The Korean Patent Court recently held that Korean Trademark Registration No. 939039 for ‘CICABIO’ was sufficiently distinctive with respect to various cosmetic products and, therefore, should not be invalidated (see Patent Court Case No. 2021 Heo 6245 rendered on June 16, 2022), affirming the decision of the Trial Board of the KIPO.

▶Background of the Case

NAOS, a French cosmetics company, is the owner of the Korean registration for ‘CICABIO’ and has been actively selling various skin care products under its ‘CICABIO’ trademark in Korea and abroad. An invalidation action was lodged against the ‘CICABIO’ mark on May 28, 2020 by a Korean company on the ground that the mark ‘CICABIO’ should not have been allowed registration due to lack of distinctiveness.

Prior to lodging the invalidation action, the Korean company had filed an application for registration of its trademark ‘CICABIOME’ on April 16, 2019, designating cosmetic preparations, lavender oil, etc. in Class 3. When this mark was published for opposition in 2019, NAOS filed an opposition on the ground that ‘CICABIOME’ was confusingly similar to its ‘CICABIO’ registration and contended that the ‘CICABIOME’ mark should be finally rejected. The Korean company then lodged the invalidation action against the ‘CICABIO’ registration and the opposition proceeding was stayed pending the outcome of the invalidation action. 

The central questions in the opposition and the invalidation action were whether the term ‘CICA’ was merely descriptive with respect to cosmetic goods and whether the ‘CICABIO’ trademark was sufficiently distinctive in its entirety as a trademark.

▶The Trial Board Decision

In the invalidation action, the petitoner argued that ‘CICABIO’ was a simple combination of two non distinctive words, ‘CICA’ and ‘BIO,’ and, therefore, the term ‘CICABIO’ was also not sufficiently distinctive capable of registration. It further argued that even if the mark was distinctive at the point of registration, its distinctive quality was lost due to the wide use of the words ‘CICA’ and ‘BIO’ by third parties after registration. In support of this argument, it produced evidence purporting to show that ‘CICA’ was commercially known as a shortened version of ‘Centella Asiatica,’ a type of herb known to have the effect of healing and soothing skin, and the term ‘BIO’ had been widely used in the cosmetic industry. Further, the petitoner contended that the combination of these two words did not generate any new meaning, resulting in overall indistinctiveness of the mark, calling for the invalidation of its registration.

The respondent (NAOS) countered that the distinctiveness of a trademark should always be determined in its entirety and that ‘CICABIO’ was highly unlikely to be perceived as a combination of two separate words, ‘CICA’ and ‘BIO,’ by general Korean consumers; and, further, that ‘CICA’ could not be readily perceived by Korean consumers as a shortened version of Cetella Asiatica.

The Trial Board agreed with the respondent and decided that the mark ‘CICABIO’ did not lack distinctiveness to function as a trademark.

▶The Patent Court Decision

On appeal before the Patent Court, the appellant argued that the Trial Board erred in recognizing the distinctiveness of ‘CICABIO’ in its entirety, simply based on the absence of evidence showing use of ‘CICABIO’ as a descriptive term without looking into whether the combination of ‘CICA’ and ‘BIO’ generated any new meaning.

The appellee argued that the letters in ‘CICABIO,’ all in the same font, size and boldness, showed that it was 3 a single inseparable word and the term ‘CICA,’ being a coined word without any etymological clue leading to Centella Asiatica, did not render the mark separable into any components. The appellee also emphasized that the term ‘CICABIO,’ as a whole, has never been used as a descriptive term by anyone in the relevant industry.

The Patent Court accepted all of the appellee's arguments and affirmed the Trial Board’s decision that ‘CICABIO’ was not indistinctive at the time of registration and that the distinctiveness thereof has also been maintained after registration.

(FIRSTLAW represented the trademark owner NAOS in this appeal case.)