Plaintiff filed a trademark application with the Korean Intellectual Property Office (KIPO) and this trademark application was refused on grounds that the trademark is formed merely by the shape of designated goods “sport shirt” and that the trademark is very descriptive. Thus the KIPO held that it should fall under Article 6(1)(iii) and 6(1)(vii) of Korean Trademark Act and deemed that the trademark has not acquired a secondary meaning through use. The Plaintiff filed for an appeal against the KIPO’s decision and the Korean Intellectual Property Tribunal (KIPT) rejected the claims of the appeal for the same grounds of the KIPO.

 

The Plaintiff appealed against the KIPT’s decision before the Korean Patent Court. The Korean Patent court rejected the Plaintiff’s claims based on the following reasons. (1) The subject mark consists of only the shape of the designated goods and the shape of the sport shirt marked in dotted line that merely shows a form of a typical “sport shirt, sport jacket.” Thus the subject mark is not distinguished as a trademark and three bold solid lines from ribs to waist are deemed to be a simple pattern of a decoration and cannot be deemed to be an independent distinguishing device. (2) As to the submitted evidence of usage, it was insufficient to hold that the plaintiff solely has used the three solid line from ribs to waist to acquire a secondary meaning and even in case three bold solid lines were used related to the goods, most of the use evidences had other trademarks devices of the plaintiff’s that displays the source of origin. Therefore, it was questionable whether the three bold solid lines were used to hold out as the source of origin of the goods.

 

The Plaintiff filed for an appeal with the Korean Supreme Court. The Supreme Court  decided en banc to reverse the Patent Court’s decision and to remand the case back to the Patent Court.

 

 

 

The Korean Supreme Court stated that a position mark is defined as『a sign, a character, a figure or any combination of these formed of shapes or patterns and these shapes or patterns are to distinguish the origin of the goods where attached at a special position.』And the Supreme Court decided that a position mark may be acknowledged as a type of trademarks if the definition of trademark regulation in accordance with the Trademark Act were to be interpreted.

 

 

The Korean Supreme Court mentioned that a Plaintiff’s intention regarding the main portion of a position mark should be considered.

 

It is necessary for a position mark to show and explain where the designated position of goods as a trademark is, and in order to explain the position mark clearly, it is inevitable to indicate the shape of the designated goods. However, because the Plaintiff expressed his intention through various stages using the dotted lines to limit the scope of right, and viewers could understand the Plaintiff’s intention easily that the shape of the designated goods is only for explaining the position mark, it is reasonable that the mark’s main portion is about a specific position and not about the shape of the designated goods.

 

The subject mark’s main portion is only three bold lines marked in solid lines from rib to waist and, not the shape of sport shirt marked in dotted lines. So the subject mark is not

descriptive of the designated goods. And due to the fact that the position of the mark would bring about very special meaning through a long term usage, the subject mark definitely should be accepted as a position trademark and be registered based on secondary meaning.

 

 

This decision is meaningful regarding as following points.

 

(1)   This case is the first ruling that holds that the position mark may be considered as a type of trademark based on interpretation of the definition of trademark regulation even though it is not expressedly regulated by the Korean Trademark Act.

(2)   Also, the ruling stated that although there is no disclaimer procedure yet in Korean Trademark Act, the Plaintiff’s clear intention expressed by dotted lines through the examination procedure should be considered in determining what the claimed trademark’s scope of protection is. As a result, the use of dotted lines of trademark’s shape may be interpreted as disclaimers.

(3)   Finally, it is possible for foreigners to file position marks in Korea in the future based of the ruling.