A Study on the Criteria for Judging Acquired Distinctiveness as a Result of Using the Trademark
This article contributes to the examination of recent developments, challenges, and controversies concerning the criteria for judging the distinctiveness of a mark acquired through use. The article explains that South Korea, the United States, the European Union and Japan introduced a provision in t...
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| Format: | Article |
| Language: | English |
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Korea Institute of Intellectual Property
2024-12-01
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| Series: | Journal of Intellectual Property |
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| Online Access: | https://jip.or.kr/1904-04/ |
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| author | Taemin Eom |
| author_facet | Taemin Eom |
| author_sort | Taemin Eom |
| collection | DOAJ |
| description | This article contributes to the examination of recent developments, challenges, and controversies concerning the criteria for judging the distinctiveness of a mark acquired through use. The article explains that South Korea, the United States, the European Union and Japan introduced a provision in their Acts to allow registration if a mark acquired distinctiveness through use. Subsequently, it shows the standards required for acquisition of distinctiveness through use are the highest for the examinations and decrease in the order of the court cases and Intellectual Property Trial and Appeal Board’s decisions.
This article concludes the following: First, even for marks known only in a certain region, recognition of the acquisition of distinctiveness through use should be established as court precedents. Second, in the appeal trial of mark registration, the claim of acquired distinctiveness through use should be incorporated into the Trial Handling Regulations as a subject of a five-judge agreement. Third, the Trademark Examination Handling Regulations must specify the legal basis for the Examination Committee for the Determination of Acquisition of Distinctiveness through Use and the participation of the examiners in charge. Fourth, the basis for recognizing facts in court precedents as valid evidence in examination procedures must be stated in the Examination Guidelines for Trademarks. |
| format | Article |
| id | doaj-art-b74703b99d7c4c7fa77b1b06f4c05c95 |
| institution | Kabale University |
| issn | 1975-5945 2733-8487 |
| language | English |
| publishDate | 2024-12-01 |
| publisher | Korea Institute of Intellectual Property |
| record_format | Article |
| series | Journal of Intellectual Property |
| spelling | doaj-art-b74703b99d7c4c7fa77b1b06f4c05c952025-08-20T03:52:52ZengKorea Institute of Intellectual PropertyJournal of Intellectual Property1975-59452733-84872024-12-01194639410.34122/jip.2024.19.4.63A Study on the Criteria for Judging Acquired Distinctiveness as a Result of Using the TrademarkTaemin Eom0https://orcid.org/0009-0006-4069-4897Chief Presiding Administrative Judge (Trademark, Board no. 22), Intellectual Property Trial and Appeal Board (IPTAB), Republic of KoreaThis article contributes to the examination of recent developments, challenges, and controversies concerning the criteria for judging the distinctiveness of a mark acquired through use. The article explains that South Korea, the United States, the European Union and Japan introduced a provision in their Acts to allow registration if a mark acquired distinctiveness through use. Subsequently, it shows the standards required for acquisition of distinctiveness through use are the highest for the examinations and decrease in the order of the court cases and Intellectual Property Trial and Appeal Board’s decisions. This article concludes the following: First, even for marks known only in a certain region, recognition of the acquisition of distinctiveness through use should be established as court precedents. Second, in the appeal trial of mark registration, the claim of acquired distinctiveness through use should be incorporated into the Trial Handling Regulations as a subject of a five-judge agreement. Third, the Trademark Examination Handling Regulations must specify the legal basis for the Examination Committee for the Determination of Acquisition of Distinctiveness through Use and the participation of the examiners in charge. Fourth, the basis for recognizing facts in court precedents as valid evidence in examination procedures must be stated in the Examination Guidelines for Trademarks.https://jip.or.kr/1904-04/trademarkdistinctivenessacquired distinctivenessconsumer awarenesstrademark surveytrial handling regulationstrademark examination handling regulationsexamination guidelines for trademarks |
| spellingShingle | Taemin Eom A Study on the Criteria for Judging Acquired Distinctiveness as a Result of Using the Trademark Journal of Intellectual Property trademark distinctiveness acquired distinctiveness consumer awareness trademark survey trial handling regulations trademark examination handling regulations examination guidelines for trademarks |
| title | A Study on the Criteria for Judging Acquired Distinctiveness as a Result of Using the Trademark |
| title_full | A Study on the Criteria for Judging Acquired Distinctiveness as a Result of Using the Trademark |
| title_fullStr | A Study on the Criteria for Judging Acquired Distinctiveness as a Result of Using the Trademark |
| title_full_unstemmed | A Study on the Criteria for Judging Acquired Distinctiveness as a Result of Using the Trademark |
| title_short | A Study on the Criteria for Judging Acquired Distinctiveness as a Result of Using the Trademark |
| title_sort | study on the criteria for judging acquired distinctiveness as a result of using the trademark |
| topic | trademark distinctiveness acquired distinctiveness consumer awareness trademark survey trial handling regulations trademark examination handling regulations examination guidelines for trademarks |
| url | https://jip.or.kr/1904-04/ |
| work_keys_str_mv | AT taemineom astudyonthecriteriaforjudgingacquireddistinctivenessasaresultofusingthetrademark AT taemineom studyonthecriteriaforjudgingacquireddistinctivenessasaresultofusingthetrademark |