can be admitted. The new guideline also states that "education related field" covers not only the provision of lectures, but also other aspects of a university's operations, such as clothing sales, food sales, etc.
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3. Change to the Goods Classification System
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KIPO has reclassified some goods into other classes to better reflect current market situations and international standards.
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The most notable change affects "health functional foods" (which usually bear health specific/function claims and are regulated). Under the previous classification system, "health functional foods" were classified based on their ingredients. For instance, "fruit based health functional foods" were classified in Class 29 while "grain based health functional foods" were classified in Class 30.
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Now, all "health functional foods" are classified in Class 5, irrespective of their main ingredients, which is in line with the Nice Classification system.
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Note, however, "health supplementing foods" which are categorized as "general foods" (since they do not contain sufficient amounts of any functional ingredient to be "health functional"), are still classified based on their main ingredients. That is, "fruit based health supplementing foods" are classified in Class 29 while "grain based health supplementing foods" are classified in Class 30.
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Back to Main Page
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If you have any questions regarding this article, please contact:
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For more information, please visit our website: www.ip.kimchang.com
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