The Korean Intellectual Property Office (KIPO) recently revised its trademark examination guidelines, with emphasis place on the KIPO’s standard on the non-functionality requirement, applicable to all non-traditional trademarks, separate from the distinctiveness requirement. The revised guidelines are applicable to all trademark applications filed on or after January 1, 2021.

The types of non-traditional trademarks protectable in Korea are 3D marks, color per se marks, hologram marks, motion marks, position marks, sound marks, and smell marks. With a view to preventing any functional/technical elements (which may be protected under a patent) from being registered and protected indefinitely as a trademark, the new guidelines specifically provide four elements that should be considered in determining the functionality of a trademark: (1) existence of any patent or utility model registration corresponding to the trademark; (2) existence of any advertising claim regarding the functional aspect of the trademark; (3) existence of any other shape that may be substituted for the trademark; and (4) plausibility of the substitutable shape. With these four elements as the controlling factors, and in line with Korean Supreme Court precedents, while taking into consideration foreign examination practice, the new guidelines provide in detail how the functionality in each category of non-traditional marks should be reviewed and determined in the course of examination.

Further, the revision provides the addition of “3D shapes in the interior and exterior of a place where goods/services are offered” as a new type of 3D trademark. As such, the distinctive 3D elements in the interior or exterior of a building are now also protectable to the extent that they perform the function of a source identifier. In preparing the trademark drawings for such 3D shapes, non-essential 2 elements that are not claimed should be illustrated in broken lines or alternating long and short dash lines. 

With respect to position marks, the new guidelines make it clear that “color” may be used to render a mark a position mark, a significant expansion from the current practice allowing only “shape (3D)” or “pattern (device)” as the characterizing components of a position mark.