IP Newsletter | Fall 2018
	TRADEMARK, DESIGN & UNFAIR COMPETITION
	Supreme Court Rules that the "AMERICAN UNIVERSITY" Mark Is Inherently Distinctive Based on Consumer Awareness Evidence
	The Supreme Court recently ruled en banc that the mark "AMERICAN UNIVERSITY" is sufficiently distinctive among Korean consumers to be registered in connection with university education services, instruction services, and other designated services (Case No. 2015Hu1454, rendered on June 21, 2018). The Supreme Court's reasoning is notable because it appears to hold that consumer awareness evidence can be used to prove the inherent distinctiveness of a mark in Korea, not just secondary meaning.
	Korean Trademark Act and Supreme Court Precedents
	Under the Korean Trademark Act ("TMA"), trademarks consisting of well-known geographical names are considered inherently non-distinctive ("a trademark consisting only of a well-known geographical name, its abbreviation or a map" cannot be registered (Article 33(1)(iv))).1 This remains true even if the mark is only similar to or evocative of a well-known geographical name (e.g., "Finlandia," or "British-American"). Further, combining a well-known geographical name in a mark only with other non-distinctive elements (e.g., "London Town," "Nippon Express," etc.) does not render the mark distinctive unless the combination creates a new concept or has distinctiveness that is separate from the geographical name. In addition, a mark composed of a well-known geographical name and a non-distinctive mark can also be rejected based on Article 33(1)(vii), which prohibits the registration of non-distinctive marks in general.
	However, like other inherently non-distinctive marks, a mark comprising a well-known geographical name can be registered for specific goods if it has acquired sufficient secondary meaning through use to be recognized as a specific source by Korean consumers (Article 33(2)).
	Supreme Court Decision
	The Supreme Court decision began by determining that "AMERICAN" was a well-known geographical name, and that "UNIVERSITY" was merely a descriptive mark relating to the designated services (such as university education services and instruction services), suggesting that "AMERICAN UNIVERSITY" should be considered inherently non-distinctive under Article 33(1)(iv). The Supreme Court then analyzed various facts relating to the use of "AMERICAN UNIVERSITY," including (i) the more than 120 years of American University's existence, (ii) the size of the university, including over 10,000 students, (iii) the fact that American University offers various educational programs in cooperation with many Korean universities, (iv) American University's advertising expenditures of over USD 18,150,000 per year between 2003 and 2012, (v) the 8,500,000 visitors to the American University official website in 2012, (vi) American University's presence in rankings published by numerous prominent media outlets, including U.S. News & World Report which ranked American University 77th among U.S. national universities in 2013, and (vii) the number of blogs (59,761) and online cafes (22,770) relating to American University on www.naver.com, the most popular portal site in Korea, which indicated that many people searched for "AMERICAN UNIVERSITY" online in Korea. On the basis of these facts, the Supreme Court determined that "AMERICAN UNIVERSITY" was quite well-known among Korean consumers, particularly the numerous Korean students preparing to study in the U.S., in connection with the designated services.
	Interestingly, the Supreme Court then concluded that the "AMERICAN UNIVERSITY" was distinctive because it constituted a new concept with substantial distinctiveness in connection with university education services. In other words, the Supreme Court decided that the facts showing the well-known nature of the "AMERICAN UNIVERSITY" mark actually rendered the mark inherently distinctive and not covered by Article 33(1)(iv) or (vii) of the TMA, not merely that the mark had acquired sufficient secondary meaning to be registered.
	Comments
	It should be noted that there were a number of concurring opinions, one of which pointed out that the Court was using consumer awareness from actual use as a basis for determining inherent distinctiveness, which seems to conflict with the usual notion that inherent distinctiveness should ordinarily be determined with reference to the mark alone. The concurrence also pointed out that under the majority's reasoning, it may be easier to use consumer awareness evidence to show that a mark is inherently distinctive rather than to prove secondary meaning (proof of secondary meaning would also require showing that (i) the mark was used before the trademark application was filed, and (ii) the mark has acquired distinctiveness for each specific good/service in the application). Other concurring opinions pointed out that only a few other jurisdictions worldwide deny the inherent distinctiveness of famous geographical names, unlike Korea.
	The decision confirms another recent Supreme Court decision that upheld the registrability of Seoul National University's "SEOUL UNIVERSITY" mark (in Korean). In that case as well, the Supreme Court held that the mark was not inherently non-distinctive under TMA Article 33(1)(iv) or (vii) because consumers were well aware that the combination of "SEOUL" and "UNIVERSITY" referred to a specific national university located in Seoul, and not any university in Seoul (Case No. 2014Hu2283, rendered on January 29, 2015). The "AMERICAN UNIVERSITY" decision (as an en banc decision) not only clearly upheld this logic, but extended this reasoning to include Korean consumers' knowledge of universities located outside of Korea as well.
	The Supreme Court's en banc decision has confirmed that consumer perception should be taken into consideration when determining whether a mark comprised of non-distinctive and geographic elements has inherent distinctiveness in Korea. It remains to be seen whether the Supreme Court will apply this flexible approach to marks comprising other non-distinctive elements, such as generic names or descriptive terms.
	1 The case actually arose under Article 6 of the old TMA, which corresponds to Article 33 of the current TMA (effective September 1, 2016). For simplicity, this newsletter will refer to Article 33 only.
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