Revisiting Acquired Distinctiveness under the Korean Trademark Act: The Evolution of Judicial and Administrative Standards after the 2014 Reform

Abstract

This article explores recent developments, challenges, and controversies surrounding the criteria for determining acquired distinctiveness through use, with a particular focus on court rulings, decisions by the Intellectual Property Trial and Appeal Board (IPTAB), and trademark examination practices in South Korea. While South Korea, the United States, the European Union, and Japan all recognize acquired distinctiveness through use in their respective trademark regimes, notable jurisdictional differences persist. This study highlights that in South Korea, the IPTAB applies relatively more lenient standards for assessing acquired distinctiveness compared to courts and trademark examiners, leading to inconsistencies in adjudication. To enhance doctrinal clarity and procedural uniformity, this article proposes three key reforms. First, judicial precedents should explicitly affirm that acquired distinctiveness through use may be recognized even when a mark is known only within a specific geographic region. Second, trademark registration appeal trials should be adjudicated by a panel of five judges to strengthen consistency and analytical rigor. Third, a legal framework should be established to ensure that factual determinations in court precedents are recognized as authoritative evidence in subsequent IPTAB decisions and trademark examinations.