Earlier, we discussed that any source-identifying sign can be eligible for trademark registration. However, not all signs are registrable.
Since a trademark is a sign used to identify the source of a product, the sign itself must have the ability to serve that purpose. This capability is referred to as distinctiveness.
Understanding distinctiveness can be difficult. It refers to a trademark’s inherent ability to distinguish your goods from others. Essentially, you can think of it as the trademark’s ability to function as a brand.
However, it is not easy to define exactly what this ability to function as a brand entails.
Trademark law, therefore, does not define what constitutes a distinctive trademark. Instead, it specifies which trademarks lack distinctiveness. Anything that does not fall into these categories is presumed to be distinctive.
Categories of Non-Distinctive Trademarks
- Generic names of products
- Industry-standard terms (common descriptive signs)
- Descriptive signs (technical terms)
- Well-known geographical names and maps
- Common surnames or names
- Simple and commonly used signs
- Other non-distinctive signs (e.g., words indicating locations, slogans, phrases)
Why These Marks Cannot Be Registered
The common characteristic of these non-distinctive marks is that they should not be monopolized by a single entity.
Trademark registration grants exclusive rights to the trademark owner, meaning only they can use the mark for the designated goods, and others cannot register or use similar marks.
In other words, if it would be unreasonable for one person to monopolize the mark, the trademark application will be rejected.
This principle is known as adaptability for monopoly, which serves as a crucial criterion for determining distinctiveness. If monopolization by a single entity is reasonable (sufficient adaptability for monopoly), the mark is considered distinctive. Conversely, if monopolization is unreasonable (insufficient adaptability for monopoly), the mark is deemed weakly distinctive or non-distinctive.
Generic Names of Products
It is natural for people to refer to items by their generic names. Registering a trademark implies exclusive rights over that name, meaning only the trademark owner could use it, and others would not be able to refer to the product by its name.
Words like “apple,” “computer,” or “coffee” are generic names for their respective products.
This is unreasonable because generic names must remain freely usable by everyone.
For instance, although Orion has a product called “Choco Pie,” Lotte can also produce and sell a product called “Lotte Choco Pie.” This is because “Choco Pie” is a generic name that cannot be monopolized.
Orion once filed a lawsuit to invalidate the registration of Lotte Choco Pie on the grounds that it was similar to Orion Choco Pie. However, the Supreme Court ruled that “Choco Pie” is a generic name or common descriptive sign, and therefore, it cannot be monopolized. As a result, Orion Choco Pie and Lotte Choco Pie were not considered similar under trademark law.
What About ‘Apple’?
So, what about the well-known computer and smartphone manufacturer Apple? Isn’t “apple” a generic word in English for a fruit? Does this mean that generic English terms can be registered?
No. The same rules apply regardless of whether the term is in Korean, English, or any other language commonly understood by domestic consumers.
The reason “Apple” can be registered as a trademark is because it is used for goods like computers and smartphones. The generic name for those products is “computer” or “smartphone,” not “apple.”
In other words, even if a word is a generic name for one type of product, it is not considered generic for other types of goods. For example, you could theoretically register “chair” as a trademark for diet supplements because “chair” is not the generic name for those products.
Additionally, while a trademark composed solely of a generic name cannot be registered, it may be possible to register a trademark if the generic term is combined with other distinctive elements.
For example, the trademark “Choco Pie” cannot be registered by itself because it lacks adaptability for monopoly and distinctiveness. However, trademarks like “Orion Choco Pie” or “Lotte Choco Pie” can be registered unless there are other reasons for refusal. The addition of the distinctive elements “Orion” and “Lotte” provides sufficient distinctiveness to the trademark.
Industry-Standard Terms (Common Descriptive Signs)
Terms commonly used within an industry to refer to certain products cannot be registered as trademarks. Examples include “Obokchae” (a type of Korean herbal remedy), “Hamheung Naengmyeon” (a regional style of cold noodles), and “Jeongjong” (a type of sake).
Some common descriptive signs were originally developed as brand names but became so widely used as product names that they lost their distinctiveness. Examples include “Pong Pong” (dish detergent), “Scotch Tape” (pressure-sensitive tape), and “Magic Block” (a type of sponge cleaning pad).
This issue often arises due to poor trademark management. Trademark owners may focus solely on promoting the brand without ensuring that consumers can distinguish between the brand and the product name.
For example, 3M invested significant time and money to reestablish “Post-it” as a trademark after it had become widely recognized as a generic term for adhesive notes. Although the aggressive issuance of warning letters has since subsided, many people still refer to adhesive notes as “Post-its” rather than using the official product name.
Once a brand name becomes a common descriptive term, it is nearly impossible to regain its status as a trademark. Therefore, when launching a new product, it is crucial to separate the brand name from the product name and manage the brand to ensure that it functions solely as a trademark.
Descriptive Signs
Trademarks that describe a product’s features, ingredients, origin, or content are also not registrable. If a trademark merely describes the product, making its nature immediately apparent, it is considered inappropriate for exclusive ownership.
Examples include:
- “Jeju Black Pork Belly”
- “Original Grandma Hangover Soup since 1960”
- “Whitening Lotion”
- “Thermal Spandex Jeans”
- “Deco Sheet”
Typically, it is determined whether the trademark describes the nature of the goods it is used for. However, there are some terms that are always deemed non-distinctive regardless of the product, such as:
- “BEST,” “SUPER,” “DELUXE,”
- “Excellent,” “Original,” or “New.”
Sometimes it is clear that a trademark is descriptive and lacks distinctiveness. In other cases, it can be difficult to determine whether a trademark is descriptive, as there is no definitive answer. Judgments can vary based on individual opinions, industry trends, or the social climate at the time.
The courts have recognized distinctiveness for trademarks such as:
- “SMART & SOFT” (refrigerator),
- “PUREYOGA,”
- “BLUEMARK” (ink),
- “LESS DESIGN,”
- “MaxTea,”
- “Wireless HD,”
- “Albachungkuk,” and
- “Bulgarius.”
However, other trademarks have been deemed non-distinctive, including:
- “Hmart,”
- “Uglydoll,”
- “HIWOOD,”
- “PNEUMOSHIELD,”
- “EasiCard,”
- “Vita Soymilk,”
- “Paper Country,” and
- “BLACKCARD” (credit card).
Well-Known Geographical Names and Maps
Well-known geographical names, such as “Seoul,” “Dongdaemun,” “Jangchung-dong,” and “Bulguksa,” cannot be monopolized as trademarks. Geographical names must remain freely usable by the public.
Currently, retro-themed brand names like “Seoul Sanghoe,” “Euljiro 19beonji,” and “Yeonnam-dong There” are trending, but these brands face difficulties in obtaining trademark protection due to the use of well-known geographical names.
Common Surnames or Names
Common surnames such as “Kim,” “Manager Oh,” or “President Park” lack distinctiveness and cannot be registered. Similarly, widely recognized foreign surnames, such as “Smith,” cannot be monopolized.
Simple and Common Signs
Simple and common shapes (e.g., triangles, cones), trademarks composed of a single letter, two-letter combinations, or sequences of significant numbers (e.g., “123”) cannot be registered.
Location Indicators, Slogans, and Phrases
Trademarks that indicate locations, or those that are slogans or catchphrases, may also be denied registration. For example, a trademark application for “Speed 011” was rejected because granting exclusive rights was deemed inappropriate.
Additionally, terms like “Town,” “Market,” “Land,” “Plaza,” and “Village,” as well as commonly used words like “Story” and “Today,” are considered non-distinctive.
Advertising slogans and catchphrases may also be denied registration. Since they often describe the product being offered, they are not considered suitable for exclusive ownership. Examples of difficult-to-register slogans include:
- “We’re Precious,”
- “Good Morning,”
- “Just Do It,” and
- “Be Smart.”
Slogans and Copyright Protection
Advertising slogans and catchphrases are also not protected under copyright law. According to the Korean Supreme Court, such phrases are too short to meet the criteria for copyright protection.
Publicly Significant Marks
Marks with high public significance, such as “www,” “114,” “Jogye Order,” and “YOLO,” are considered non-distinctive. Granting exclusive rights to such marks is seen as inconsistent with public sentiment and the need for free use by consumers.
However, Non-Distinctive Marks Can Be Registered If They Become Widely Known
Even if a mark lacks distinctiveness, it can be registered and protected if it becomes widely recognized through use. While trademarks protect selection and registration, they also serve to protect consumer trust. If a non-distinctive mark becomes widely known as a specific person’s trademark, it is reasonable to register and protect the mark to safeguard consumer perception and ensure fair trade.
For example, LG initially faced rejection when applying to register the two-letter trademark “LG” after its name change. Two-letter combinations are generally considered simple and common signs. However, after gaining significant recognition over approximately ten years, LG was eventually able to register the “LG” mark.
Similarly, Google’s GMAIL was initially registered in 2006 only when combined with other elements, such as a design or the “Google” name. Over time, however, GMAIL became sufficiently well-known to be registered on its own.
Combining with Other Distinctive Elements
A trademark composed solely of non-distinctive elements will be denied registration. However, if combined with other distinctive elements—such as letters, words, or designs—the mark may be registered. It is important to note that in such cases, exclusive rights apply only to the distinctive elements, not the non-distinctive parts of the trademark.