A common misconception is that registering a trademark gives the registrant rights over the word itself. This is not true. Trademark rights function like territorial claims—marking a specific domain for exclusive use. By registering a trademark for a particular category of goods or services, the registrant gains rights only within that designated category.
When filing a trademark application, you must specify which goods or services will be protected by the trademark. The resulting trademark rights are limited to those specified categories.
Previously, we discussed how both identical and similar trademarks cannot be registered or used if a pre-existing registration exists. Similarly, this principle applies not only to identical products but also to similar products. Conversely, even if two trademarks are identical or similar, registration may be possible if the products or services are deemed dissimilar.
So, what does it mean for products to be similar?
Principle of Similarity
Product similarity is evaluated based on market circumstances and other specific factors. The assessment considers:
- Product content, quality, shape, and purpose
- The range of producers, sellers, and consumers
- Overlapping market conditions
Ultimately, the key question is whether the use of identical or similar trademarks would cause consumers to mistakenly believe that the products are manufactured or sold by the same company.
For example, in a case concerning whether “perfume” and “car air fresheners” were similar products, the Supreme Court of Korea ruled that they were dissimilar. This decision was based on differences in product purpose, producers, sellers, and consumer demographics.
The Role of Similar Product Codes (Similarity Groups)
Given the rapid changes in market conditions and the difficulty of understanding every product’s details, many countries, including Korea, use a system of similar product codes to simplify the assessment of product similarity.
Each product is assigned a similar product code, and products with the same code are considered similar for examination purposes.
Example: Perfume vs. Car Air Freshener
Perfume is typically a cosmetic product applied to the human body, while car air fresheners are used inside vehicles. Despite some overlap (e.g., a few small companies producing both types), perfumes are generally produced by cosmetic companies and sold in department stores, whereas car air fresheners are produced by automotive suppliers and sold in auto shops. The typical consumer demographics for these products also differ, which led the court to conclude that they are not similar. (Supreme Court ruling, June 16, 2006, Case No. 2004Hu3225)
Finding Similar Product Codes
You can check the similar product codes on the Korean Patent Office’s website under the “Product Classification Codes” section. These codes are updated regularly to reflect case law, examination examples, and industry trends.
It is important to note that similar product codes are not the same as product classifications. The world’s patent offices, through the Nice Agreement, have divided goods and services into 45 categories. However, in Korea, these classifications mainly serve to determine application fees rather than to assess product similarity.
Products in different classifications can have the same similar product code, meaning they may still be considered similar despite belonging to separate categories.
Limitations of Similar Product Codes
While similar product codes provide a reference for examiners, they are not the final standard for determining similarity. Courts and appeal boards do not base their decisions solely on these codes. Instead, they consider real-world trade practices and circumstances.
Considering Trade Practices
Markets evolve continuously. Products that seemed entirely unrelated a decade ago may now require a similarity assessment.
For example, when Samsung first developed and widely used the Galaxy brand for smartphones, Orient Bio likely did not anticipate that Samsung’s smartphones could infringe on its trademark for Galaxy watches. At the time, smartphones (classified under Class 9) and watches (classified under Class 14) were considered entirely separate product categories.
However, over time, Samsung expanded the Galaxy brand to include accessories and devices like smartwatches. These smartwatches, though essentially small computers, functionally and visually resemble traditional watches, blurring the lines between the two categories. As a result, Samsung’s Galaxy Smartwatch could potentially infringe on the Galaxy watch trademark.
Indeed, Orient Bio, the trademark owner of Galaxy (watches), filed a trademark infringement claim against Samsung. The dispute was ultimately resolved when Samsung acquired Orient Bio’s trademark rights.
Market Trends and Overlapping Product Categories
Another example is the growing trend of derma cosmetics (medicinal skincare products). Some cosmetics (Class 3) are now nearly indistinguishable from medicated creams (Class 5) in terms of ingredients and effects, with packaging designed to resemble pharmaceutical products.
Such crossovers between product categories are becoming increasingly common, making it essential to consider current market conditions when assessing product similarity. In conclusion, while similar product codes provide a useful reference, true product similarity should be assessed on a case-by-case basis, considering factors such as trade practices, market conditions, and consumer expectations. This approach helps ensure that trademark examinations remain flexible and responsive to evolving market realities.